George Defilippou v Micali Coffee Pty Ltd - [2022] ATMO 171

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by George Defilippou to registration of trade mark application 2135057 (30, 35, 43) – DB DONUT BOSS (Figurative) – in the name of Micali Coffee Pty Ltd

Delegate: Nicholas Smith

Representation: Opponent: Michael Buck IP
Applicant: Self-represented

Decision: 2022 ATMO 171
Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b), 58 and 60 considered – none established – trade mark to proceed to registration
Background

This decision concerns an opposition brought by George Defilippou (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of Micali Coffee Pty Ltd (‘Applicant’):

Application Number:

2135057

Filing Date:

23 November 2020

Goods and Services:

Class 30: Donuts
Class 35: Administration of the business affairs of franchises; Business advisory services relating to the establishment of franchises; Business advisory services relating to the operation of franchises; Business assistance relating to the establishment of franchises; Provision of assistance (business) in the establishment of franchises; Provision of assistance (business) in the operation of franchises; Discount services (retail, wholesale, or sales promotion services)
Class 43: Cafe services; Cafes

(‘Applicant’s Goods and Services’)

Trade Mark:

(‘Trade Mark’)

Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.
Following the advertisement of the application’s acceptance for possible registration in the Australian Official Journal of Trade Marks, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars on 4 June 2021 (‘SGP’). The SGP raised grounds of opposition under ss 42(b), 58 and 60. The Applicant filed a Notice of Intention to Defend on 1 September 2021.
Evidence
The Opponent filed the following evidence in support of its opposition:
·Declaration made on 8 December 2021 by George Defilippou, the Opponent, with Exhibits GD-1 to GD-16 (‘Defilippou 1’).
The Applicant filed the following evidence in answer:
·Declaration made on 10 March 2022 by Tina Micali, Director and Secretary of the Applicant, with Annexure A (‘Micali Declaration’).
The Opponent filed the following evidence in reply:
·Declaration made on 17 May 2022 by George Defilippou with Exhibit GD-1 (‘Defilippou 2’).
The entirety of the evidence filed by the Opponent, including publicly available information such as the public use of the Trade Mark or the contents of national trade mark registries, is claimed to be confidential. I adopt the approach of the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim (albeit in respect of the opponent in that case) stated:
The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition.…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2022] ATMO 171
Decision Date: 4 October 2022

CaseChat Overview and Summary

George Defilippou (the Opponent) opposed the registration of the trade mark application 2135057, "DB DONUT BOSS" (figurative), by Micali Coffee Pty Ltd (the Applicant). The opposition was filed on grounds including sections 42(b), 58, and 60 of the relevant legislation. The matter was heard by Nicholas Smith, a Delegate of the Registrar of Trade Marks, who made a decision based on the written record after the Opponent elected for a decision without a hearing.

The legal issues before the court were whether the Opponent had established its grounds of opposition, specifically concerning section 42(b) which relates to the use of a trade mark being contrary to law. The court also considered the weight to be given to evidence where the Opponent claimed confidentiality over its entire evidentiary submission, including publicly available information.

The court adopted the approach of a previous delegate in *Source Homeloans Pty Ltd v Coles Group Ltd*, stating that a party claiming confidentiality must identify specific information. The court found that the Opponent had not sufficiently identified commercially sensitive matters and that it was necessary to discuss the evidence to determine the opposition. The onus was on the Opponent to establish its grounds. Ultimately, the court was not satisfied that the Applicant's use of the trade mark would be contrary to law, and therefore the ground under section 42(b) was not established.

The Opponent failed to establish any of the grounds of opposition. Consequently, trade mark application number 2135057 was permitted to proceed to registration, subject to any appeal. The Applicant was awarded costs against the Opponent.

Orders

Orders of the court

Full text does not contain this section.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Following the advertisement of the application’s acceptance for possible registration in the Australian Official Journal of Trade Marks, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars on 4 June 2021 (‘SGP’). The SGP raised grounds of opposition under ss 42(b), 58 and 60. The Applicant filed a Notice of Intention to Defend on 1 September 2021. Evidence The Opponent filed the following evidence in support of its opposition: ·Declaration made on 8 December 2021 by George Defilippou, the Opponent, with Exhibits GD-1 to GD-16 (‘Defilippou 1’). The Applicant filed the following evidence in answer: ·Declaration made on 10 March 2022 by Tina Micali, Director and Secretary of the Applicant, with Annexure A (‘Micali Declaration’). The Opponent filed the following evidence in reply: ·Declaration made on 17 May 2022 by George Defilippou with Exhibit GD-1 (‘Defilippou 2’). The entirety of the evidence filed by the Opponent, including publicly available information such as the public use of the Trade Mark or the contents of national trade mark registries, is claimed to be confidential. I adopt the approach of the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim (albeit in respect of the opponent in that case) stated: The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter’s request (made within several declarations) at face value, that would be the end of these matters.This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.[1][1] Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6] (Hearing Officer Thompson). I note that, if a party considers a piece of information to be commercially sensitive it must identify that information with specificity. If in my summary of the evidence, I have disclosed information that is sensitive, then this is an issue that has arisen by that party not specifically identifying that information as sensitive.

Decision

Reasons for decision

For these reasons I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law. Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).Decision and Costs The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Trade mark application number 2135057 may proceed to registration not less than one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise the disposition of the application should be in accordance with the Court’s order or direction. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.Nicholas SmithHearing OfficerDelegate of the Registrar of Trade Marks4 October 2022

Ratio Decidendi

Legal Principle Established

The Applicant filed the following evidence in answer: ·Declaration made on 10 March 2022 by Tina Micali, Director and Secretary of the Applicant, with Annexure A (‘Micali Declaration’). The Opponent filed the following evidence in reply: ·Declaration made on 17 May 2022 by George Defilippou with Exhibit GD-1 (‘Defilippou 2’). The entirety of the evidence filed by the Opponent, including publicly available information such as the public use of the Trade Mark or the contents of national trade mark registries, is claimed to be confidential. I adopt the approach of the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim (albeit in respect of the opponent in that case) stated: The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter’s request (made within several declarations) at face value, that would be the end of these matters.This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.[1][1] Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6] (Hearing Officer Thompson). I note that, if a party considers a piece of information to be commercially sensitive it must identify that information with specificity. If in my summary of the evidence, I have disclosed information that is sensitive, then this is an issue that has arisen by that party not specifically identifying that information as sensitive. Once the time allowed for filing evidence had ended, the parties were given an opportunity to request a hearing in this matter or a decision without hearing. The Opponent requested that the matter proceed to a decision without hearing and paid the appropriate fee. As a result the matter has been allocated to a delegate of the Registrar for a decision based on the written record.

Delegate:	Nicholas Smith
Representation:	Opponent: Michael Buck IP Applicant: Self-represented
Decision:	2022 ATMO 171 Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b), 58 and 60 considered – none established – trade mark to proceed to registration

Application Number:	2135057
Filing Date:	23 November 2020
Goods and Services:	Class 30: Donuts Class 35: Administration of the business affairs of franchises; Business advisory services relating to the establishment of franchises; Business advisory services relating to the operation of franchises; Business assistance relating to the establishment of franchises; Provision of assistance (business) in the establishment of franchises; Provision of assistance (business) in the operation of franchises; Discount services (retail, wholesale, or sales promotion services) Class 43: Cafe services; Cafes (‘Applicant’s Goods and Services’)
Trade Mark:	(‘Trade Mark’)