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Gerry Webber International AG v Studio Ray LLC

Gerry Webber International AG v Studio Ray LLC

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Case Copied 3 April 2024 36 min read

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TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re: Opposition by Gerry Webber International AG to extension of protection under regulation 17A.33 of the Trade Marks Regulations 1995 (Cth) of trade mark number 1754848 (International Registration number 1197519) (class 25) – GERRY - in the name of Studio Ray LLC

Delegate:

Anne Makrigiorgos

Representation:

Opponent: Spruson & Ferguson Pty Ltd

Holder: Herbert Smith Freehills

Decision:

2024 ATMO 59

Trade Marks Regulations 1995 (Cth) – opposition to extension of protection under reg 17A.33 – grounds of opposition pressed under reg 4.15A and ss 42, 44, 60 and 62A of the Trade Marks Act 1995 (Cth) – no ground established – protection granted.

Background
1.     This is a decision in respect of an opposition by Gerry Webber International AG[1] (‘Opponent’) under reg 17A.33 of the Trade Marks Regulations 1995 (Cth)[2] to the extension of protection of the following International Registration Designating Australia (‘IRDA’):
International Registration number:    1197519
Australian trade mark number:         1754848 (‘Application’)
Trade mark:  GERRY (‘Trade Mark’)
Holder:  Studio Ray LLC (‘Holder’)
Filing Date and Priority Date:             5 February 2016 (‘Relevant Date’)
Specification:  Class 25 - Clothing, namely, parkas, ponchos, pants, down vests, sweaters, hoods and raincoats; jackets, t-shirts, shirts, and caps; children's coats, hats, and shirts (‘Holder’s Goods’)
[1] While the Notice of Intention to Oppose refers to the Opponent as Gerry Webber International AG, all other documents in the opposition filed by the Opponent refer to the Opponent as Gerry Weber International AG, which appears to be the correct spelling of the Opponent’s name.
[2] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth) and each reference to a regulation is a reference to a regulation in the Trade Marks Regulations 1995 (Cth).

2.     The Trade Mark was examined and advertised as accepted for possible extension of protection on 30 June 2016.
3.     On 30 August 2016, the Opponent filed a Notice of Intention to Oppose the Trade Mark. On 30 September 2016, the Opponent filed its Statement of Grounds and Particulars (‘SGP’). The Holder filed a Notice of Intention to Defend the opposition on 17 November 2016.
4.     The Opponent filed Evidence in Support (‘EIS’) on 17 February 2022.[3] The Holder filed Evidence in Answer (‘EIA’) on 23 May 2022. No Evidence in Reply was filed.
[3] The timeline gap from filing the Notice of Intention to Defend to the evidence stages is as a result of two cooling off periods and a number of suspensions of the opposition proceedings.
5.     The parties were given the opportunity to either request an oral hearing or a hearing by way of written submissions. The parties requested a decision by way of written submissions. The Opponent filed written submissions on 17 November 2023 and the Holder filed its submissions on 24 November 2023. I have decided this matter based on the particulars set out in the SGP, the evidence of the…

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: [2024] ATMO 59
Decision Date: 3 April 2024

CaseChat Overview and Summary

Gerry Webber International AG (the opponent) opposed the extension of protection of a trade mark to Australia by Studio Ray LLC (the applicant) under regulation 17A.33 of the *Trade Marks Regulations 1995* (Cth). The opposition was based on grounds including those prescribed by regulation 4.15A and sections 42, 44, 60, and 62A of the *Trade Marks Act 1995* (Cth).

The primary legal issues before the court were whether the opponent had established any of the grounds for opposition it had pressed. Specifically, the court had to determine if the applicant's trade mark was disentitled to registration under the cited provisions of the Act and Regulations, which relate to matters such as deceptive or misleading use, resemblance to earlier marks, and use by a person other than the applicant.

The court found that the opponent had failed to establish any of the grounds of opposition it relied upon. The reasoning involved a detailed examination of the evidence presented by both parties in relation to each ground. Ultimately, the court concluded that the applicant's trade mark was not disentitled to registration on any of the bases advanced by the opponent.

Consequently, the court dismissed the opposition and granted the extension of protection to the applicant.

Orders