Gopika Pty Ltd as Trustee for the Meece Trust v Cinnayum Pty Ltd
[2023] ATMO 163
•20 October 2023
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Gopika Pty Ltd as Trustee for the Meece Trust to registration of trade mark application number 2157853 (class 35) - Cinnayum – Cinnfully Delicious (fancy) - in the name of Cinnayum Pty Ltd
Delegate: | Benjamin Goldsworthy |
Representation: | Opponent: Khajaque Kortian of Spruson & Ferguson Applicant: Dave Stewart instructed by Teller & Associates |
Decision: | 2023 ATMO 163 Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 44, 58, 60, 62 and 62A pursued – s 58 established – trade mark refused. |
Background
On 3 March 2021 ('Relevant Date') an application under the Trade Marks Act 1995 (Cth) ('Act') was made in the name of Melissa Anne Witts trading as Cinnayum for a trade mark with the following details:
Trade mark:
(‘Trade Mark’)
Goods and Services: Class 30: Coffee; Tea (not medicinal); Cocoa; Ice cream; Preparations made from cereals; Pies; Pasties; Sausage rolls; Filled sandwiches; Filled bread rolls; Filled buns; Pizza; Bakery products; Truffles (confectionery); Confectionery; Bread rolls; Bread buns; Bagels; Croissants; Tarts; Cakes; Sponge cakes; Biscuits; Cookies; Muffins; Ices
Class 35: Online retail services; Retail services; Wholesaling of goods (by any means) (‘Designated Services’)
On 3 May 2021, Teller & Associates filed a request to amend the name in which the application for the Trade Mark was to proceed. On 4 May 2021, the name in which the application was to proceed was amended from Melissa Anne Witts trading as Cinnayum to Cinnayum Pty Ltd (‘Applicant’). On 1 July 2021, the Applicant filed a divisional application and excluded the class 30 goods from the application for the Trade Mark.
After examination of the application under s 31, acceptance was advertised on 4 August 2021. Gopika Pty Ltd as Trustee for the Meece Trust (‘Opponent’) filed a Notice of Intention to Oppose on 27 September 2021 and its Statement of Grounds and Particulars (‘SGP’) on 15 October 2021. On 16 December 2021 the Applicant filed its Notice of Intention to Defend.
On 18 March 2022 the Opponent filed its Evidence in Support (‘EIS’), which consists of a declaration of Jair Amaro, director of the Opponent, dated 17 March 2022, including Annexures JA-1 to JA-18 (‘Amaro-1’). On 20 June 2022 the Applicant filed Evidence in Answer (‘EIA’) consisting of a declaration of Melissa Anne Witts, director of the Applicant, dated 20 June 2022 with Annexures MAW-1 to MAW-10 (‘Witts-1’). On 29 August 2022, the Opponent filed Evidence in Reply (‘EIR’) being a declaration of Jair Amaro, dated 23 August 2022 with Annexures JA-A to JA-C (‘Amaro-2’).
On 1 September 2022 the Opponent requested to amend the SGP – namely, to amend the particulars of the ground of opposition under s 58 and to add a new ground of opposition under s 62. A delegate of the Registrar of Trade Marks (‘Registrar’) allowed the amendment. On 2 March 2023 the Applicant filed two other declarations relating to ss 58 and 62. These consist of a declaration of Melissa Anne Witts, dated 24 February 2023 with Annexures MAW-1 and MAW-2 (‘Witts-2’) and a declaration of Lisa Teller, trade mark attorney for the Applicant at Teller & Associates, dated 24 February 2023 (‘Teller’).
After the rounds of evidence, the parties requested to be heard. The Opponent filed its written outline of submissions on 7 July 2023 and the Applicant filed its written submissions on 18 July 2023. On 20 July 2023, the Applicant filed a supplementary declaration of Melissa Anne Witts of the same date (‘Witts-3’). The Opponent filed a copy of an extract from the Macquarie Dictionary, 6th edition, for the word ‘pastry’ on 21 July 2023. I heard the matter on 21 July 2023 by teleconference. Khajaque Kortian from Spruson & Ferguson appeared on behalf of the Opponent and Dave Stewart appeared on behalf of Applicant instructed by the Lisa Teller of Teller & Associates. I have decided the matter as a delegate of the Registrar.
Onus and grounds
The Opponent has the onus of establishing one of the nominated grounds of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2]
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
The amended SGP pursued grounds of opposition under ss 42, 44, 58, 60, 62 and 62A. For reasons which follow s 58 is established so I need only address this ground of opposition.
Evidence
EIS
Amaro-1 states that Mr Amaro created a trade mark which included the word ‘cinnayumm’ in October 2015. Amaro-1 also introduces registered trade mark 1736435 for the trade mark Cinnayumm (‘Opponent’s Trade Mark’) for pastry, in the name of the Opponent. The annexures to Amaro-1 include examples of instances of marketing of cinnamon scrolls, including by email and social media posts, under trade marks including the word ‘cinnayumm’. There is also a confidential table showing sales figures and volumes of goods sold under the trade marks of the Opponent, for the period between 2015 and 2022. The annexures to Amaro-1 date from predominately 2015 to 2017.
EIA
Witts-1 sets out the history of the Applicant, Ms Witts and the Trade Mark. Ms Witts conceived a trade mark around October 2018[3] and I extract it below:
(‘Applicant’s Original Trade Mark’)
[3] Witts-1, [18].
Ms Witts used the Applicant’s Original Trade Mark from 2018 until February 2020. On 6 February 2020 the Applicant was incorporated. Witts-1 declares that Ms Witts assigned all intellectual property rights to the Applicant on incorporation. The annexures to Witts-1 most relevant to this matter are Annexures MAW-1 to MAW-4. These consist of documents such as incorporation documents and a company extract from the Australian Securities and Investments Commission. The company extract shows that the Applicant was incorporated on 6 February 2020 and that Ms Witts is the sole director and shareholder of the Applicant.
Witts-1 also declares that:
The… Trade Mark was created for the Applicant [emphasis added] by the Applicant’s marketing and design agent, Cloud Cartel, between June and August 2020 and launched in September 2020, as an updated version of my original 2018 Cinnayum logo, (with the addition of the distinguishing ‘Cinfully Delicious’ byline), and has been owned and used at all times by the Applicant [emphasis added] since its creation.[4]
[4] Witts-1, [12].
Annexures MAW-5 to MAW-10 show examples of use of the Trade Mark and confidential sales and advertising figures. I need not further summarise Witts-1.
Witts-2 and Teller concern specifically the grounds of opposition under ss 58 and 62. Teller in summary explains the circumstances around the filing of the application for the Trade Mark. Teller states, ‘an error was made in mistakenly filing the Application for the [Trade Mark] … in the name of Melissa Anne Witts “t/a Cinnayum” instead of in the correct legal name of Cinnayum Pty Ltd, the owner’.[5] Teller adds that, ‘[a]s soon as the error was realised (after the Easter holidays and Covid lock down in April 2021), [Teller & Associates] lodged a Request for Amendment [with this office] … to correct the applicant’s legal name from “Melissa Witts t/a Cinnayum” to the correct legal name of the Applicant, “Cinnayum Pty Ltd”’.[6] Teller also states that the filing of the application for the Trade Mark in the name of Melissa Anne Witts trading as Cinnayum was an error because: Ms Witts did not ‘“trade as Cinnayum” in her personal capacity as at the Priority Date’;[7] ‘[the Applicant] had the sole right to apply for trade mark registration … as at the Priority Date’ and all intellectual property rights had been, ‘transferred from Melissa Witts to [the Applicant] upon its incorporation on 6 February 2020’.[8] Teller emphasises the Applicant, ‘was the correct owner of the [Trade Mark] and Cinnayum name from before and as at the Priority Date’ and the Applicant, ‘had used the [Trade Mark] exclusively and continuously in respect of its … services covered by the Application, before the Priority Date’.[9]
[5] Teller, [4].
[6] Teller, [5].
[7] The ‘Priority Date’ when referred to in these reasons and in the evidence is the same as the Relevant Date.
[8] Teller, [5].
[9] Teller, [6].
Witts-2 also seeks to explain the circumstances around the filing of the application and the amendment to the name in which it was to proceed. Relevant statements include that the, ‘correct name of the Applicant at the Priority Date was and has at all times been Cinnayum Pty Ltd’,[10] that instructions to Teller & Associates were ‘on behalf of [the Applicant][11] and ‘categorically’ confirms that, ‘[the Applicant] was, at the Priority Date [emphasis added], the correct owner of the [Trade] Mark’.[12] Annexure MAW-1 to Witts-2 consists of a timeline of events for the filing of the application for the Trade Mark, incorporation of the Applicant and amendment to the name in which the Trade Mark application was to proceed. Annexure MAW-1 reflects the events as described in Teller, Witts-1 and Witts-2, including that between June 2020 and August 2020 the, ‘[the Applicant’s] new updated composite logo [being the Trade Mark]’ was created and that the Applicant used the Trade Mark from August 2020. Annexure MAW-1 to Witts-2 also notes that Ms Witts, ‘… as director of Cinnayum Pty Ltd’, instructed Teller & Associates to file the application for the Trade Mark. Regarding the creation of the Trade Mark, Annexure MAW-2 to Witts-2 consists of an invoice dated 2 July 2020 for ‘logo design’ (‘Invoice’), issued by Cloud Cartel Australia Pty Ltd. Witts-2 declares that the Invoice was for the design of the Trade Mark.[13] The Invoice was paid by the Applicant[14] and it is addressed to ‘Cinnayum Pty Ltd’.
[10] Witts-2, [7].
[11] Witts-2, [12].
[12] Witts-2, [15].
[13] Witts-2, [10].
[14] Ibid.
EIR
Annexure JA-A to Amaro-2 consists of the results of a search of Australian Trade Mark Search for ‘cinnayum’ which successfully located the Opponent’s Trade Mark. Annexure JA-B is a historical extract of the application for the Trade Mark. Annexure JA-C is a copy of the request for amendment of the application for the Trade Mark and an official notice of 4 May 2021 issued by this office confirming the amendment had been made.
Preliminary Matter
Witts-3 was filed after the periods for filing evidence had ended. As such Witts-3 is material filed out of time. Witts-3 states that it seeks to correct inaccuracies as to turnover figures in Witts-1. Material filed out of time may be considered by the hearing officer pursuant to reg 21.15(4). Part 51.2.5 of the Trade Marks Manual of Practice and Procedure notes the Applicant must make a compelling case as to why Witts-3 should be given weight when deciding the opposition. Other than correcting the inaccuracies in MAW-10 to Witts-1, the Applicant made no compelling case for why this matter should be given weight. However, for reasons which follow Witts-3 does not change the outcome and therefore, I have not found it necessary to consider the issue any further.
Consideration
Section 58
Section 58 provides:
58 Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Ownership of a trade mark is established either by authorship and prior use, or by the combination of authorship, the filing of the application and an intention to use or authorise use.[15] Authorship refers to an applicant’s adoption of a trade mark with the intention of using it in Australia.[16] The requirement of ownership must be satisfied at the time the trade mark application was filed.[17] Importantly, a flaw in the ownership cannot be cured at a later date.[18]
[15] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [29] (Greenwood, Jagot and Beach JJ) (‘Pham’).
[16] Anchorage Capital Partners Pty Limited v ACPA Pty Ltd [2018] FCAFC 6, [48] (Nicholas, Yates and Beach JJ).
[17] Pham (n 15) [14].
[18] Pham (n 15) [44] and [47].
Melissa Anne Witts trading as Cinnayum applied to register the Trade Mark on 3 March 2021. By doing so, she claimed to be the owner of the Trade Mark at the Relevant Date.[19]
[19] Section 27.
The Opponent submits that:
… the person applying for the [Trade Mark] on Relevant Date - 3 March 2021, Melissa Anne Witts, could not have rightfully claimed to be the true owner of the [Trade Mark] or word CINNAYUM as the common law rights to these marks were stated to have been assigned to Cinnayum Pty Ltd on 6 February 2020 ([Witts-1] at [10], [Witts-2] at [9], Teller at [5(c)]). The fact that Witts was not the true owner of the [Trade Mark] as at the Relevant Date is admitted by the Applicant in its own evidence ([Witts-1] at [10]; Teller at [6]). … The Full Court of the Federal Court of Australia in [Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (‘Pham’)] … clearly set the authority for the proposition that mistakes as to the ownership of the trade mark at the time of filing (ie Relevant Date) cannot be subsequently cured after filing, for example by assignment after filing to the rightful owner …
The fact that Ms Witts was not the true owner is admitted in Witts-1 and Witts-2, especially where it has been stated that the Applicant has always been the owner of the Trade Mark (see, for example statements from Witts-1 and Witts-2 reproduced in [12], [14] to [15] of these reasons).
I now summarise the relevant events shown in the evidence:
- The Applicant was incorporated on 6 February 2020.
- Between June and August 2020 on the instruction and direction of the Applicant, the Trade Mark was created for the Applicant.
- The Applicant commenced using the Trade Mark from August 2020.
- On 3 March 2021, Ms Witts, in her capacity as director of and authorised by the Applicant, instructed Teller & Associates to file an application for the Trade Mark. The application for the Trade Mark was filed in the name of Melissa Anne Witts trading as Cinnayum.
- On 3 May 2021 Teller & Associates filed a request to amend the name in which the application should proceed to that of the Applicant.
The evidence demonstrates that authorship lies with the Applicant. Witts-2 states that the Trade Mark was created, ‘for the Applicant by the Applicant’s marketing and design agent, Cloud Cartel…’.[20] This is supported by the Invoice, which is addressed to the Applicant and was paid by the Applicant. Importantly, the evidence also confirms that it was the Applicant who had used the Trade Mark and that Ms Witts had never used the Trade Mark in her personal capacity.
[20] Witts-2, [12].
The Applicant’s evidence and submissions acknowledge that there was a mistake at the time of filing, and that they sought to remedy it by amending the name in which the Trade Mark application should proceed, to that of the Applicant. The court in Pham outlined the relevant principles. In particular that, once the application for the Trade Mark was filed, there was nothing that could be done that would cure the flaw in terms of ownership.
To the extent that the evidence suggests Ms Witts as having a role in the authorship, or ownership, of the Trade Mark is implicit due to a ‘unity of purpose’ between the Applicant and Ms Witts, this does not assist the Applicant. On this point, I note the observation of Markovic J in PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd:
Nexus or “unity of purpose” is not an answer to identification of the owner of a mark at the time an application for registration is made and does not answer a ground of opposition under s 58 of the … Act.[21]
[21] [2020] FCA 1078, [334].
I am satisfied on the evidence that the Applicant was the owner of the Trade Mark at the Relevant Date by its authorship of, prior use or an intention to use, the Trade Mark in respect of the Designated Services. Thus, the application to register the Trade Mark should not have been filed in the name of Melissa Anne Witts trading as Cinnayum, as she was not the owner of the Trade Mark.
Accordingly, the s 58 ground of opposition has been established.
Decision
Section 55 relevantly provides:
55 Decision
(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
The Opponent has established a ground of opposition under s 58. Accordingly, I refuse to register the Trade Mark.
Costs
The Opponent has sought costs, which generally follow the event. There is no reason to depart from this approach and I award costs against the Applicant under s 221 in accordance with Schedule 8 to the Regulations.
Benjamin Goldsworthy
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
20 October 2023
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