Hawa Dane Pty Ltd v Gillin Pty Limited - [2024] ATMO 220

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Hawa Dane Pty Ltd to registration of trade mark application number 2247364 (20) - EMPIRE - in the name of Gillin Pty Limited

Delegate:

Louise Tuohy

Representation:

Opponent: Kellie Stonier of Griffith Hack Lawyers

Applicant: Barry Newman of Armour IP

Decision:

2024 ATMO 220

Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 44, 58A, 60 and 42(b) grounds nominated – s 44 established – trade mark refused registration

Background

This matter concerns an opposition by Hawa Dane Pty Ltd (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth)[1] to the registration of the following trade mark application (‘Application’) in the name of Gillin Pty Limited (‘Applicant’):
Trade mark number:  2247364
Trade mark:  EMPIRE (‘Trade Mark’)
Filing date:  7 February 2022
Specification:  Class 20: Furniture; Furniture adapted for use outdoors; Furniture cabinets; Furniture fittings, not of metal; Furniture for bathrooms; Furniture for babies; Furniture for children; Furniture for computers; Furniture for domestic use; Furniture for kitchens; Furniture for offices; Furniture for sitting; Furniture for storage; Furniture for the bathroom; Furniture for the bedroom; Furniture for the home; Furniture for the living room; Furniture for the lounge; Furniture for use in relation to computers; Furniture for use on patios; Furniture incorporating beds; Furniture made of plastics; Furniture made of steel; Furniture made of wood; Furniture made principally of glass; Furniture of metal; Furniture shelves; Furniture units; Furniture units comprising tables and seating units; Furniture units for kitchens; Furniture upholstered in leather or imitation leather; None of the above being commercial office furniture (‘Applicant’s Goods’)
Endorsement:  Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.
[1] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.
The Application was examined as required by s 31 and advertised for possible registration on 16 August 2022.
On 17 October 2022 the Opponent filed a Notice of Intention to Oppose the Application followed by its Statement of Grounds and Particulars (subsequently rectified by this office) (‘SGP’) on 17 November 2022. The Applicant filed a Notice of Intention to Defend the opposition on 23 February 2023.
Thereafter the parties filed evidence in accordance with the Regulations. The Opponent filed the following evidence in support:
- Declaration of David Anthony Waller, Executive Director of the Opponent, made on 6 June 2023 with Exhibits DW-1 to DW-19.
- Confidential declaration of David Anthony Waller, made on 6 June 2023.

The Applicant filed the following evidence in answer:
- Declaration of Barry Stephen Newman, Patent and Trade Mark Attorney of Armour IP for the Applicant, made on 8 August 2023 with Exhibits BSN-1 to BSN-10 (‘Newman’).

Declaration of Elissa Coleman, Chief Executive Officer of the Applicant, made…

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 220
Decision Date: 13 November 2024

CaseChat Overview and Summary

This matter came before the Registrar of Trade Marks concerning an opposition by Gillin Pty Limited (the Opponent) to the registration of a trade mark by Hawa Dane Pty Ltd (the Applicant). The Opponent relied on its registered trade mark EMPIRE (Registration No. 1546717) for goods in Class 20, specifically office furniture and related items. The Applicant sought to register a trade mark for a broad range of furniture in Class 20.

The primary legal issue before the Registrar was whether the Applicant's proposed goods were the same or similar to the Opponent's registered goods, thereby establishing a ground for opposition under section 44 of the *Trade Marks Act 1995* (Cth). The Registrar also considered an amendment made by the Applicant to its specification of goods after acceptance, which sought to exclude "commercial office furniture."

The Registrar reasoned that the determination of similarity between goods involves considering their nature, use, and trade channels. In this instance, the Registrar found that the Applicant's broad claims for furniture in Class 20 were similar to the Opponent's registered goods, which included office furniture. The Registrar noted that furniture items, regardless of whether intended for office or home use, share the same fundamental nature and would likely be traded through similar channels. The amendment to the Applicant's specification was deemed insufficient to differentiate its goods from the Opponent's registered marks, as the remaining goods were still considered the same or similar.

Consequently, the Registrar found that the Opponent had established a ground of opposition in respect of all the Applicant's goods and therefore refused to register the Applicant's trade mark. The Registrar also awarded costs to the Opponent.

Orders

Orders of the court

Full text does not contain this section.

Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

Section 55 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 in respect of all the Applicant’s Goods. Therefore, I refuse to register trade mark number 2247364. If the Registrar is served with a notice of appeal, I direct that the disposition of the Application should be in accordance with the Court’s order or direction. Both parties sought an award of costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Applicant under s 221 in line with Schedule 8 of the Regulations.

Ratio Decidendi

Legal Principle Established

In the SGP the Opponent particularised the ground of opposition by reference to its trade marks listed below (collectively the ‘Opponent’s Registrations’):Trade mark number: 1546717 Trade mark: EMPIRE (‘717 Registration’)Filing date: 15 March 2013Specification: Class 20: Office furniture, including metal, plastic and wood office furniture; Removable partitions or screens for office use; Office trolleys being articles of furniture; Office shelving; Storage apparatus (furniture) (‘717 Goods’) Endorsement: Provisions of subsection 44(4) and/or Reg 4.15A(5) applied From the information set out in the SGP and verified on the Register of Trade Marks it is evident that the Opponent’s Registrations are held in a name other than that of the Applicant and have a priority date earlier than the Relevant Date. Section 44 also requires that goods be similar. Section 14(1) states that goods are similar if they are the same or of the same description to other goods. The determination of whether goods are similar involves the consideration of a number of factors including the nature, use and trade channels of the goods.[7] In the present case the Applicant has a broad claim for furniture in class 20 as well as broad claims for groupings of furniture items according to purpose or material including but not limited to furniture for offices, outdoors, bathrooms, children, computers and sitting, and furniture made of metal, plastic and wood. The Opponent’s 717 and 724 Goods cover Office furniture including metal, plastic and wood office furniture; Removable partitions or screens for office use; Office trolleys being articles of furniture; Office shelving; Storage apparatus (furniture) in class 20. [7] Jellinek’s Application (1946) 63 RPC 59 (Romer J);Beck, Koller & Company’s Application (1947) 64 RPC 76. I consider the Applicant’s Goods are similar to the 717 and 724 Goods. The nature of office furniture covered by 717 and 724 used for a different purpose other than in the office is the same as the nature of furniture covered by the Applicant’s Goods; they are all pieces of furniture. These pieces of furniture would be bought and sold through the same trade channels whether they were for the purpose of office use or for use in the home. Moreover, the item storage apparatus (furniture) covered by 717 and 724 would include wardrobes or cabinets, bookcases, shelves, dressers, chests of drawers, containers, dressing tables and library bookcases, and anyone of these items would fall within every one of the furniture groupings claimed by the Applicant. Before proceeding it is important to note that on 23 August 2022 after the Trade Mark was accepted for possible registration, the Applicant requested that the specification of goods in class 20 be amended to include the limitation ‘None of the above being commercial office furniture’. I do not consider the addition of this amendment differentiates the Applicant’s Goods from the Opponent’s 717 and 724 Goods. This is because even with the limitation, the Application still covers goods which are the same or similar to the Opponent’s 717 and 724 Goods which are not commercial in nature.