Heat Wheat International Pty Ltd v Wheat Bags Australia Pty Ltd [Sec=Unclassified]

[2009] ATMO 71

TRADE MARKS ACT 1995

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

Re:Opposition by Heat Wheat International Pty Ltd to registration of trade mark application 1197413(10) – WHEAT BAGS AUSTRALIA LOGO - filed in the name of Wheat Bags Australia Pty Ltd.

Delegate:

Debrett Lyons

Representation:

Opponent: No appearance

Applicant: Danny and Karen Willis 

Decision:

2009 ATMO 71

Section 52 opposition: No ground established. Opposition fails. Costs awarded against opponent.

Background

1.     On 17 September 2007, Wheat Bags Australia Pty Ltd (‘the applicant’) filed an application to register the trade mark which appears below:

2.     The application was examined and accepted for possible registration in class 10 of the International (Nice) Classification of Good and Services in respect of the following goods:

Cold packs for medical purposes; covers for medical bags; cushioned products for medical use; cushioning devices for medical use; cushions for medical purposes; heating apparatus for medical purposes; heating cushions (pads), non-electric for medical purposes; heating cushions, non-electric for medical purposes; heating pads for medical purposes; warmers for medical use; warming apparatus for medical use; therapeutic apparatus (medical)

3. Acceptance of the application was subject to an endorsement that the provisions of subsection 41(5) of the Trade Marks Act 1995 (‘the Act’) applied, about which I will have more to say later.

4.     The application was advertised as having been accepted for possible registration in the Australian Official Journal of Trade Marks on 17 January 2008. On 17 April 2008, Heat Wheat International Pty Ltd (‘the opponent’) filed a notice of opposition to registration of the trade mark under section 52 of the Act.

5. The notice of opposition relied on sections 39, 41, 42, 43, 44, 58, 58A, 59, 60, 61, 62 and 62A of the Act.

6.     Both sides served and filed evidence which is referred to herein to the extent necessary.

7.     A hearing was convened on 21 August 2009 in Brisbane before me, Debrett Lyons, acting as a delegate of the Registrar of Trade Marks.

8.     Prior to the hearing the opponent’s solicitors notified me that the opponent would be represented at the hearing by Wendy Ragg, a director of opponent company.

9.     At the hearing, the applicant was represented by husband and wife, Danny and Karen Willis.  Ms Ragg did not present herself and the opponent was otherwise unrepresented, nor were any written submissions received on its behalf.

Discussion

10.   The opponent bears the onus of establishing at least one of its grounds of opposition on the balance of probabilities: Pfizer Products Inc v Karam (2006) 70 IPR 599) per Gyles, J.

11.   Despite the absence of aural or written submissions on behalf of the opponent, it falls to me to assess the evidence of record to determine its support for the numerated grounds of opposition.

12. Having made that assessment, I find in the first instance that there is nothing in the evidence or in the facts of the case to support any of sections 39, 42, 43, 61, 62 or 62A of the Act or to merit their further consideration. Those grounds are not established.

13. The remaining grounds under section 41, 44, 58, 59 and 60 can be considered summarily as follows:

Section 41 : trade mark not capable of distinguishing applicant’s goods

14. As mentioned previously, the trade mark was accepted under the provisions of section 41(5) of the Act which means that the combination of the trade mark’s inherent distinctiveness, together with the use made of the trade mark by the applicant, persuaded the examiner that the trade mark was capable of distinguishing the applicant’s goods from the goods or services of other traders.

15.   The evidence put to the examiner was not filed by the opponent as part of its evidence-in-support of the opposition and so there is no basis on which I can assess the merit of this ground of opposition.  The ground of opposition is not established.

Section 44 : conflicting trade marks belonging to another party

16. The notice of opposition basis the ground under section 44 on the following six trade marks applications / registrations all filed by the opponent:

Number	Trade mark	Status	Filing date	Goods / services
584312	17.   HEAT WHEAT ; HEAT-WHEAT (series of 2)	Regd.	14/8/92	Class: 10 Therapeutic devices and apparatus in this class, including devices for relieving stress, pain, tension; pads, cushions, packs or other devices which may be heated or chilled for therapeutic treatment or providing benefit to persons, the aforementioned goods including goods in the shape of animals or characters; pacifiers; and all other goods in this class
653624	Regd.	19/2/95	Class: 10 Therapeutic devices and apparatus in this class, including devices for relieving stress, pain and tension; pads, cushions, packs or other devices which may be heated or chilled for therapeutic treatment or providing benefit to persons, the aforementioned goods including goods in the shape of animals or characters; pacifiers; all the aforementioned goods being in the form of a pillow
1148752	Regd.	24/11/06	Class: 10 Therapeutic devices and apparatus in this class, including devices for relieving stress, pain, tension; pads, cushions, packs or other devices which may be heated or chilled for therapeutic treatment or providing benefit to persons, the aforementioned goods including goods in the shape of animals or characters; pacifiers
1173620	18.   AUSTRALIA'S ORIGINAL WHEAT BAGS	19.   Lapsed	30/4/07	Class: 10 Therapeutic devices and apparatus in this class, including devices for relieving stress, pain, tension, pads, cushions, packs or other devices which may be heated or chilled for therapeutic treatment or providing benefit to persons, the aforementioned goods including goods in the shape of animals or characters; pacifiers Class: 35 Administration of business affairs; business management, retail, wholesale, distribution (other than transport); promotional and advertising services (including by way of E- Commerce or the Internet) for devices used for relieving stress, pain, tensions, pads, cushions, packs or other devices which may be heated or chilled for therapeutic treatment or providing benefit to persons, the aforementioned goods including goods in the shape of animals or characters; pacifiers
1173862	Regd.	1/5/07	Class: 35 Administration of business affairs; business management; retail, wholesale, distribution (other than transport); promotional and advertising services (including by way of E-Commerce or the Internet) for devices used for relieving stress, pain, tension pads, tension cushions, packs or other devices which may be heated or chilled for therapeutic treatment or providing benefit to persons, pacifiers and the aforementioned goods in the shape of animals or characters
1231391	Pend-ing	28/3/08	Class: 10 Therapeutic devices and apparatus including devices for relieving stress, pain and tension in the form of pads, cushions, packs or other devices in the shape of animals or characters which may be heated or chilled for therapeutic treatment or providing a benefit to persons Class: 35 Administration of business affairs; business management; promotional and advertising services; retail, wholesale and distribution services (including by way of e-commerce or the Internet) for devices used for relieving stress, pain and tension in the form of pads, cushions, packs or other devices in the shape of animals or characters which may be heated or chilled for therapeutic treatment or providing a benefit to persons

20. To establish its opposition under section 44, the opponent must show:

v  the existence of a pending or registered trade mark in the name of a person other than the applicant to which the opposed trade mark is either substantially identical or deceptively similar;

v  that the pending or registered trade mark has been filed or is registered in respect of similar goods or closely related services; and

v  that the pending or registered trade mark has an earlier priority date.

21.   Applying those criteria, application 1173620 has lapsed and application 1231391 post-dates the applied-for application.  They are to be disregarded.

22.   None of the remaining trade marks could be considered either substantially identical or deceptively similar to the applied-for trade mark: Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd 1B IPR 523.

23.   Accordingly, this ground of opposition is not established.

Section 58 : applicant not the owner of the trade mark

24.   To establish this ground the trade marks under comparison must be at least substantially identical : Carnival Cruise Lines v Sitmar Cruises Ltd (1994) 31 IPR 375.

1. Of the trade marks set out in paragraph 19 above, it is only lapsed application 1173620 for AUSTRALIA'S ORIGINAL WHEAT BAGS which deserves comment in this regard.  Making a side-by-side comparison of that trade mark with the applied-for trade mark does not lead me to find that they are substantially identical: Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd, op. cit.

   26. Section 58 also requires the opponent to show that it, or a party other than the applicant, first used the applied-for trade mark (or, as explained, one substantially identical thereto) in Australia for the same kind of goods as those covered by application before the 17 September 2007 filing date of the application, or before the applicant’s first use of the trade mark, whichever is the earlier.

   27.   Even if it could be considered that the trade marks are substantially identical, there is nothing in the evidence-in-support to indicate to me that the trade mark AUSTRALIA'S ORIGINAL WHEAT BAGS has ever been used by the opponent or anyone else.

   28.    This ground of opposition is not established.

Section 59 : applicant not intending to use the trade mark

29.   The applicant is using the applied-for trade mark and there is nothing in the evidence to suggest that the applicant lacked an intention to use it at any relevant time.  This ground of opposition is not established.

Section 60 :  trade mark confusingly similar to a trade mark with a reputation

30.   Although Ms Ragg states that her business was founded in 1992, there is none of the usual material necessary to prove a reputation in any of the aforementioned trade marks : McCormick & Co Inc. v McCormick, 51 IPR 102; ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 23 IPR 193.

Decision

31. Section 55 of the Act provides:

55Decision

(1)Unless the proceedings are discontinued or dismissed, 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.

Note:For limitations see section 6.

(2)Without limiting subsection (1), if the application was opposed on the ground specified in paragraph 62(a) (that the application, or a document filed in support of the application, was amended contrary to this Act), the Registrar may revoke the acceptance of the application and examine the application again under section 31.

Note:For examine and this Act see section 6.

32.   The opponent has not established a ground of opposition and so its opposition is   unsuccessful.  Application 1197413 may proceed to registration after one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been discontinued or registration is otherwise ordered by the court.

Costs

33.   I award costs against the opponent, calculated in accordance with Schedule 8 to the Trade Mark Regulations 1995.

Debrett Lyons

Hearing Officer

Trade Marks Hearings

3 September 2009