Hype DC Pty Ltd v Lux360 Ltd

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
ReOpposition by Hype DC Pty Ltd to registration of the trade mark the subject of application 2268306 (9) – JUST HYPE – in the name of LUX360 Limited.

Delegate: Debrett Lyons
Representation: Opponent: Clayton Utz
Applicant: Griffith Hack

Decision: 2025 ATMO 5
Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 44 and 59 pressed but neither established. Trade mark to proceed to registration.

Background

This decision concerns an opposition to registration of the trade mark which is the subject of the application for registration detailed below. The application was made in the name of Just Hype Limited but later assigned to LUX360 Limited (‘Applicant’). The opposition was brought by Hype DC Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth).[1]
[1] Unless otherwise indicated, any references to sections or regulations below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) or the Trade Marks Regulations 1995 (Cth), respectively.

Trade Mark:

JUST HYPE

(‘Trade Mark’)

Application Number:

2268306

Filing Date:

9 May 2022

Specification:

Class 9: Glasses cases; Glasses for optical use; Frames for glasses; Sunglasses; Lenses for sunglasses; Sunglass cases; Straps for sunglasses; Eyeglasses; Prescription eyeglasses; Lenses for eyeglasses; Eyewear; Straps for spectacles;
Contact lenses.

(‘Applicant’s Goods’)

The Trade Mark application was examined under s 33 and accepted for possible registration. On 10 October 2022 publication of the application’s acceptance occurred. On 9 December 2022, the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark, followed on 6 January 2023 by a Statement of Grounds and Particulars (‘SGP’). On 8 March 2023, Just Hype Limited filed a Notice of Intention to Defend. On 5 May 2023, the Opponent requested a cooling-off period which ran until 8 November 2023 without the matter seeming to have been resolved by the parties.
The Opponent did not file Evidence in Support of the opposition. The Applicant filed Evidence in Answer, being the Declaration of Ms Pavandeep Shergill, director of Lux360 Limited, made 10 May 2024 with Annexures 1-5 (‘Shergill Declaration’). The Opponent filed Evidence in Reply, being the Declaration of Robert Reader Neil, partner of Clayton Utz, made 27 June 2024, with Exhibits 1-5 (‘Neil Declaration’).
Once the time allowed for filing evidence had ended the parties requested a decision by way of written submissions. Both parties filed written submissions.
On 4 December 2024, an application was made to this Office by Just Hype Limited to record a transfer of interest in the Trade Mark from Just Hype Limited (in administration) to the Applicant. That application was supported by a Deed of Assignment of Intellectual Property Rights made on 31 March 2023 (‘Deed’). The transmission of ownership of the Trade Mark from Just Hype Limited to the Applicant was recorded on the Register of Trade Marks on 4 December 2024.
I have been delegated to decide this opposition which I do based on the material described above.
Consideration
The SGP nominated grounds of opposition under ss 42, 44, 59 and 60. The Opponent’s written submissions only press ss 44 and 59. Further, they make plain its belief that the s 59 ground is conclusive of the opposition. My consideration starts there.
Section 59
The section provides that:
Applicant not intending to use trade mark
The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia, or
(b) to assign the trade mark to a body corporate for use by the body Corporate in Australia;
in relation to the goods and/or services specified in the application.
The Opponent’s submission is that the s 59 ground of opposition must succeed because:
(a) the Applicant has been on notice, at least since receiving the Opponent’s
Statement of Grounds and Particulars filed on 6 January 2023, that the Applicant’s
intention to use the mark was in issue;
(b) despite this, the Applicant has chosen not to file any evidence from any
representative of the Applicant going to the Applicant’s intention to use the
Opposed Trade Mark for the Opposed Goods, whether as at the Priority Date or at
any other time;
(c) instead, the only evidence which has purportedly been filed on the Applicant’s
behalf is a declaration which (as made clear by the Neil Declaration) was made by a
person who is plainly unable to give evidence about the matters deposed,
including any intention which the Applicant may have held as at the Priority Date;
and
(d) in any event, the Shergill Declaration contains no credible evidence of any
intention to use the Opposed Trade Mark for the Opposed Goods as at the
Priority Date by any party.
The date at which the rights of the parties are to be determined is 9 May 2022, being the filing date of the application (‘Relevant Date’).[2] In this case, the Relevant Date is also the “priority date”.
[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2] (Kitto J).
Section 17 defines a trade mark as “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.” In Aston v Harlee Manufacturing Co, Fullagher J said that “the making of the [trade mark] application itself is, I think, to be regarded as prima facie evidence of intention to use. … and I think that, on an opposition …, the burden must rest on the opponent …, of proving the absence of intention”.[3]
[3] (1960) 103 CLR 391 (High Court of Australia).
Generally, the onus is on the Opponent to prove the opposition.[4] The intention to use a trade mark must exist at the Relevant Date[5] and so it is incumbent upon the Opponent to establish that the Applicant did not intend to use the Trade Mark at the time of filing. However, in Health World Ltd v Shin-Sun Australia Pty Ltd, Jacobson J noted the difficulties an opponent faced establishing s 59 because of the subjective nature of an applicant’s intention, the presumption of intention and the onus[6] and so the present state of the law is that an opponent bears the onus to establish a prima facie case of the applicant’s lack of intention[7].
[4] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[5] Id.
[6] [2008] FCA 100, [161].
[7] Ibid [163].
The SGP states that:
The Applicant did not at the priority date use, intend to use, or intend to authorise the use of the Opposed Mark on all of the applied-for goods. The applied-for goods are very broad and appear to be based on the “pick-list” rather than tailored to actual intended use. Having put intention to use at issue, the onus shifts to the Applicant to demonstrate its intention to use the Opposed Mark for all the applied-for goods.
As noted, there was no Evidence in Support and so the SGP is all the Opponent can rely upon for its claim to have made a prima facie case. The Opponent’s assertion that by reason of the SGP the Applicant knew that s 59 might be an issue is not enough. Further, bearing in mind the breadth of class 9 of the International Classification Scheme of Goods and Services I do not accept the Opponent’s submission that the Applicant’s Goods “are very broad”, nor do I think a reasonable inference can be drawn that those goods “appear to be based on the ‘pick-list’[8] rather than tailored to actual intended use.”
[8] An administrative expedient provided to trade mark applicants.
In CH’I International Limited v Chi Forest Technology (SINGAPORE) PTE. LTD, Hearing Officer Makrigiorgos stated that a “prima facie case should be sufficiently strong and established by sufficient evidence for the applicant to be called on to answer it.” [9] I find that the Opponent has failed to establish a prima facie case of lack of intention.
[9] [2024] ATMO 225 at [83].
I come then to the submissions and the question of whether there is other evidence that the requisite intention was lacking at the Relevant Date. Much of what the Opponent has to say (by way of written submission and in the Neil Declaration) is critical of the Shergill Declaration and of the declarant’s capacity to shed light on intention at that time.
The Shergill Declaration restates from the Deed the fact that Just Hype Limited has been in administration since 31 March 2023. The Neil Declaration provides evidence that Ms Shergill is a director of the Applicant but that the Applicant was incorporated on 23 March 2021. In short, the criticism is that Ms Shergill is unqualified to give evidence on behalf of Just Hype Limited, still less to have knowledge of that company’s intention at the Relevant Date.
The Shergill Declaration is silent on the declarant’s capacity to personally know the intention of Just Hype Limited but points to the international portfolio of registrations for the Trade Mark and similar marks and states that the “HYPE” brand was established “in or around 2011 in the United Kingdom” and that its products have been provided “globally, including in Australia since about 2018”. The Applicant’s submissions are that:
… at the time the Shergill Declaration was made, LUX360 Limited was the Applicant of the Opposed Mark. Ms Shergill, as the Director of LUX360 Limited, the Applicant, is able to give evidence about the matters deposed and relating to the prior use and intention of the Original Applicant within the knowledge she has in her personal and professional capacity.
The Applicant further submits that “the Delegate should not draw any inference from the Applicant’s failure to record the assignment of ownership of the Opposed Mark before filing evidence”. Albeit that it may influence a costs order, I do not draw any inference from that timing, and, on balance, I do not find sufficient evidence that the requisite intention to use the Trade Mark was missing at the Relevant Date.
For these reasons the s 59 ground of opposition is not established.
Section 44
In the SGP the Opponent particularised the s 44 ground as follows:
Hype DC Pty Ltd (the Opponent) is the owner of the following trade marks which have an earlier priority date to Australian Trade Mark Application No. 2268306 (the Opposed Mark) in the name of Just Hype Limited (the Applicant): HYPE (Australian Trade Mark No. 2012543), HYPE (Australian Trade Mark No. 2257455), HYPE DC (Australian Trade Mark No.1135454), HYPE DC (device) (Australian Trade Mark No.1135779), HYPE STUDIO (Australian Trade Mark No. 2222003) (collectively, the HYPE Marks). The Applicant has not established prior continuous use, honest concurrent use or other circumstances justifying acceptance of the Opposed Mark under Sections 44(4), 44(3)(a) or 44(3)(b).
Section 44 is reproduced below:
Section 44 - Identical etc. trade marks
(1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:
(a)the applicant's trade mark is substantially identical with, or deceptively similar to:
(i)   a trade mark registered by another person in respect of similar goods or closely related services; or
(ii)     a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
(b)the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
Note 1: For deceptively similar see section 10.
Note 2: For similar goods see subsection 14(1).
Note 3: For priority date see section 12.
Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
(2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if:
(a)it is substantially identical with, or deceptively similar to:
(i)   a trade mark registered by another person in respect of similar services or closely related goods; or
(ii)     a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b)the priority date for the registration of the applicant's trade mark in respect of the applicant's services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
Note 1: For deceptively similar see section 10.
Note 2: For similar services see subsection 14(2).
Note 3: For priority date see section 12.
Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
(3)If the Registrar in either case is satisfied:
(a)that there has been honest concurrent use of the 2 trade marks; or
(b)that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
Note: For limitations see section 6.
(4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:
(a)beginning before the priority date for the registration of the other trade mark in respect of:
(i)   the similar goods or closely related services; or
(ii)     the similar services or closely related goods; and
(b)ending on the priority date for the registration of the applicant's trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
Note 2: For predecessor in title see section 6.
Note 3: For priority date see section 12.
Section 10 - Definition of deceptively similar
For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
Section 14 – Definition of similar goods and similar services
(1) For the purposes of this Act, goods are similar to other goods:
(a) if they are the same as the other goods; or
(b) if they are of the same description as that of the other goods.
(2) For the purposes of this Act, services are similar to other services:
(a) if they are the same as the other services; or
(b) if they are of the same description as that of the other services.
The trade marks listed at [21] on which the Opponent relies are registered for class 25 goods and class 35 services but it is plain from the Opponent’s submissions that the s 44 claim is based solely on a comparison of the registered class 35 services with the Applicant’s Goods. The Opponent must therefore establish that at least one of those marks:
·     has a priority date which is earlier than the Relevant Date;
·     is registered to another person and in respect of services which are closely related to the Applicant’s Goods; and
·     the mark is substantially identical with, or deceptively similar to, the Trade Mark.
I note that all the trade mark registrations listed at [21] have priority dates earlier than the Relevant Date. They all belong to the Opponent.
In Registrar of Trade Marks v Woolworths Ltd,French J stated that the comparison of goods/services was logically antecedent to the comparison of the trade marks.[10] As stated, argument is limited to consideration of whether the Applicant’s Goods are closely related to the class 35 services of the Opponent’s registrations. The comparison is therefore between the Applicant’s eyewear and eyeglasses in class 9 and the Opponent’s class 35 services which vary slightly in description between one registration and another but can faithfully be described as “retail services being retail sale of garments, footwear including shoes, headwear and accessories in relation to the aforementioned goods”.
[10] [1999] FCA 1020, [41].
Aside from accessories such as cases for glasses, and perhaps sunglasses, the Applicant’s Goods are all prescription products. The Applicant thus takes issue with the Opponent’s example, submitting that even if consumers are sufficiently educated to understand that brands such as Chanel, Gucci, Prada and Dior might provide fashion frames for glasses, consumers would not expect those brands to provide the prescription lenses, contacts and glasses.
However, I do not think that it is even necessary for me to characterise the Applicant’s Goods as somehow specialised in order to draw the finding that they are not closely related to the class 35 retail services which, I note, does not even include retail sale of these specific goods. Moreover, as the Applicant correctly notes, classes 9 and 35 are not listed in IP Australia’s table of related classes, supporting an established practice that such goods and services are in most cases sufficiently distinguishable.
I find that the compared goods and services are not closely related and so find that s 44 has not been established.
Decision
Section 55 relevantly provides:
(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.
Note:For limitations see section 6.
The Opponent has not established a ground of opposition and trade mark application number 2268306 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.
Costs
The Applicant sought an award of costs in its favour. I award costs against the Opponent under s 221 in line with the amounts in Schedule 8 of the Trade Marks Regulations 1995 (Cth). In making this award I have considered that the Deed did not form part of the Evidence in Answer but I have come to the conclusion that the Opponent’s preparation and presentation of its s 59 case was not significantly impacted by that fact.
Debrett Lyons
Hearing Officer
Delegate of the Registrar of Trade Marks
8 January 2025

Trade Mark:	JUST HYPE	(‘Trade Mark’)
Application Number:	2268306
Filing Date:	9 May 2022
Specification:	Class 9: Glasses cases; Glasses for optical use; Frames for glasses; Sunglasses; Lenses for sunglasses; Sunglass cases; Straps for sunglasses; Eyeglasses; Prescription eyeglasses; Lenses for eyeglasses; Eyewear; Straps for spectacles; Contact lenses. (‘Applicant’s Goods’)

[2025] ATMO 5

8 January 2025