Hype DC Pty Ltd v Lux360 Ltd - [2025] ATMO 5

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…

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: [2025] ATMO 5
Decision Date: 8 January 2025

CaseChat Overview and Summary

Hype DC Pty Ltd (the Opponent) opposed the registration of a trade mark by Lux360 Ltd (the Applicant) under the *Trade Marks Act 1995* (Cth). The opposition was based on several grounds, but the Opponent ultimately pressed only grounds under sections 44 and 59 of the Act, asserting that the section 59 ground was conclusive of the opposition. The matter was heard by Debrett Lyons, a Hearing Officer delegated to decide the opposition.

The primary legal issues before the court were whether the Applicant intended to use the trade mark in Australia in relation to the specified goods and services, as required by section 59, and whether the goods and services were closely related, as required by section 44. The Opponent argued that the Applicant had not filed sufficient evidence to demonstrate an intention to use the mark, particularly as at the priority date of 9 May 2022, and that the Applicant had been on notice of this issue since January 2023.

The Hearing Officer considered the onus on the Opponent to prove the absence of intention to use the trade mark. While acknowledging the subjective nature of intention and the difficulties opponents face in establishing a lack of intention, the Hearing Officer found that the Opponent had not discharged this onus. The Hearing Officer also found that the compared goods and services were not closely related, meaning the section 44 ground was not established.

Consequently, the Hearing Officer decided that the grounds of opposition had not been established and directed that the Applicant's trade mark application could proceed to registration. The Hearing Officer also awarded costs against the Opponent.

Orders

Orders of the court

Full text does not contain this section.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

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 LyonsHearing OfficerDelegate of the Registrar of Trade Marks8 January 2025

Ratio Decidendi

Legal Principle Established

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 markThe 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’sintention to use the mark was in issue;(b) despite this, the Applicant has chosen not to file any evidence from anyrepresentative of the Applicant going to the Applicant’s intention to use theOpposed Trade Mark for the Opposed Goods, whether as at the Priority Date or atany other time;(c) instead, the only evidence which has purportedly been filed on the Applicant’sbehalf is a declaration which (as made clear by the Neil Declaration) was made by aperson 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 anyintention to use the Opposed Trade Mark for the Opposed Goods as at thePriority 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].

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’)