IFit Inc v Coles Group Limited - [2024] ATMO 194

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by iFit Inc to registration of trade mark application number 2161050 (classes 21 and 28) – COLES PERFORM (figurative) - in the name of Coles Group Limited

Delegate:

Jonathon Galloway

Representation:

Opponent: Malcolm Bell of Phillips Ormonde Fitzpatrick

Applicant: Ben Fitzpatrick of Counsel, instructed by Tony Lolis and Nicholas Butera of Davies Collison Cave Pty Ltd

Decision:

2024 ATMO 194

Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 42(b), 44, 60 considered – no ground established – trade mark to proceed to registration

Background
1. This decision concerns an opposition under s 52 of the Trade Marks Act1995 (Cth)[1] by iFit Inc (‘Opponent’) to registration of the following trade mark:
Trade Mark No: 2161050
Trade Mark: (‘Trade Mark’)
Applicant: Coles Group Limited (‘Applicant’)
Filing Date: 5 March 2021
[1] Unless otherwise stated, each reference to a section or regulation is a reference to the Trade Marks Act1995 (Cth) (‘Act’) or Trade Marks Regulations 1995 (Cth) (‘Regulations’) respectively.
Specification:
Class 21: Household or kitchen utensils and containers; shakers, including shakers for mixing protein powders and powdered supplements; plastic water bottles; water bottles (containers); drinking bottles for sports; combs and sponges; bins; brushes (except paint brushes); brushware; brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes; cookware, tableware and kitchenware, except forks, knives and spoons; coffee cups; coffee mugs; coffee filters, non-electric; coffee grinders, hand-operated; coffee percolators, non-electric; coffee pots (non-electric); coffee services (tableware); coffee-pot stands; cosies for coffee-pots; hand operated coffee mills; non-electric apparatus for making coffee; non-electric coffee brewers; non-electric coffee makers; non-electric coffee percolators; non-electric coffee pots; steam controllers for coffee-makers; non-electric plunger coffee makers; coffee stirrers; non-electric coffee frothers; coffee servers, non-electric, of precious metal; coffee filters, non-electric; coffee services (tableware); coffee scoops; sticks for stirring coffee; drinking glasses; plastic cups; coffee capsule dispensers; coffee container; jars for household use; tooth brush holders; racks in this class, being clothes racks, ironing racks, towel racks and drying racks; containers in this class, being containers for beverages, cosmetics, domestic use, flowers, food, soap, storage purposes (household or kitchen use) and toothbrushes; pots, including, flower pots, pots made of plastic and pots made of earthenware; clothes horses (airers); buckets; containers made of mesh for domestic use; cages for household pets; food bowls for pets; litter boxes (trays) for pets; plastic containers for pets; tooth brushes, including, electric-operated toothbrushes and battery-operated toothbrushes; inter-dental brushes; holders for domestic use; carrying case for toothbrushes, mouth rinsing mugs; replacement brush heads for toothbrushes; dental floss; dental floss holders; toothpicks; dental picks for personal use; dental harps; tooth brush holders; pill boxes (not for medical purposes); tablet (pill) boxes not for medical purposes; place mats made of plastics; place mats, not of paper or textile; bar mats; bar mats for use…

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 194
Decision Date: 8 October 2024

CaseChat Overview and Summary

This matter concerned an opposition by IFit Inc to the registration of a trade mark by Coles Group Limited. The opposition was brought under section 52 of the *Trade Marks Act 1995* (Cth), with grounds including sections 42(b), 44, and 60 of the Act. The hearing officer was Jonathon Galloway.

The primary legal issue before the hearing officer was whether the proposed registration of Coles Group Limited's trade mark should be refused. Specifically, the hearing officer had to determine if the use of the trade mark would be contrary to law, as provided by section 42(b) of the *Trade Marks Act 1995* (Cth), by contravening sections 18 or 29 of the Australian Consumer Law. The opponent contended that such use would mislead or deceive consumers.

In reaching his decision, the hearing officer considered the requirements for establishing an opposition under section 42(b), which necessitates demonstrating on the balance of probabilities that the use of the trade mark would, rather than merely could or might, contravene the Australian Consumer Law. Applying this standard, and for reasons previously outlined in relation to the section 60 ground of opposition, the hearing officer found that it was not likely that the use of the trade mark would mislead or deceive an ordinary or reasonable consumer into believing that the trade mark and the opponent's trade marks were related. Consequently, the ground of opposition under section 42(b) was not established.

As none of the nominated grounds of opposition were established, the hearing officer decided that the trade mark application could proceed to registration. The hearing officer also ordered that costs be awarded against the opponent, as they had not succeeded in their opposition.

Orders

Orders of the court

[62]

Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

Section 42 relevantly provides:An application for the registration of a trade mark must be rejected if:(a) …(b) its use would be contrary to law.57. The Opponent relies on ss 18 and 29 of the Australian Consumer Law (‘ACL’) of Schedule 2 of the Competition and Consumer Act 2010 (Cth).58. Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representation that are false or misleading. 59. In order to establish an opposition under s 42(b), the Opponent must demonstrate on the balance of probabilities that use of the Trade Mark would, as opposed to could or might, contravene ss 18 or 29 of the ACL.[47][47] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).60. For the reasons outlined in relation to the s 60 ground of opposition, in my view it is not likely that use of the Trade Mark would be likely to mislead or deceive an ordinary or reasonable consumer of the relevant goods into believing that the Trade Mark and any of the Opponent’s Trade Marks are related.61. The ground of opposition under s 42(b) is not established.Decision Section 55(1) relevantly provides: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.63. The Opponent has not established any of the nominated grounds of opposition. Accordingly, trade mark application 2161050 may proceed to registration one month from the date of this decision.64. Should the Registrar be served with a notice of appeal before registration of the Trade Mark, I direct that the registration of the Trade Mark not occur until the appeal has been decided or discontinued, and that any disposition of the application be in accordance with the Court’s orders or direction.Costs65. Both parties sought costs. As the Opponent has not established a ground of opposition, I award costs against the Opponent under s 221 in accordance with Schedule 8 of the TradeMarks Regulations 1995 (Cth).Jonathon GallowayHearing OfficerOppositions and HearingsTrade Marks and Designs8 October 2024

Ratio Decidendi

Legal Principle Established

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