Intact Projects Pty Ltd v Intact Consulting Pty Ltd - [2018] ATMO 24

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Intact Projects Pty Ltd to registration of trade mark application 1647069 (37) – INTACT GROUP COMMERICIAL PROPERTY SERVICES (Device) - filed in the name of Intact Consulting Pty Ltd

Delegate:

Nicholas Smith

Decision on the Written Record

Decision:

2018 ATMO 24

Trade Marks Act 1995 (Cth) - Section 52 opposition: s 44 considered – ground established – insufficient evidence to support prior use or honest concurrent use – registration refused

Background
1. This is an opposition brought by Intact Projects Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Intact Consulting Pty Ltd (‘Applicant’).

Application Number:

1647069

Filing Date:

16 September 2014

Services:

Class 37: Building maintenance; Handyman repair, maintenance and installation services; Home maintenance services; Locksmithing (Repair, maintenance and installation); Locksmithing services being the installation, repair and maintenance of locks and locking systems; Maintenance and repair of buildings; Maintenance and repair of flooring; Maintenance and repair of gas installations and equipment; Maintenance and repair of utilities in buildings; Maintenance of buildings; Maintenance of plumbing; Maintenance, installation and repair of electrical items and equipment; Maintenance, installation and repair of household items and equipment; Property maintenance; Repair, maintenance and installation consultancy services; Sign maintenance; Window maintenance (‘Applicant’s Services’)

Endorsements:

Provisions of subsection s44(4) and/or Reg 4.15A(5) applied. *

Trade Mark:

(‘Trade Mark’)

2. Following the examination process, the application’s acceptance for possible registration was advertised on 21 April 2016 in the Australian Official Journal of Trade Marks. The Opponent filed a Notice of Intention to Oppose on 9 May 2016. The Opponent then filed a Statement of Grounds and Particulars on 9 June 2016, which was later amended by letter on 28 June 2016. The amended Statement of Grounds and Particulars (‘SGP’) raised grounds of opposition under ss 43, 44, 58A, 60 and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 19 July 2016.
Evidence and Submissions
3. The Opponent filed Evidence in Support of its opposition (‘EIS’) on 7 October 2016. This evidence consists of a declaration made on 30 September 2016 by Dane Pavivic, the Managing Director of the Opponent, with Exhibits DP-01 to DP 15 (‘Pavivic 1’).
4. The Applicant filed Evidence in Answer (‘EIA’) on 5 January 2017. This evidence consists of a declaration made on 5 January 2017 by Nathan Dale, Managing Director of the Applicant, with Exhibits A to C (‘Dale Declaration’). The Dale Declaration includes, as Exhibit A, a copy of a declaration dated 23 January 2016, also made by Nathan Dale, purporting to show that the Trade Mark has been in use prior to certain trade marks cited by the Examiner…

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: [2018] ATMO 24
Decision Date: 20 February 2018

CaseChat Overview and Summary

This decision concerns an opposition proceeding before a Hearing Officer of the Trade Marks Office. The applicant, Intact Projects Pty Ltd, sought to register a trade mark, while the opponent, Intact Consulting Pty Ltd, opposed this registration. The core of the dispute revolved around whether the applicant had established sufficient use of its trade mark and whether its use was honest and concurrent with the opponent's existing trade mark.

The Hearing Officer was required to determine whether the opposition ground based on section 44 of the *Trade Marks Act 1995* (Cth) was established. This involved assessing whether the applicant had made out a case for honest concurrent use of the trade mark, considering the evidence of use presented and any potential confusion with the opponent's mark.

The Hearing Officer found that there was little to no evidence of the applicant's use of the trade mark. Furthermore, evidence indicated significant and repeated confusion between the opponent and another entity, Intact Construction Services Pty Ltd t/a Intact Group, some of which may have been attributable to the similarity between the trade mark in question and the opponent's trade mark. In the absence of satisfactory evidence of use by the applicant, the Hearing Officer was not satisfied that any particular inconvenience would befall the applicant if registration were refused. Consequently, the opposition ground under section 44 was established.

The Hearing Officer refused to register the trade mark and awarded costs against the applicant in favour of the opponent, applying the general rule that costs follow the event.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

In the present case there is little or no evidence of any use of the Trade Mark by the Applicant (as opposed to Intact Construction Services Pty Ltd t/a Intact Group). Furthermore the EIS shows significant and repeated confusion between the Opponent and Intact Construction Services Pty Ltd t/a Intact Group, some of which may have been caused by the similarities between the Trade Mark and the Opponent’s Trade Mark. In the absence of any evidence of use by the Applicant I am not satisfied of any particular inconvenience to the Applicant if registration was not permitted. The Applicant has not established honest concurrent use of the Trade Mark. 33. I accordingly find the opposition ground based on s 44 of the Act established.Decision34. I have found the Opponent has established the ground of opposition it raised pursuant to s 44 of the Act. As the Delegate of the Registrar I accordingly refuse to register the Trade Mark.Costs35. The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Applicant under section 221 of the Act in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995.Nicholas SmithHearing OfficerOppositions and Hearings20 February 2018

Ratio Decidendi

Legal Principle Established

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Application Number:	1647069
Filing Date:	16 September 2014
Services:	Class 37: Building maintenance; Handyman repair, maintenance and installation services; Home maintenance services; Locksmithing (Repair, maintenance and installation); Locksmithing services being the installation, repair and maintenance of locks and locking systems; Maintenance and repair of buildings; Maintenance and repair of flooring; Maintenance and repair of gas installations and equipment; Maintenance and repair of utilities in buildings; Maintenance of buildings; Maintenance of plumbing; Maintenance, installation and repair of electrical items and equipment; Maintenance, installation and repair of household items and equipment; Property maintenance; Repair, maintenance and installation consultancy services; Sign maintenance; Window maintenance (‘Applicant’s Services’)
Endorsements:	Provisions of subsection s44(4) and/or Reg 4.15A(5) applied. *
Trade Mark:	(‘Trade Mark’)