Internet Services Australia 1 Pty Limited - [2022] ATMO 84

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 2081999 (classes 14, 18, 25) – COMMUNE – in the name of Internet Services Australia 1 Pty Limited

Delegate: Nicholas Barbey

Representation: Applicant: Bird & Bird

Decision: 2022 ATMO 84
Trade Marks Act 1995 (Cth) – section 33 proceeding – section 44 considered – trade mark deceptively similar to earlier registered trade mark – no evidence of use filed – amendment to specification – trade mark application accepted.
Background

On 16 April 2020, Internet Services Australia 1 Pty Limited (‘Applicant’) filed an application to register the following trade mark:
Trade Mark:               COMMUNE   (‘Trade Mark’)
Application no.:         2081999
Priority Date:             16 April 2020
Specification:             Class 14: hat jewellery; imitation jewellery; jewellery; jewellery chain; jewellery made of non-precious metal; jewellery made of precious metals; jewellery made of semi-precious materials; precious stones; semi-precious stones; horological instruments; chronometric instruments; jewelry hat pins; watches
Class 18: handbags; carrying bags (other than disposable carrier bags); briefcases; purses; leather wallets; luggage; luggage bags; imitation leather; leather; travelling sets (leatherware); umbrellas; walking sticks
Class 25: apparel (clothing, footwear, headgear); belts (clothing); clothing; scarves; swimwear; sportswear; headwear
(‘Goods’)
The application was examined as required by s 31 of the Trade Marks Act 1995 (Cth) (‘Act’) and a first examination report identifying the following grounds for rejection under s 44 of the Act was issued to the Applicant:
Your trade mark closely resembles the earlier trade marks because the main and most memorable feature in each trade mark is the word COMMUNE. I note the additional material in the earlier trade marks being the descriptive word element LUX in each of the earlier trade marks and the additional graphic elements in trade mark 2049473. These are insufficient to prevent confusion in the marketplace because the predominant element in each trade mark remains the word COMMUNE.
Consumers who are familiar with the earlier trade marks are likey [sic] to infer that your goods arise from the same or a related trade source as those claimed by the earlier trade marks.
AND
The goods are similar because your broad claims for clothing in Class 25 are similar to equally broad claims in the same Class claimed by the earlier trade marks.
Relevant details of the earlier trade marks (together ‘Cited Marks’) are reproduced below:
Trade Mark:               LUX COMMUNE     (‘Word Mark’)
Application no.:         2049473
Owner:  Emily Cunich
Priority Date:             11 November 2019
Specification:             Class 25: canvas shoes; dress shoes; esparto shoes or sandals; flat shoes; leather shoes; shoes; shoes for casual wear; shoes for leisurewear; slip-on shoes; apparel (clothing, footwear, headgear); clothing; women's clothing; footwear for women
Trade Mark:  (‘Device Mark’)
Application no.:         2049474
Owner:  Emily Cunich
Priority Date:             11 November 2019
Specification:             Class 25: canvas shoes; dress shoes; esparto shoes or sandals; flat shoes; leather shoes; shoes; shoes for casual wear; shoes for leisurewear; slip-on shoes; apparel (clothing,…

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: [2022] ATMO 84
Decision Date: 24 May 2022

CaseChat Overview and Summary

This matter concerned trade mark application number 2081999, filed by Internet Services Australia 1 Pty Limited, seeking registration for the mark "COMMUNE" across classes 14, 18, and 25. The application was before the Hearing Officer, Nicholas Barbey, acting as Delegate of the Registrar of Trade Marks.

The primary legal issue was whether there were grounds for rejecting the trade mark application under section 44 of the relevant Act. Section 33 of the Act outlines the Registrar's obligations to accept or reject an application following examination, requiring rejection if the application has not been made in accordance with the Act or if grounds for rejection exist.

The Hearing Officer was satisfied, on the balance of probabilities, that a ground for rejection existed under section 44 of the Act concerning the goods claimed in class 25. Following notification of this intention to reject the application unless class 25 was deleted, the applicant agreed to remove these claims. Consequently, the goods have been amended, and the trade mark application is now accepted for possible registration.

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

Accordingly, I am satisfied that a ground for rejection exists under s 44 of the Act in relation to the goods claimed in class 25 of the application. Decision Section 33 of the Act provides:Application accepted or rejected (1) The Registrar must, after the examination, accept the application unless he or she is satisfied that:(a) the application has not been made in accordance with this Act; or(b) there are grounds under this Act for rejecting it.Note: For this Act see section 6. (2) The Registrar may accept the application subject to conditions or limitations.Note: For limitations see section 6.(3) If the Registrar is satisfied that:(a) the application has not been made in accordance with this Act; or(b) there are grounds under this Act for rejecting it;the Registrar must reject the application.(4) The Registrar may not reject an application without giving the applicant an opportunity of being heard.Note: For applicant see section 6. I am satisfied on the balance of probabilities that there is a ground for rejecting the application to register the Trade Mark under s 44 of the Act. On 4 May 2022, I informed the Applicant’s representative that it was my intention to reject the application unless class 25 was deleted from the application. On 23 May 2022, the Applicant agreed to remove the class 25 claims from the application. The Goods have been amended. Accordingly, I accept for possible registration trade mark application number 2081999.Nicholas BarbeyHearing OfficerDelegate of the Registrar of Trade Marks24 May 2022

Ratio Decidendi

Legal Principle Established

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Delegate:	Nicholas Barbey
Representation:	Applicant: Bird & Bird
Decision:	2022 ATMO 84 Trade Marks Act 1995 (Cth) – section 33 proceeding – section 44 considered – trade mark deceptively similar to earlier registered trade mark – no evidence of use filed – amendment to specification – trade mark application accepted.