Kingsley v Scott - [2011] ATMO 10

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by NOKIA CORPORATION to registration of trade mark application 1226080 (9, 14, 35) - OXI - filed in the name of GAVIN HUTCHESON.

Delegate: Bianca Irgang

Representation: Opponent: Julian Cooke of counsel, instructed by Blake Dawson
Applicant: Not present at the hearing

Decision: 2011 ATMO 10
Section 52 opposition: section 44 and 59 pressed – s 44 ground of opposition not established since trade marks are not substantially identical or deceptively similar – evidence insufficient to establish s 59 ground of opposition - Costs awarded against the opponent.
Background

Gavin Hutcheson (‘the applicant’), filed application number 1226080 on 25 February 2008 for goods and services in classes 9, 14 and 35 of the International Classification of Goods and Services. Current details of the application are set out below.
Trade mark:  OXI
Trade mark application:        1226080
Filing Date:  25 February 2008
Specification:  Class 9: Cellular phones; mobile phones

Class 14: Jewellery; watches; bracelets; necklaces; rings; earrings; brooches; pendants; badges of precious metal; pins
Class 35: Retail, wholesale and distribution of goods, wholesale and distribution services, import and export services, none of the foregoing being for clothing and footwear; advertising; marketing; customer support services; data processing; data base management; business management; business administration; office functions; providing information, including by electronic means and via a global computer network, about all of the aforesaid services
The application was accepted for possible registration and the official notice of acceptance was published in the Official Journal of Trade Marks on 26 June 2008. Subsequently Nokia Corporation (‘the opponent’) filed a Notice of Opposition (‘the Notice’) dated 25 September 2008 to registration of the application.
I heard the matter in Sydney as a delegate of the Registrar of Trade Marks on 14 September 2010. The opponent was represented by Julian Cooke of counsel instructed by Blake Dawson. The applicant was not present at the hearing.
Grounds of Opposition
The Notice nominated most of the grounds of opposition available under the Act. The onus is upon the opponent to establish one or more of these grounds of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.[1] His Honour’s findings upon that issue, arrived at after a consideration of the relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks[2].
[1] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599; (2006) AIPC 92-146
[2] [2009] FCA 891, (2009) AIPC 92-355; (2009) 82 IPR 13, para 22-27
At the hearing the opponent advised that it was not formally withdrawing any of the grounds of opposition listed in the Notice but that it would provide submissions only on sections 44 and 59 of the Act. However, the opponent has not provided any evidence specific to prosecuting the grounds which were not pursued at the hearing. Without more…

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: [2011] ATMO 10
Decision Date: 28 January 2011

CaseChat Overview and Summary

This matter concerned an opposition by the opponent to the registration of the applicant's trade mark OXI. The opponent, who held registered trade marks for OVI, argued that the applicant's proposed OXI mark should not be registered. While the opponent initially listed several grounds of opposition, it ultimately elected to pursue only grounds relating to sections 44 and 59 of the relevant Act. The hearing officer, Bianca Irgang, considered the evidence presented by both parties.

The primary legal issue before the hearing officer was whether the opponent had established any of its grounds of opposition to the applicant's trade mark application. Specifically, the officer had to determine if the evidence supported the claims that the OXI mark should be refused registration based on the opponent's existing rights and the circumstances surrounding the application. The officer also had to consider the opponent's failure to provide evidence for grounds not actively pursued and the applicant's lack of participation in the proceedings.

The hearing officer found that the opponent had not established any of the grounds of opposition it had raised. The evidence presented by the opponent, particularly regarding its OVI trade mark and its use in the Australian market, was not sufficient to demonstrate that the OXI mark should be refused registration under the relevant sections of the Act. The officer noted that the opponent had not provided evidence to support grounds not pursued at the hearing, and that correspondence to the applicant had been returned undeliverable. Consequently, the hearing officer decided that the trade mark application could proceed to registration, subject to a one-month waiting period and any potential appeal. The opponent was also ordered to pay the applicant's costs.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

At the hearing the opponent advised that it was not formally withdrawing any of the grounds of opposition listed in the Notice but that it would provide submissions only on sections 44 and 59 of the Act. However, the opponent has not provided any evidence specific to prosecuting the grounds which were not pursued at the hearing. Without more information than the opponent has provided in its evidence these grounds cannot be established. Evidence The evidence before me for consideration consists of the following declarations: The statutory declaration of Mr Michael Jeffrey Smith (‘the Smith declaration’) outlines the opponent’s trade mark portfolio in relation to its trade mark OVI. The opponent has applied for and registered its OVI trade mark in a number of countries overseas. Exhibit MS-1 accompanying the Smith declaration is a status report for the opponent’s trade mark registrations and applications for OVI in numerous countries. Mr Smith also states that the opponent has opposed the applicant’s CTM[3] application no. 6695845 for the OXI trade mark. Exhibit MS-2 is a status report of the CTM application which supports Mr Smith’s statement.[3] Community Trade Mark The first statutory declaration of Ms Amy Reynolds (‘the #1 Reynolds declaration’) outlines that the applicant has applied to register an unrelated trade mark which has also been opposed. While that trade mark and opposition are unrelated to the present proceedings, Ms Reynolds alludes to the applicant’s motivation in applying for trade marks that appear unrelated to each other with regards to goods and services and that result in opposition proceedings. The second and third statutory declarations made by Ms Reynolds point out that the applicant has not participated in these opposition proceedings. Correspondence sent to the applicant’s address for service has been returned as undeliverable. Ms Reynolds’ evidence is consistent with the official file showing that this has been the case since the opposition commenced. The opponent has used it OVI trade mark extensively in Australia and overseas. The evidence accompanying the statutory declaration of Mr John McCredie demonstrates the opponent has been using its OVI trade mark on a wide range of applications and services for mobile phones. These applications and services include the online OVI Store which offers for sale over 20,000 applications, games and content that can be purchased to augment the functions of mobile phones and extend their capabilities. The opponent has launched a number of different goods and services branded with its OVI trade mark. Mr McCredie states that such goods and services were launched in Australia from as early as February 2008. Since that time the opponent has spent a moderate amount on advertising its OVI goods and services within Australia; this spending has increased over the years 2008 and 2009. While most of the opponent’s evidence is dated after the priority date of the opposed trade mark, it is clear that the opponent’s goods and services bearing its OVI trade mark are establishing a strong market presence in Australia. Discussion

Decision

Reasons for decision

Section 55 of the Act provides:DecisionUnless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:to refuse to register the trade mark; orto 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. The opponent has not established any of its grounds of opposition. The trade mark application may therefore proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been discontinued or in the event of a decision from the Court, that the application be subject to that order. Costs As there is nothing before me suggesting that costs should not follow the general rule, I award costs against the opponent in accord with Schedule 8 of the Trade Mark Regulations 1995.Bianca IrgangHearing OfficerTrade Marks Hearings28 January 2011

Ratio Decidendi

Legal Principle Established

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Delegate:	Bianca Irgang
Representation:	Opponent: Julian Cooke of counsel, instructed by Blake Dawson Applicant: Not present at the hearing
Decision:	2011 ATMO 10 Section 52 opposition: section 44 and 59 pressed – s 44 ground of opposition not established since trade marks are not substantially identical or deceptively similar – evidence insufficient to establish s 59 ground of opposition - Costs awarded against the opponent.