KUESKI, S.A.P.I De C.V. SOFOM, E.N.R. v Llapingacho LLC - [2025] ATMO 23

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Oppositions by KUESKI, S.A.P.I DE C.V. SOFOM, E.N.R. to extension of protection to International Registrations designating Australia 2313952 (International Registration No. 1630140) – KUSHKI – 2345538 (International Registration No. 1721833) - KUSHKI Mundial (composite) – 2345609 (International Registration No. 1722076) – KUSHKI (composite) - held by Llapingacho LLC

Delegate: Bianca Irgang

Representation:
Opponent: David Larish of counsel instructed by Thomson Geer Lawyers

Holder: A J Park

Decision: 2025 ATMO 23
Trade Marks Regulations 1995 (Cth) – Opposition under reg 17A.33– ss 44 ground of opposition considered – ss 44 ground of opposition established but overcome with evidence of prior use – extension of protection allowed.
Background

This decision concerns oppositions brought by KUESKI, S.A.P.I DE C.V. SOFOM, E.N.R. (‘Opponent’) to the extension of protection of International Registration Designating Australia (‘IRDA’) 2313952 which was filed 19 October 2022 in classes 36 and 42, IRDA 2345609 which has a convention priority of 21 October 2022 and was filed in classes 36 and 42, IRDA 2345538 which has a convention priority of 8 November 2022 and in classes 36 and 42 of the International Classification of Goods and Services in the name of Llapingacho LLC (‘the Holder’). Current details of the IRDAs are set out below.
Trade mark:  KUSHKI
Application no:  2313952
International Registration:   1630140
Lodgement date:                  19 October 2022
Specification:  Class 36: Electronic foreign exchange payment processing; electronic payment services involving electronic processing and subsequent transmission of bill payment data; merchant services, namely, payment transaction processing services; providing financial transaction and payment processing services via a website portal.
Class 42: Application service provider (ASP) featuring e-commerce software for use as a payment gateway that authorizes processing of credit cards or direct payments for merchants; application service provider featuring application programming interface (API) software for accepting and sending payments via credit cards, debit cards, wire transfer and cash.
Trade mark:
Application no:  2345538
International Registration:   1721833
Lodgement date:                  30 November 2022
Convention details:              97667275    US
  8 November 2022
Specification:  Class 36: Electronic foreign exchange payment processing; electronic payment services involving electronic processing and subsequent transmission of bill payment data; merchant services, namely, payment transaction processing services; providing payment processing services featuring financial transaction services via an internet web site portal.
Class 42: Application service provider (ASP) featuring e-commerce software for use as a payment gateway that authorizes processing of credit cards or direct payments for merchants; application service provider featuring application programming interface (API) software for accepting and sending payments via credit cards, debit cards, wire transfer and cash.
Trade mark:
Application no:  2345609
International Registration:   1722076
Lodgement date:                  10 November 2022
Convention details:              97642440    US
  21 October 2022
Specification:  Class 36: Electronic foreign exchange payment processing; electronic payment services involving electronic processing and subsequent transmission of bill payment data; merchant services, namely, payment transaction processing services; providing payment processing services featuring financial transaction services via an internet…

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 23
Decision Date: 31 January 2025

CaseChat Overview and Summary

This matter concerned an opposition proceeding before the Australian Trade Marks Office, presided over by Hearing Officer Bianca Irgang. The applicant, KUESKI, S.A.P.I De C.V. SOFOM, E.N.R. (the Holder), sought an extension of protection for its trade marks. The opponent, Llapingacho LLC, opposed this application on various grounds, including a claim under section 44 of the *Trade Marks Act 1995* (Cth) concerning identical or deceptively similar trade marks.

The primary legal issue before the Hearing Officer was whether the Holder's trade marks were substantially identical with, or deceptively similar to, registered trade marks of the opponent, and if so, whether the opposition should succeed. The Hearing Officer was required to consider the evidence filed by both parties, including declarations and exhibits, and determine if the grounds of opposition were established. A secondary issue involved the appropriate treatment of confidentiality claims made by the Holder regarding its evidence.

The Hearing Officer found that the opponent had established a ground of opposition under section 44. However, the Holder successfully overcame this ground by providing evidence of prior and continuous use of its trade marks, as well as evidence of honest concurrent use. This evidence satisfied the requirements of subsection 44(4) of the Act, which allows for the acceptance of an application if the applicant has continuously used the trade mark prior to the priority date of the other trade mark. The Hearing Officer also adopted the approach of a previous delegate regarding the handling of confidentiality claims, stating that while commercially sensitive matters existed, they did not prevent a decision being made.

Consequently, the Hearing Officer directed that protection of the Holder's trade marks be extended in respect of all listed services, subject to an endorsement indicating that provisions of subsection 44(4) and/or Regulation 4.15A(5) were applied. Protection was to commence one month from the decision date, unless an appeal was filed. The Hearing Officer also awarded costs against the opponent in favour of the Holder, with specific allocations for the different opposition matters.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

The evidence filed in this matter consists of the following declarations being:Evidence in Support·Declaration of Carlos Antonio Saches Almada (‘Almada’), Senior Vice President of Lega, Compliance, Security and Internal Control of the Holder, dated 22 November 2023 accompanied by Annexures CA-1 to CA-25.·Declaration of Mauel Rico Lopez, Founder of Manual Rico y Asociados S.A. DE C.V. trading as StratBranding, dated 17 November 2023 accompanied by Annexures ML-1 and ML-2.Evidence in Answer·Confidential Declaration of Sebastion Castro (‘Castro’), Managing Member and Co-Founder of the Applicant, dated 27 February 2024 accompanied by Exhibits 1 to 13. The entirety of the evidence filed by the Holder is claimed to be confidential. I adopt the approach of the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd[5], who when in receipt of a similar claim (albeit solely in respect of the opponent in that case) stated: The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter’s request (made within several declarations) at face value, that would be the end of these matters. This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.Discussion[5] [2008] ATMO 17, [5]-[6] (Hearing Officer Thompson).Section 44 Section 44 of the Act relevantly provides:44 Identical etc. trade marks(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (Holder's trade mark) in respect of goods (Holder's goods) must be rejected if:(a) the applicant's trade mark is substantially identical with, or deceptively similar to: (i) a trade mark registered by another person in respect of similar goods or closely related services; or (ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and (b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services. (2) Subject to subsections (3) and (4), an application for the registration of a trade mark (Holder’s trade mark) in respect of services (Holder’s services) must be rejected if:(a) it is substantially identical with, or deceptively similar to:(i) a trade mark registered by another person in respect of similar services or closely related goods; or(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and(b) the priority date for the registration of the Holder’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.(3) If the Registrar in either case is satisfied:(a) that there has been honest concurrent use of the 2 trade marks; or(b) that, because of other circumstances, it is proper to do so;the Registrar may accept the application for the registration of the Holder’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the Holder’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.(4) If the Registrar in either case is satisfied that the Holder, or the Holder and the predecessor in title of the Holder, have continuously used the Holder’s trade mark for a period:(a) beginning before the priority date for the registration of the other trade mark in respect of:(i) the similar goods or closely related services; or(ii) the similar services or closely related goods; and(b) ending on the priority date for the registration of the Holder’s trade mark;the Registrar may not reject the application because of the existence of the other trade mark.

Decision

Reasons for decision

When it comes to the Holder’s Trade Mark number 2345538 for the KUSHKI Mundial (composite) trade mark, Exhibit 7 accompanying Castro contains copies of screenshots from the WayBackMachine dated 30 September 2022 which demonstrates the trade mark being used by the Holder on the Holder’s services. Given that this is also before the priority date of the Opponent Registration I am satisfied that it is also appropriate to apply paragraph 44(4) in this instance. Decision and Costs Regulation 17A.34N provides:17A.34NDecision on opposition(1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:(a)to refuse protection in respect of all of the goods or services listed in the IRDA; or(b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established.(2)The Registrar must tell the International Bureau of his or her decision. I find that the Opponent did establish a ground of opposition under s 44, however, the Holder was able to overcome this ground via production of evidence of prior, continuous use and honest concurrent use. Accordingly, I direct that protection of the Holder’s Trade Marks be extended in respect of all the listed services and that the following endorsement be added to each of the Holder’s Trade Marks:Provisions of subsection 44(4) and/or Reg 4.15A(5) applied The Holder’s Trade Marks may proceed to protection 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 protection shall not occur until the appeal has been decided or discontinued and the protection of the Holder’s Trade Marks be subject to any orders of the Court. The International Bureau will be notified of the Registrar’s decision. The Holder has sought an award of costs in its favour. All three opposition matters had common evidence and this being the case I award costs against the Opponent in terms of Schedule 8 of the Trade Mark Regulations 1995 in the following way:·Full costs, as per scale, for filing the Notices on all three matters;·Full costs, as per scale, for the evidence in the opposition to IRDA 2313952; and·At 20% of the scale[22] for the evidence in the remaining two oppositions. [22] Hume Industries (Malaysia) Berhad v James Hardie & Co Pty Ltd (2001) 53 IPR 591Bianca IrgangHearing OfficerOppositions and HearingsTrade Marks and Designs31 January 2025

Ratio Decidendi

Legal Principle Established

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