Luke Butterfield v Joseph Phillips - [2024] ATMO 198

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Luke Butterfield to registration of trade mark application number 2237513 (class 37) – BLUEY’S PLUMBING & GAS FITTING - in the name of Joseph Phillips

Delegate:	Benjamin Goldsworthy
Representation:	Opponent: Self-represented Applicant: Jacqui Pryor of Mark My Words Trademark Services Pty Ltd
Decision:	2024 ATMO 198 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds pursued under ss 42(b), 44, 58A and 60 – substantially identical trade mark in relation to similar services – s 44(4) applicable – no grounds established – trade mark to proceed to registration

Background

On 22 December 2021 (‘Relevant Date’) Joseph Phillips (‘Applicant’) filed trade mark application 2237513 under the Trade Marks Act 1995 (Cth),[1] details of which are reproduced below:
Priority date: 22 December 2021
Trade mark: BLUEY’S PLUMBING & GAS FITTING (‘Trade Mark’)
Specification: Plumbing; Maintenance of plumbing; Maintaining and repair of drain pipes; Unblocking of drains; Maintenance and repair of gas installations and equipment; Pipe-fitting; Installation of apparatus for sanitation; Kitchen equipment installation; Installation of heating apparatus (‘Applicant’s Services’)
Endorsements: Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.
[1] Unless specified otherwise, a reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth).
The Trade Mark was examined under s 31 and acceptance was advertised on 27 March 2023. On 4 April 2023 Luke Butterfield (‘Opponent’) filed a Notice of Intention to Oppose. On 14 April 2023 the Opponent filed a Statement of Grounds and Particulars (‘SGP’). The Applicant filed a Notice of Intention to Defend on 28 June 2023.
The Opponent filed Evidence in Support (‘EIS’) being a declaration of Luke Butterfield, dated 1 October 2023, with various unnumbered annexures (‘Butterfield-1’).[2]
[2] Note this was treated as having been filed on 4 October 2023 by a delegate of the Registrar under reg 21.4(1)(b).
On 12 December 2023, the Applicant filed Evidence in Answer (‘EIA’) being a declaration of Joseph Phillips, dated 11 December 2023 with Annexures JP01 to JP13 (‘Phillips’) and a declaration of Jacqueline Louise Pryor, Attorney for the Opponent, dated 11 December 2023, with Annexures JLP-1 to JLP-5 (‘Pryor’).
On 28 January 2024 the Opponent filed their Evidence in Reply (‘EIR’), consisting of a declaration of Luke Butterfield (‘Butterfield-2’).
Once the time allowed for filing evidence ended, none of the parties requested to be heard and the Opponent requested a decision without a hearing. I am to decide the matter as a delegate of the Registrar of Trade Marks.

Evidence

EIS

Butterfield-1 consists of a number of statements and assertions about the history of the Opponent’s use of signs which contain the word ‘Bluey’ in relation to various construction, plumbing, rendering and related services. Whilst I have carefully considered every part of the evidence filed in the…

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 198
Decision Date: 30 October 2024

CaseChat Overview and Summary

This matter concerned an opposition by Luke Butterfield to the registration of the trade mark application number 2237513, for the services of plumbing and gas fitting, in the name of Joseph Phillips. The decision was made by Benjamin Goldsworthy.

The primary legal issue before the Registrar was whether any of the grounds of opposition raised by Mr Butterfield had been established, which would necessitate the refusal of Mr Phillips' trade mark application.

The Registrar determined that the opponent, Mr Butterfield, had not established any of the grounds on which the opposition was based. Consequently, pursuant to section 55 of the relevant legislation, the Registrar decided that the trade mark application could proceed to registration. The Registrar also awarded costs against the opponent in favour of the applicant, Joseph Phillips, in accordance with the usual practice and the Trade Marks Regulations 1995.

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

Section 55 relevantly provides:55 Decision (1) 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.Note: For limitations see section 6. The Opponent has not established any ground of opposition. Accordingly, trade mark 2237513 may proceed to registration one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and the disposition of the application should otherwise be in accordance with the Court’s order or direction. The Applicant has requested costs. It is normal for costs to follow the event. I see no reason to make an exception here. I award costs against the Opponent under s 221 in the amounts according to Schedule 8 of the Trade Marks Regulations 1995 (Cth).

Ratio Decidendi

Legal Principle Established

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