Mark Handler v 42 below Limited

[2007] ATMO 20

TRADE MARKS ACT 1995

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

Re:Opposition by Mark Handler to registration of Trade Mark Application No. 1060564(33) – STIL - in the name of 42 Below Limited

Delegate:

Debrett Lyons

Representation:

Opponent
Not represented and did not appear in person
Applicant
Mr David Marriott of James & Wells, Solicitors.

Decision:

2007 ATMO 20
1. section 52 opposition. No evidence filed by Opponent.  Notice of Opposition provided no foundation for grounds of opposition. Opposition dismissed.

2.  Costs ordered against opponent.

Background

1. A New Zealand company, 42 Below Limited, ( “the applicant”) filed a trade mark application, details of which are : 

   Appn No:  1060564
   Filing / Priority Date:            16 June 2005
   Goods:   Class: 33  Alcoholic beverages; distilled spirits including   vodka

   Trade Mark:           STIL

   (“the application”)

1. The application was accepted for possible registration and advertised as such in the Australian Official Journal of Trade Marks on 13 September 2005.

2. On 13 January 2006, Mr Mark Handler (“the Opponent”) through his attorney filed a Notice of Opposition to registration of the trade mark (“the Notice”).  The opponent sought and was given an extension of time of 3 months until 13 July 2006 in which to file evidence in support of the opposition.  Evidence in support of the opposition was not filed by that date and on 21 July 2006 the Office notified the parties that the opponent was in default and that the applicant had until 21 October to file and serve evidence in answer to the opposition.

3. The applicant sought extensions of time to file evidence in answer but ultimately indicated to the Office that no evidence would be filed on behalf of the applicant.

4. The applicant requested to be heard and the matter came before me as a delegate of the Registrar on 7 March 2007 in Melbourne. The opponent did not appear at the hearing and provided no written submissions.  The applicant was represented by Mr David Marriott, a Solicitor with the firm of James & Wells, Auckland.

   The Notice

5. The Notice lists 11 grounds of opposition under the Trade Marks Act 1995 (“the Act”). They are founded on sections 41, 42, 43, 44, 55, 58, 60 and 62 of the Act.

6. The grounds of opposition largely repeat the language of the Act but are not particularised in a fashion which takes account of the application under opposition.

   Submissions and Reasoning

7. At the hearing, Mr Marriott submitted that the grounds of opposition had been pleaded in very broad terms and lacked the detail that would allow re-examination on grounds that are any more specific than those considered in the original examination of the application.  Mr Marriott turned his attention, one by one, to the grounds set out in the Notice and argued that each must fail.

8. Section 55(1) of the Act states that:

   Unless the proceedings are discontinued or dismissed, 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.

1. From the wording of this section, it is clear that the onus lies with the opponent to establish its opposition.  Having considered Mr Marriott’s submissions and having myself scrutinised the 11 grounds of opposition,  I am of the view that there is no ground which is sufficiently elaborated so as to justify refusal of the application.

   Decision

2. The opponent has not succeeded with any ground of opposition and so trade mark application number 1060564 may therefore proceed to registration one month from the date of this decision.  If the Registrar has been served with notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

   Costs

3. The applicant, having been successful in these proceedings, is entitled to its costs which I order at the official scale.

   Debrett Lyons
   Hearing Officer
   Trade Marks Hearings
   23 April 2007