Mathew Wilson v Madrid Protocol by Lambda, Inc - [2022] ATMO 195

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Mathew Wilson to extension of protection to Australia of International Registration 1434845 (9) – LAMBDA (Australian Trade Mark Application No. 1971399) – in the name of Lambda, Inc.

Delegate:

Nicholas Smith

Representation:

Opponent: Self-represented

Holder: Clayton Utz

Decision:

2022 ATMO 195

Trade Marks Regulations 1995 (Cth) – Reg 17A.33 opposition: ss 43, 44 and 58A considered - none established – protection of the IR to be extended Australia

Background
1. Trade mark number 1971399 is the Australian designation of a request made under the Madrid Protocol by Lambda, Inc. (‘the Holder’) to extend protection of the trade mark subject of International Registration 1434845 to Australia. The request is known as an International Registration Designating Australia (‘IRDA’). This decision relates to an opposition to the extension of protection brought by Mathew Wilson (‘the Opponent’) pursuant to reg 17A.33 of the Trade Marks Regulations 1995 (Cth). Details of the IRDA are as follows:

Application Number:

1971399

IR Number:

1434845

Priority Date (Convention)

2 March 2018

Filing Date

24 August 2018

Goods:

Class 9: Computer hardware for use in data analytics, machine learning, and artificial intelligence; computer hardware for facial recognition

(‘Holder’s Goods’)

Trade Mark:

LAMBDA

(‘Trade Mark’)

Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.
Following the advertisement in the Australian Official Journal of Trade Marks of IP Australia’s intention to extend protection to Australia for the International Registration, the Opponent filed a Notice of Intention to Oppose extension of protection followed by a Statement of Grounds and Particulars on 26 November 2020 (‘SGP’). The SGP raised grounds of opposition under ss 43, 44, and 58A of the Act. The Holder filed a Notice of Intention to Defend on 26 March 2021.
Evidence
The Opponent filed the following evidence in support of its opposition:
·Declaration made on 28 June 2021 by Mathew James Wilson, the Opponent, with Exhibits A to I (‘Wilson declaration’).
The Holder filed the following evidence in answer:
·Declaration made on 3 October 2021 by Stephen Balaban, the co-founder and CEO of Lambda Labs, with exhibits 1-9 (‘Balaban declaration’).
The Opponent did not file evidence in reply.
The entirety of the evidence filed by the Holder, including publicly available information such as the public use of the Trade Mark, is claimed to be confidential. I adopt the approach of the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim (albeit 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…

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 195
Decision Date: 8 November 2022

CaseChat Overview and Summary

This matter concerned an opposition by Mathew Wilson (the Opponent) against the extension of protection in Australia of an international registration by Lambda, Inc (the Holder) under the Madrid Protocol. The Opponent sought to oppose the registration on grounds including those under sections 43, 44, and 58A of the relevant legislation. The court was a delegate of the Registrar of Trade Marks.

The legal issues before the delegate were whether the grounds of opposition, specifically those relating to deception or confusion under section 43, had been established by the Opponent. The delegate was required to determine whether the trade mark, if used in relation to the Holder's goods, would likely result in deception or confusion among consumers. The delegate also considered the evidence filed by both parties, including a declaration from the Holder's co-founder and CEO, and the Opponent's failure to file evidence in reply or written submissions.

The delegate adopted the approach of a previous decision in *Source Homeloans Pty Ltd v Coles Group Ltd*, holding that a claim of confidentiality over evidence must be specific. The delegate found that the Opponent had not established the grounds of opposition. Specifically, the delegate was not satisfied that the trade mark, when used in relation to the Holder's goods, would create a deceptive or confusing connotation. Consequently, the delegate decided to extend protection to the international registration.

Protection for the international registration was to proceed one month from the date of the decision, unless an appeal was filed. The Opponent was ordered to pay the Holder's costs.

Orders

Orders of the court

Full text does not contain this section.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

As a consequence, I am not satisfied that if the Trade Mark is used in relation to the Holder’s Goods, there is an apparent connotation within it which is likely to result in deception or confusion. I find that the ground of opposition under s 43 has not been established.Decision34. Regulation 17A.34N provides:17A.34N Decision 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 the grounds on which the IRDA was opposed have been established.(2) The Registrar must notify the International Bureau of the Registrar’s decision.35. The Opponent has not established the grounds on which the IRDA was opposed and it is appropriate that the Registrar decides to extend protection to the IRDA.36. The IRDA 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 IRDA be subject to any orders of the Court.37. The International Bureau will be notified of the Registrar’s decision.Costs38. The Holder has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under s 221 of the Act in the relevant amounts under Schedule 8 of the Regulations. Nicholas SmithHearing OfficerDelegate of the Registrar of Trade Marks8 November 2022

Ratio Decidendi

Legal Principle Established

The Holder filed the following evidence in answer: ·Declaration made on 3 October 2021 by Stephen Balaban, the co-founder and CEO of Lambda Labs, with exhibits 1-9 (‘Balaban declaration’). The Opponent did not file evidence in reply. The entirety of the evidence filed by the Holder, including publicly available information such as the public use of the Trade Mark, is claimed to be confidential. I adopt the approach of the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim (albeit 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.[1][1] Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6] (Hearing Officer Thompson). I note that, if a party considers a piece of information to be commercially sensitive it must identify that information with specificity. If in my summary of the evidence, I have disclosed information that is sensitive, then this is an issue that has arisen by that party not specifically identifying that information as sensitive. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing. The Holder requested that the matter proceed to a hearing by way of written submissions, paid the appropriate fee and provided written submissions. The Opponent did not file any written submissions. As a result the matter has been allocated to a delegate of the Registrar for a decision based on the written record. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by reg 17A.34N which provides that, unless the proceedings are discontinued or dismissed, the Registrar must, at the end, 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 the IRDA was opposed has been established. In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.The Opponent

Application Number:	1971399
IR Number:	1434845
Priority Date (Convention)	2 March 2018
Filing Date	24 August 2018
Goods:	Class 9: Computer hardware for use in data analytics, machine learning, and artificial intelligence; computer hardware for facial recognition (‘Holder’s Goods’)
Trade Mark:	LAMBDA	(‘Trade Mark’)