Mattek Pty Ltd v Versatile Technologies (Australia) Pty Ltd

[2025] ATMO 6

TRADE MARKS ACT 1995

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

Re:Opposition by Mattek Pty Ltd to registration of trade mark application number 2400957 (classes 16, 25, 26, 27 & 40) – VERSATILE TECHNOLOGIES you’re your brand talk! (fig.) - in the name of Versatile Technologies (Australia) Pty Ltd

Delegate:

Tracey Berger

Representation:

Opponent: Coleman Greig Lawyers Pty Ltd

Applicant: The IP House Lawyers Pty Ltd

Decision:

2025 ATMO 6

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 58, 59, 60 & 62A considered – no ground established – trade mark to proceed to registration

Background

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by Mattek Pty Ltd (‘Opponent’) to registration of the trade mark detailed below filed in the name of Versatile Technologies (Australia) Pty Ltd (‘Applicant’):

   [1] Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

Trade Mark: (‘Trade Mark’)

Number:2400957

Filing Date:    7 November 2023      

Specification: Class 16: Embroidery designs (patterns); Patterns for embroidery

Class 25: Sports garments (other than golf gloves); Support garments, other than for medical use; Woven garments; Judo uniforms; Karate uniforms; Nurses' uniforms; School uniforms; Scrubs (uniforms); Sports uniforms (other than golf gloves or helmets); Uniforms; Uniforms for athletes; Uniforms for commercial use

Class 26:  Articles for use in embroidery; Embroidery; Embroidery laces; Embroidery needles; Fancy goods (embroidery); Festoons (embroidery); Gold embroidery; Silver embroidery; Smallwares for embroidery

Class 27:  Bath mats; Dart mats; Door mats; External bath mats; Feeding mats for domestic pets; Foldaway mats; Gymnasium mats; Gymnastic mats; Mats; Mats for bathroom use; Mats incorporating brushes; Mats of woven rope for ski slopes; Matting; Non-slip mats; Non-slip mats for baths; Non-slip mats for showers; Pedestal mats; Plaited straw (matting); Reed mats; Rubber-backed mats; Runners (mats); Tatami mats; Underlay for mats; Yoga mats; Mat (carpet) tiles; Automobile carpets; Bathroom tiles (carpet); Carpet backing; Carpet inlays; Carpet protectors; Carpet tile backing; Carpet tiles; Carpet underlay; Carpeting; Carpets; Carpets for automobiles; Hand made woollen carpets; Moquettes (carpets); Squares for use as carpets; Underlay for carpets; Floor coverings (mats) for use in sporting activities; Floor mats; Floor mats for automobiles; Floor mats for vehicles; Floor mats, fire resistant, for fireplaces and barbecues; Mats for floor covering purposes; Non-metallic floor mats; Tiles (carpet, cork, linoleum, vinyl), being materials for covering existing floors; Floor tiles made of carpet; Anti-slip floor coverings; Anti-slip material for use under floor coverings; Artificial sports surfaces (floor covering); Floor covering materials (for existing floors); Floor coverings; Floor coverings and wall hangings made from animal skins or hides; Floor coverings for indoor use; Floor coverings having insulating properties; Floor rugs; Linoleum floor coverings; Linoleum tiles (floor coverings); Padded coverings for existing floors; Padded linings for existing floors; Sheepskin floor rugs; Sound-absorbent floor coverings; Underlay for floating flooring; Vinyl floor coverings; Woven articles for interior floor decoration

Class 40:  Custom garment decoration services; Embroidery services

1. Following the advertisement of acceptance of the Trade Mark for possible registration, the Opponent filed a Notice of Intention to Oppose the Application on 24 May 2024 followed by a Statement of Grounds and Particulars (‘SGP’) on 14 June 2024 (subsequently rectified).  The Applicant filed a Notice of Intention to Defend on 9 July 2024.

2. The parties then had an opportunity to file evidence in accordance with the Regulations. However, neither party filed any evidence.

3. After the evidence stage concluded, the parties were able to request a hearing.  Neither party asked to be heard and the Applicant requested a decision without a hearing.  This matter has been allocated to me as a delegate of the Registrar of Trade Marks for determination and I do so based on the aforementioned materials.

Grounds, onus and relevant date

1. In its SGP, the Opponent nominated grounds of opposition under ss 42(b), 58, 59, 60 and 62A. 

2. The onus of proof in an opposition rests upon the Opponent.[2]   The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3] 

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

3. The date at which the rights of the parties are to be determined is 7 November 2023, being both the filing date and priority date of the Application.[4]

   [4] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592, 595 (Kitto J).

Discussion

1. In its SGP, the Opponent claims:

• use of the Trade Mark would be contrary to law as the Trade Mark is not owned by the Applicant (s 42(b));

• that the Opponent is the owner of the Trade Mark, having acquired the mark from the Applicant in 2018 (s58);

• the Applicant represented to the Opponent during the negotiation of the sale of the ‘asset sale’ that it did not intend to use the Trade Mark and the mark was being sold to the Opponent as part of the asset sale (s59);

• as the owner of the Trade Mark since 2018, and the Opponent has continuously used the Trade Mark since the acquisition and has acquired a reputation in the Trade Mark as a result of that use (s60); and

• on about 18 June 2018, the Opponent paid the Applicant to acquire certain equipment, stock, business assets and IP in an asset sale which sale included exclusive rights in the Trade Mark and hence the Application has been filed in bad faith (s62A). 

1. The Opponent has not filed any evidence or submissions to substantiate the above claims made in the SGP.  Accordingly, the Opponent has not discharged its onus of establishing any of the grounds of opposition.

Decision

1. The Opponent has failed to establish any of the nominated grounds of opposition.  Accordingly, the Trade Mark may proceed to registration under application number 2400957 not less than 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 either the appeal is withdrawn or discontinued.  Otherwise the disposition of the Application should be in accordance with the Court’s order or direction.

2. The Applicant has requested an award of costs. As costs generally follow the event, I award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

Tracey Berger

Hearing Officer

Delegate of the Registrar of Trade Marks

8 January 2025