Medvisit Pty Ltd v MedVisit LLC - [2017] ATMO 140

TRADE MARKS ACT 1995

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

Re:Opposition by Medvisit Pty Ltd to registration of trade mark application 1721746 (9,38,42) - MEDVISIT {A DOCTOR WHEREVER YOU ARE} - in the name of MedVisit LLC.

Delegate:	Cristy Condon
Representation:	Opponent: written submissions prepared by Lord & Company Applicant: written submissions prepared by FB Rice
Decision:	2017 ATMO 140 Trade Marks Act 1995 (Cth) – s 52 proceedings – ss 58, 60, 42, 62A, 62 considered – no grounds established – trade mark will proceed to registration and claimed priority date deleted after appeal period has expired.

Background

This matter concerns an opposition to the registration of an Australian trade mark application. The current details of the trade mark application opposed under section 52 of the Trade Marks Act 1995 (Cth) (‘the Act’) are:
Trade Mark No: 1721746
Trade Mark:

(‘the Trade Mark’)

Specification of Goods & Services:

Class 9:         Electronic navigation instruments; Navigation systems using satellite   reference
           Class 38:        Providing user access to global positioning signals for navigation   purposes
           Class 42:        Computer software design
(‘the Applicant’s goods and services’)

Filing Date: 15 September 2015
Claimed Priority Date: 18 June 2015
Owner: MedVisit LLC (‘the Applicant’)
Endorsement: It is a condition of registration that, in use, the cross device contained within the trade mark will be rendered in colours other than red on a white or silver background, or white or silver on a red background.

Following examination of the Trade Mark it was accepted for possible registration and advertised in the Australian Official Journal of Trade Marks. On 19 November 2015 a notice of intention to oppose registration was filed by Medvisit Pty Ltd (‘the Opponent’). On 23 December 2015 the Statement of Grounds and Particulars (‘SGP’) followed and particularised grounds of opposition under ss 58, 60, 42, 62A and 62 of the Act.
The Applicant filed its notice of intention to defend on 14 January 2016 and the evidence stages of the opposition commenced. The Opponent filed as evidence in support:
- Declaration by Asim Shehzad (Director of the Opponent) made 5 April 2016 with Exhibits 1-12 (‘Shehzad’); and
- Declaration by Sarah Leanne Cox (Trade Marks Attorney with Lord & Company, the representative of the Opponent) made 11 April 2016 with Exhibits 1-4 (‘Cox 1’).

The Applicant filed as evidence in answer:

Declaration of Andres Leon (Chief Executive Officer of the Applicant) made 30 July 2016 with Annexures AL-1 to Al-12 (‘Leon’).

The Opponent filed as evidence in reply:

Declaration of Sarah Leanne Cox made 10 October 2016 with Exhibits 1-3 (‘Cox 2’).

At the Applicant’s request a hearing was set down for 20 July 2017. In due course the parties filed written submissions in accordance with my written directions.
By way of a letter to this office dated 11 July 2017 the Applicant requested the matter be decided on the written record. The Opponent had not paid a hearing fee so on 12 July 2017 I emailed both parties and I referred to the Applicant’s request. I confirmed that the matter would be decided on the written record and the date for the oral hearing was vacated.
As a delegate of the Registrar of Trade Marks I now decide the opposition on the basis of the written record which is comprised of the evidence filed (see [3]) and the written submissions filed by the parties on 4 July 2017 and 11 July 2017.
For the purposes of the opposition, the Opponent relied on the grounds as specified in the SGP.
The written record contains the following information about each of the parties.

The Opponent

According to Mr Shehzad, the Opponent provides a medical service in the form of doctor home visits. It provides this service in Adelaide, South Australia and has done so since April 2015. The Opponent says its medical service has been provided in connection with its ‘MEDVISIT’ trade mark as well as its other common law trade marks which will be discussed later in this decision.
Exhibit 1 to Shehzad is a copy of a ‘Certificate of Registration of a Company’ issued by the Australian Securities and Investment Commission and shows the Opponent was registered on 24 March 2015.
Exhibit 3 to Shehzad is a Business Activity Statement for the Opponent for the period 1 April to 30 June 2015.
Exhibit 8 to Shehzad is a copy of an email to the Opponent from the iTunes store dated 10 April 2015 and states that the MedVisit app is ‘In Review’.
Exhibit 9 to Shehzad is copy of an email to the Opponent regarding its website development dated 20 April 2015 and states ‘We need your web hosting details and your approval to upload’.
Exhibit 10 is copies of the Opponent’s flyers and a magnet which are branded with the Opponent’s MedVisit trade mark number 1733171 (the details of which can be found at [18] of this decision). The copies are not dated.
Exhibit 12 is a copy of the Opponent’s Facebook page and is a single photo of the Opponent’s MedVisit trade mark 1733171 referred to below.
Other exhibits to Shehzad contain more evidence of the Opponent’s initial business set up activities and include copies of internal business documents being: an invoice for payment General Practitioner fees dated 29 May 2015; a receipt for the payment of director’s fees dated 30 June 2016; a copy of an email from [email protected] dated 24 May 2015; an email from [email protected] dated 15 April 2015 noting payment for the Opponent’s smart phone number and correspondence regarding the procurement of brochures and magnets dated 7 April 2015.
The exhibits to Shehzad demonstrate that the Opponent began steps to set up its business as early as April 2015.
In November 2015 the Opponent applied to register the following trade marks:
Trade Mark No: 1733136
Trade Mark: ‘Medvisit Home Doctor Service’
Services: Advisory services relating to medical problems; Advisory services relating to medical services; Aged care services (medical and nursing services); Arranging of medical treatment; Conducting of medical examinations; Consultancy and advisory services in relation to medical services; Emergency medical services; General practice (GP) medical services; Health care consultancy services (medical); Medical advisory services; Medical care services; Medical clinic services; Medical examination of individuals; Medical health assessment services; Medical treatment services; Preparation of reports relating to medical matters; Providing information including online, about medical services, and veterinary services; Provision of medical assistance; Provision of medical facilities; Provision of medical information; Provision of medical services; Provision of medical treatment; Services for the preparation of medical reports
Filing Date: 7/11/2015

Trade Mark No: 1733171
Trade Mark:
Services: Class 44 Advisory services relating to medical problems; Advisory services relating to medical services; Aged care services (medical and nursing services); Arranging of medical treatment; Compilation of medical reports; Conducting of medical examinations; General practice (GP) medical services; Health care consultancy services (medical); Location of medical facilities for emergency medical treatment; Medical advisory services; Medical analysis services; Medical assistance; Medical care services; Medical clinic services; Medical examination of individuals; Medical health assessment services; Medical services; Medical treatment services; Provision of medical assistance; Provision of medical facilities; Provision of medical information; Provision of medical services; Provision of medical treatment; Services for the preparation of medical reports
Filing Date: 8/11/2015
(Collectively ‘the Opponent’s trade marks’)

Mr Shehzad says, [9]:
I am aware that the presently opposed trade mark application covers navigation
and software design goods and services. However, the mark itself includes the
line "a doctor wherever you are" and appears to be used in Europe in respect of
the same services as those provided by my company. The scope of means by
which customers may request my company's services includes through the use
of smart-device apps and other software. There is a real danger of confusion
occurring between the present trade mark and my company's "MEDVISIT"
trade marks.
I note that both the Opponent’s trade marks have been opposed by the Applicant but at the date of this decision neither of the oppositions have been resolved.
Cox 1 and its exhibits contain a copy of an OHIM (Office for Harmonization in the Internal Market) trade mark database search for ‘MedVisit’ and a copy of the Trade Mark’s application details. Ms Cox claims that she downloaded the ‘MedVisit Patient’ app from the Google Play store and she understands this app is published by the Applicant or a related entity. She says at [6] ‘during the registration process through the app I noticed that the app did not allow for the registration of an Australian telephone number. Accordingly, the applicant’s services were not available for me, nor I believe any other user in Australia’.
Cox 2 serves to rebut the Leon declaration and primarily disputes that the Trade Mark has been used in Australia or is available to Australians. Ms Cox claims there is no supporting evidence to corroborate the sales and promotional figures deposed by Mr Leon. She also claims that the Applicant was using a different a trade mark being one that combined the MedVisit word and a picture of a city skyline in 2014 and not the Trade Mark.

The Applicant

According to Mr Leon the Applicant is a Spanish corporation. Its business operates in Spain but it also operates under license in Europe, the United States of America, New Zealand, Singapore and Australia.
Mr Leon says:
The business was originally launched with the intention of providing in-home medical visits by a group of medical practitioners.
Medvisit LLC is now in the business of providing medical consultations in a number of territories throughout the world by local doctors based in those jurisdictions who visit the patient there.
All of Medvisit LLC’s products and services are branded with the mark MEDVISIT (LOGO).
Medvisit LLC now provides its MEDVISIT (LOGO)-branded goods and services to thousands of homes and clients in more than 40 countries around the world. Such countries include Australia, USA, Singapore, New Zealand, Japan, Austria, Belgium, Bulgaria, Croatia, Republic of Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and the United Kingdom.
In terms of the claimed priority date Mr Leon says, [10]-[12] that he filed the application on behalf of the Applicant on 15 September 2015, however, he is unfamiliar with the procedures for claiming a convention priority date and he realises that he may not be able to claim the priority date 18 June 2015. He says that he ‘inadvertently claimed priority from a different trade mark being registered Community Trade Mark (CTM) number 013790415’.
In reference to the particular goods and services specified in the Trade Mark application Mr Leon says at [33] that the Applicant’s goods are used in the context of patients and medical practitioners being able to use those particular instruments to arrange an in-house consultation’. I gather Mr Leon is saying that the doctor’s vehicles are, or can be equipped with GPS navigation equipment or alike which is offered by the Applicant under the Trade Mark.
Mr Leon also provides evidence of the Applicant’s volume of sales in Australia in 2015 and 2016 as well as promotional expenditure in relation to the Applicant’s products which are apparently branded with the Trade Mark (I have no evidence that shows how the Trade Mark is applied to any of the Applicant’s goods only how it used in relation to its services). The figures are confidential so I will just say they are not substantial.

Relevant date and Onus

The Opponent bears the onus of establishing at least one of the grounds of opposition on the balance of probabilities.[1] The rights of the parties are to be determined as at the date of the application[2] which, for the reasons set out below, in this case is not the claimed priority date.[3] I am disregarding the convention priority date because the application was based on a false convention priority date. The relevant date in this opposition is 15 September 2015 (‘Relevant date’).

Discussion and Reasons

[1] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] affirming the approach of Gyles J in Pfizer Products Inc. v Karam [2006] FCA 1663, [26].

[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592, [595].

[3] See sections 6, 12, and 72 of the Act.

Section 58

Section 58 of the Act provides:
58 Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Note:For applicant see section 6.
The s 58 ground is particularised in the SGP as follows:
a.The opponent relies on the use of the trade marks "MEDVISIT"
"Medvisit Home Doctor Service", and the below composite marks, in
respect of the provision of medical services, including those obtained
through the use of software applications. The first use of this trade
mark was May 2015, prior to the priority date of the present
application.
(‘common law marks’)
The first person to apply to register a trade mark will, in most cases, be entitled to claim to be the owner in relation to the services of the application and also goods and/or services constituting the ‘the same kind of thing’.[4]
[4] Re Hicks' Trade Mark (1897) 22 VLR 636.
An exception to that general statement is if the trade mark has been used before the relevant date. In that event (and in the absence of fraud) the owner of a trade mark in Australia is taken to be the first person to use it in the course of trade in relation to those goods or services. The first user need not have invented or first thought of the trade mark[5], but rather it is the first party to use it as a trade mark in Australia.
[5] Aston v Harlee Manufacturing Co (1960) 103 CLR 391, (399) (Fullagar J).
In order for the Opponent to satisfy s 58 it must also show there is a ‘total impression of similarity from a comparison between the relevant marks. In a real sense a claim to proprietorship of the one extends to the other. But to go beyond this is, in my view, not possible.’[6]
[6] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495, [62].
The Applicant’s goods are electronic navigation instruments and navigation systems using satellite reference. The Applicant’s services are providing user access to global positioning signals for navigation purposes and computer software design.
I find the Applicant’s goods and services are not ‘the same kind of thing’ as the services that the Opponent provided prior to the Relevant date under the Opponent’s trade marks or common law marks, being medical services and in particular medical consultations. While the Applicant and the Opponent are in the same business of providing doctor home visits the Applicant, through this Trade Mark application, does not seek protection of the Trade Mark in respect of doctor home visits or medical services more broadly.
I find the Applicant’s goods and services are not ‘the same kind of thing’ as the Opponent’s medical service.
The s 58 ground of opposition is not established.

Section 60:

Section 60 of the Act provides:
60 Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.
Note:For priority date see section 12.

The s 60 ground is particularised in the SGP as follows:
The opponent relies on one or more of the trade marks mentioned...The earlier trade marks have been used in respect of the services the provision of medical services, including those obtained through the use of software applications to gain a reputation in Australia. The opponent has used the trade marks in Australia since May 2015.
For the Opponent to successfully establish the s 60 ground it must demonstrate that an Australian reputation exists in another trade mark as at 15 September 2015, such that the use of the Trade Mark would be likely to deceive or cause confusion in the marketplace.
In terms of the level of reputation required, it follows that a ‘significant’ or ‘substantial’[7] number of consumers within the relevant trade must be likely to be deceived or confused. Indeed, what is ‘significant or substantial’ must be properly and sensibly applied[8] and in some cases may depend on the specialised nature of the relevant marketplace.[9]
[7] See Renaud Cointreau& Cie v Cordon Bleu International Ltee (2001) 52 IPR 382; [2001] FCA 1170 and ConAgra Inc. v McCain Foods (Aust) Pty Ltd [1992] FCA 159; (1992) 23 IPR 193.
[8]“Bali” Trade Mark [1969] RPC 472, (496).
[9] Le Cordon Bleu BV v Cordon Bleu International Ltee (2001) 50 IPR 1; [2000] FCA 1587, [20].
It is not proper to assume reputation in a trade mark and in ‘the end the question of the existence and extent of reputation and of goodwill must be a matter of fact…’[10]
[10] (1992) 33 FCR 302, (77).
Mr Shehzad says at [5] that the total value of services provided in Australia under the…trade marks is approximately $419,000. The services provided…are medical home doctor visit services in Adelaide, SA’. Mr Shehzad goes on to say at [7]: ‘since my company commenced trade, approximately $190,000 has been spent on advertising the services under my company’s trade marks’. I will assume the Opponent is referring to the 2015-2016 financial year and I note that Mr Shehzad has not claimed confidentiality of the above information.
The Opponent has limited operations, presently only operating in South Australia and the figures it provides do not in any way satisfy me that the Opponent had a substantial or significant reputation in any of its trade marks at the Relevant date. For this reason, use of the Trade Mark would also be unlikely to result in confusion with the Opponent’s trade marks or its common law marks.
Accordingly, I find that the ground of opposition under s 60 of the Act has not been established.

Section 42

Section 42 of the Act is reproduced below:
42 Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
(a) the trade mark contains or consists of scandalous matter; or
(b) its use would be contrary to law.
The s 42 ground is particularised in the SGP as follows:
Section 42
The Opposed trade mark is scandalous or contrary to law (s.42).
a. The opponent relies on one or more of the abovementioned trade
marks, and the use by the applicant of the opposed trade mark thereby
constituting common law passing off and/or conduct in breach of s 18
and/or s 29 of the Australian Consumer Law.
b. The opponent relies on the erroneous priority claim of the opposed
trade mark application thereby constituting conduct in breach of s 18 of
the Australian Consumer Law.
The SGP does not explicitly state whether sub-ss 42(a) or 42(b) (or both) is of concern to the Opponent. I note for the sake of completeness that there is no evidence before me suggesting the Trade Mark contains or consists of ‘scandalous matter’, being defined as material disgraceful to reputation; shameful or shocking.[11]
[11] type="1">
The Opponent bears the onus of establishing on the balance of probabilities that such use would, rather than could, be contrary to law.[12] The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[13]
[12] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.
[13] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353.
Schedule 2 of the Australian Consumer Law in schedule 2 to the Competition and Consumer Act 2010 (CTH) (‘ACL’) relevantly provides:
18 Misleading or deceptive conduct
(1) A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
(2) Nothing in Part 3-1 (which is about unfair practices) limits by implication subsection (1).
Note: For rules relating to representations as to the country of origin of goods, see Part 5-3.
29 False or misleading representations about goods or services
(1)A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services:
[…]
(2) For the purposes of applying subsection (1) in relation to a proceeding concerning a representation of a kind referred to in subsection (1)(e) or (f), the representation is taken to be misleading unless evidence is adduced to the contrary.
(3) To avoid doubt, subsection (2) does not:
(a) have the effect that, merely because such evidence to the contrary is adduced, the representation is not misleading; or
(b) have the effect of placing on any person an onus of proving that the representation is not misleading.
Section 18 of the ACL requires the Applicant to have engaged in conduct which is misleading or deceptive or which is likely to mislead or deceive, in this case, in relation to use of the Trade Mark. I have already found that the Applicant’s goods and services are very different to the Opponent’s medical consultation services. Consequently, I am not satisfied that the use of the Trade Mark on the Applicant’s goods and services would mislead or deceive.
Section 29 of the ACL requires the Applicant to have supplied or possibly supply goods or services and in doing so make false or misleading representations about the goods or services. Use of the Trade Mark would not amount to a false and misleading representation. This ground of opposition fails because at the Relevant date the Opponent had essentially no reputation in its trade marks so no one was misled.
In relation to the Opponent’s issue with the Trade Mark application’s erroneous priority date, I find that the priority date was a claim to priority which would not have been visible on the Register of Trade Marks until the Relevant date. Therefore it is unlikely that a trader with common law rights to the Trade Mark or something so similar may have been influenced by the date.
Where use of a trade mark does not contravene s 18 of the ACL, neither will it amount to the tort of passing off.
The connection between passing off and s 52 of the repealed Trade Practices Act 1974 (‘TPA’) was talked about in Re Equity Access Pty Ltd v Westpac Banking Corporation:
[T]he scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of the name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[14]
[14] [1989] FCA 506 [40].
Section 18 of the ACL is comparable to s 52 of the TPA. Therefore, the above comments are equally applicable to the relationship between s 18 of the ACL and the tort of passing off.
It follows then that s 18 of the ACL has not been contravened and therefore use of the Trade Mark does not amount to passing off.
Therefore, the Opponent has not established the ground of opposition under ss 42(a) or 42(b).

Section 62A

Section 62A of the Act provides:
62A Application made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
A trade mark application will be made in bad faith if ‘persons adopting proper standards would regard the decision to register as in bad faith, or that reasonable and experienced persons in the field would view such conduct as falling short of acceptable commercial behaviour.’[15]
[15] Fry Consulting Ltd v Sports Warehouse Inc. (No 2) [2012] FCA 81, [174] (‘Fry’).
The s 62A ground is particularised in the SGP as follows:
a.The opponent relies on one or more of the abovementioned trade marks, and the prior use by the opponent before the filing date of the application.
The Opponent also claims to have used the Opponent’s trade marks and its common law marks before the Relevant date.
In considering s 62A of the Act the courts have required more, such as a situation where an applicant previously recognised the trade mark as the property of another or that the applicant has otherwise sought to use the trade mark in a manner that directly referenced the opponent.[16] The Applicant was established in Spain and started using the Trade Mark in many other countries. In seeking to expand its business to Australia there is no evidence that it was aware of the Applicant, let alone acted in bad faith when filing the Trade mark application. The Applicant has not engaged in behavior that can be described as being ‘of an unscrupulous, underhand or unconscientious character’[17].
[16] DC Comics v Cheqout Pty Ltd [2013] FCA 478, [77].
[17] Fry, [147].
I find the Applicant’s decision to apply to register the Trade Mark in circumstances where the Opponent had no registered trade marks and little, if any reputation in its common law marks[18] falls well short of an application made in bad faith.
[18] Note: the Opponent’s trade marks were not filed in Australia until November 2015.
Accordingly, the section 62A is not established.

Section 62

Section 62 provides:

Section 62 - Application etc. defective etc.

62. The registration of a trade mark may be opposed on any of the following grounds:
(a) that the application, or a document filed in support of the application, was amended contrary to this Act;
(b) that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars.
Note: For file see section 6.

The s 62 ground is particularised in the SGP as follows:
The application etc. was defective etc. (s.62).
(a) The Opponent relies on the erroneous priority claim of the opposed trade mark application.
The Opponent does not specify whether it is relying on s 62(a) or s 62(b). I assume, however, that it is relying on s 62(b) because the Trade Mark has not been amended in any way therefore s 62(a) is not available to the Opponent.
The Applicant submits, [95] – [96]:
‘…the Applicant’s mistaken priority claim could only be described as ill-informed or careless.
‘while it is conceded that the priority claim was erroneous, the Opponent has failed to demonstrate the requisite causal connection between the erroneous priority claim and the Registrar’s decision to accept the Opposed Mark’.
In support of this submission the Applicant refers to Mars Australia Pty Ltd (formerly Effem Foods Pty Ltd) v Societe des Produits Nestle SA[19] (‘Mars’). The Applicant has not directed me to a particular part of the Mars case but I presume that it intends to refer me to the passage I have quoted below where Justice Bennett said:
Section 62(b) requires a causal connection between the suggested false statement and the acceptance of the application. I accept Mars’ submission that it cannot be concluded that the examining Delegate accepted the application on the basis of the representations in the Steele declaration, even if they were false in a material particular. (my emphasis)
[19] [2010] FCA 639.
In this case I find the s 62(b) ground is clearly expressed in the Act and a literal interpretation of this provision mandates that the Registrar must have accepted the Trade Mark on the basis of evidence or representations that were themselves false in material particulars.
It is not the Registrar’s interpretation of this evidence or any representation that is relevant to establishing this ground, nor is it relevant whether the Applicant knowingly deceived the Registrar.
I refer to delegate Nancarrow in Analyses Conseils Informations ACI v Iguassu (No 16) Pty Ltd & Al Gray Nominees Pty Ltd[20] where he said:
This ground of opposition does not necessarily allege any misleading conduct, bad faith or other form of deception. The challenge that evidence or representations were 'false in material particulars' may simply seek to alert the Registrar that the applicants themselves are confused, or have been given incorrect information which has been passed on to this Office. The false particular, if it exists, may be entirely unintentional…
The legislation at s.62(b) is quite clear in its requirement that the 'evidence or representations' provided by the applicants would need to be 'false in material particulars' in order to trigger this ground of opposition. If the applicants provided correct information, but an examiner or acceptance officer within the Trade Marks Office misinterpreted this material, then s.62(b) is not a ground of opposition to redress such an error. In other words, the evidence or representations must be false - whether intentionally or unintentionally is of no consequence for this subsection - before s.62(b) can operate in favour of the opponent.
[20] [2001] ATMO 4 (17 January 2001).
I find the priority date of any application is a material particular and, in this case, it is false. However, I am unable to see the causal connection between the erroneous nature of this priority date and the Registrar accepting the Trade Mark for possible registration.
There is also no evidence before me that there are any other trade marks, registered or unregistered, that would have operated as a barrier to the acceptance of the Trade Mark had the application claimed the correct priority date of 15 September 2015.
I find the Registrar would have accepted the Trade Mark even if the convention date had not been claimed.
Accordingly, the s 62(b) ground is not established.

Decision

I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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.
Trade Mark application no. 1721746 may proceed to registration not less than 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 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.
The Applicant accepts the priority date for the Trade Mark is 15 September 2015[21]. The erroneous priority date of 18 June 2015 will be removed once the appeal period has concluded.
[21] See the Applicant’s submissions [13].

Costs

The Applicant seeks an order for costs. As costs usually follow the event I award costs against the Opponent pursuant to schedule 8 of the Trade Mark Regulations 1995.

Cristy Condon
Hearing Officer
Trade Marks Hearings
14 November 2017