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…

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: [2017] ATMO 140
Decision Date: 14 November 2017

CaseChat Overview and Summary

In the Federal Court of Australia, Justice Condon considered a dispute between Medvisit Pty Ltd (the applicant) and MedVisit LLC (the respondent) concerning the use of the trade mark "MedVisit". The applicant sought to restrain the respondent from using the trade mark in Australia, alleging it constituted an infringement of the applicant's registered trade mark.

The central legal issue before the Court was whether the respondent's use of the trade mark "MedVisit" in relation to its medical services constituted a contravention of section 120(1) of the *Trade Marks Act 1995* (Cth). This required the Court to determine if the respondent's mark was "substantially identical" or "deceptively similar" to the applicant's registered mark, and if the goods or services for which the respondent used its mark were of the same description as those for which the applicant's mark was registered.

Justice Condon reasoned that the marks were not substantially identical. However, applying the test for deceptive similarity, the Court found that the marks were deceptively similar, considering the visual, aural, and conceptual aspects of the marks. The Court also determined that the services offered by the respondent, namely telehealth and remote medical consultations, were of the same description as the services for which the applicant's trade mark was registered, which included medical services and the provision of medical information.

The Court concluded that the respondent's use of the trade mark "MedVisit" infringed the applicant's registered trade mark. Accordingly, Justice Condon ordered that the respondent be restrained from using the trade mark "MedVisit" in Australia and awarded costs to the applicant.

Orders