Melissa Ann Rowe v Gerrit Ryan Wood and Sarah Wood

[2019] ATMO 4

TRADEMARKSACT 1995

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

Re:Opposition by Melissa Ann Rowe to registration of  trade  mark  application 1762776 (41, 44, 45) - The Mindful Mum (Logo) - in the name of Gerrit Ryan Wood and Sarah Wood.

DELEGATE:

Iain Campbell Thompson

REPRESENTATION:

Opponent: Burns IP & Commercial Pty Ltd Applicant: Win Trade Marks

DECISION:

2019 ATMO 4

Trade Marks Act 1995

Section 52 opposition to registration: grounds under section 58, 60, 42, and 62A – no Evidence in Support filed – opposition to registration not established.

Background

1. In these proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) Gerrit Ryan Wood and Sarah Wood (‘the Applicants’) have filed an application for the registration of the trade mark which appears below:

Application No:         1762776
Priority Date:             12 April 2016

Goods:Class 41: Conducting workshops (training); Arranging and conducting of workshops (training); Yoga instruction; Conducting fitness classes; Conducting fitness classes (aerobics); Fitness and exercise clinics, clubs and salons; Health club services (exercise); Health club services (health and fitness training); Instruction in physical fitness; Physical fitness training services; Physical fitness tuition; Health education; Physical health education; Conducting exercise classes; Prenatal exercises; Aerobics training services; Coaching (training); Life coaching services (training or education services); Commercial training services; Conducting training seminars; Lifestyle counselling and consultancy (training); Mentoring (education and training); Mentoring (training); Personal development training; Physical training services; Providing courses of training; Adult training; Advisory services relating to training; Arranging of exhibitions for training purposes; Business training consultancy   services;   Business   training   services;   Charitable

services, namely education and training; Childbirth education and training;   Computer   based   training;   Organisation   of   training courses; Organisation of youth training schemes; Providing sports training  facilities;  Provision  of  information  relating  to  training; Provision of training; Provision of training courses; Provision of training  facilities;  Sports  training;  Teacher  training  services; Training in the care of children; Dance instruction; Organisation and conducting of dance, music and other entertainment festivals Class  44:  Advisory  services  relating  to  nutrition;  Consultancy relating to nutrition; Counselling relating to nutrition; Nutrition consultancy;  Nutritional                  advisory         services;  Provision          of information  relating  to  nutrition;  Meditation  services;  Therapy services;   Provision   of        information     relating  to        psychology; Counselling       relating  to  diet;     Dietetic                 counselling   services (medical);  Lifestyle counselling (medical);  Lifestyle counselling (psychological); Medical counselling; Psychological counselling; Psychological or psychiatric counselling; Massage

Class 45: Life coaching (personal mentoring and support services); Charitable services, namely mentoring (personal or spiritual); Mentoring (spiritual); Counselling relating to spiritual direction; Lifestyle counselling (spiritual);  Marriage  guidance counselling;

Spiritual or religious counselling (‘The Applicants’ Services’)

Trade Mark:

(‘the Trade Mark’)

1. The Trade Mark was examined in compliance with section 31 of the Act and advertised as accepted for possible registration on 22 September 2016 in the Australian Official Journal of Trade Marks.

1. On 6 October 2016, Melissa Ann Rowe (‘the Opponent’) filed a Notice of Intention to Oppose the registration of the Trade Mark.

1. On 7 October 2016, the Opponent filed a Statement of Grounds and Particulars detailing grounds under sections 58, 60, 42, and 62A of the Act.

1. On 26 October 2016, the Applicants filed a Notice of Intention to Defend.

1. The Opponent has not filed Evidence in Support.

1. Although the Applicants filed Evidence in Answer, there is no need for me to consider it for reasons which will become apparent.

1. I am a delegate of the Registrar of Trade Marks and am to decide this matter on the basis of the written record which is comprised of those materials mentioned in the foregoing paragraphs.

Onus and Relevant Date

1. The Opponent bears the onus of establishing a ground of opposition which is detailed in the Statement of Grounds and Particulars on the balance of probabilities.1

1. The relevant date (‘the Relevant Date’) at which the grounds must be considered is the filing date2 of the opposed application and I note that where section 60 specifies the ‘priority date’ that is here the same as the filing date.

Discussion

The Act and Grounds of Opposition

1. 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.

1. In its Statement of Grounds and Particulars the Opponent asserts:

The Opponent has continuously used the same or similar trade marks, namely MINDFUL MAMAS and other formative trade marks containing the term MINDFUL, for the same or similar goods [sic], namely workshops, exercise and fitness classes, seminars, lifestyle counselling and mentoring, advisory services, meditation services, therapy services, life coaching and guidance in the field of parenting since at least as early as February 2013 which is prior to the filing date of the [Applicants’] mark.

1. Section 60 of the Act provides:

1 Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146

per Gyles J at [6] to [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132] to [133].

2 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592.

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.

1. In its Statement of Grounds and Particulars the Opponent asserts:

The Opponent has acquired a reputation and goodwill in the trade mark MINDFUL MAMAS and other formative MINDFUL trade marks for the same or similar goods [sic] as the [Applicants’]. The Opponent’s reputation was acquired through promotion and use of the trademark MINDFUL MAMAS and other formative MINDFUL trade marks in Australia prior to the priority date of the opposed application.

1. Section 42 of the Act relevantly provides:

42 Trade mark scandalous or its use contrary to law

An application for the registration of a trade mark must be rejected if: […]

(b)  its use would be contrary to law.

1. In its Statement of Grounds and Particulars the Opponent asserts:

The use of the [Applicants’] mark in relation to the [Applicants’] services is likely to constitute a breach of s 18 of the Australian Consumer Law (ACL) and the law of passing off, and therefore would be contrary to law. Because the [Applicants’] mark is the same or deceptively similar for the same or similar services, use of the [Applicants’] mark will cause confusion with the marks of the Opponent.

1. 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.

1. In its Statement of Grounds and Particulars the Opponent asserts:

The [Applicants] approached the Opponent and obtained the Opponent’s assistance in a video project related to the relevant services of the Opponent provided under the trade mark MINDFUL MAMAS. At the time, the [Applicants were] aware of the Opponent’s use of the trade mark MINDFUL MAMAS. As such, the [Applicants] filed Australian Trade Mark No. 1762776 in an unscrupulous manner and in bad faith.

Conclusion

1. The onus is on an opponent to establish its opposition to the registration of a trade mark. Each of the above claims in the Statement of Grounds and Particulars, listed under the relevant legislative provisions, amounts to a bare assertion which, in the absence of evidence to support it, could not be held to have established any ground of the Opponent’s opposition to the registration of the Trade Mark. Consequently, there is no need to consider the Applicants’ Evidence in Answer as there is no Evidence in Support before the Registrar that requires answering.

1. The Opponent has not established any of the grounds under sections 58, 60, 42, and 62A of the Act.

Decision

1. Section 55 of the Act relevantly provides:

55  Decision

(1)    Unless subsection (3) applies to the proceedings, 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.

Note:       For limitations see section 6.

1. The opposition to registration has not been established.

1. The trade mark application may then proceed to registration 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 the appeal has been decided or discontinued

and the disposition of the application should be in accordance with the court’s order or direction.

Iain Campbell Thompson Hearing Officer

Trade Marks Hearings 16 January 2019