MG Icon LLC v Caprice Australia Pty Ltd - [2014] ATMO 34

TRADE MARKS ACT 1995

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

Re:Opposition to removal of trade mark registration 901355 MATERIAL GIRL – Request by Caprice Australia Pty Ltd for extension of time to file evidence in reply, and objection by MG Icon LLC.

Delegate:	Hearing Officer: Nicole Worth
Representation:	Removal opponent: Tim Allen and Natalia Blecher of Corrs Chambers Westgarth Lawyers. Removal applicant: Peter Creighton-Selvay of Counsel, instructed by Wadeson IP.
Decision:	2014 ATMO 34 Regulation 9.18 – extension of time to file evidence in reply – exceptional circumstances - all reasonable efforts to comply – acting promptly and diligently at all times – request for extension of time refused.

Background

This decision concerns an application for an extension of time to file evidence in reply under regulation 9.18 of the Trade Mark Regulations 1995 (‘the Regulations’).
The substantive matter concerns an application by MG Icon LLC (‘the Removal Applicant’) to remove trade mark registration 901355, MATERIAL GIRL, in the name of Caprice Australia Pty Ltd (‘the Removal Opponent’), from the Register of Trade Marks. Those proceedings began in 2012, prior to changes to the Regulations brought about by the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1), (‘RTB’), which came into effect on 15 April 2013. The RTB repealed the provisions for extensions of time to file evidence in opposition proceedings and replaced them with new provisions including regulation 9.18. The new extension of time provisions in regulation 9.18 apply to the period of time in which the Removal Opponent may serve and file evidence in reply.
The application for removal of the trade mark was advertised on 29 March 2012.
Casco Blu Pty Ltd, the then-removal opponent[1] and exclusive licensee of the trade mark, filed a notice of opposition to removal within the time allowed for doing so, on 29 June 2012. Its evidence in support of its opposition was due to be served by 29 September 2012, however it sought and obtained an extension of time of one month and served its evidence on 10 October 2012.
[1] The right or interest of the original removal opponent has been vested in a number of successive parties, however it is not necessary to detail those changes here.
The Removal Applicant’s evidence in answer was due to be served by 10 January 2013, however it sought and obtained two extensions of time of three months each, such that its evidence in answer was due 12 July 2013[2]. The Removal Opponent objected to the second of these extensions, however a delegate of the Registrar of Trade Marks dismissed the objection (although the delegate also warned the Removal Applicant that it had reached, under ‘pre-RTB’ provisions, the 9 month benchmark beyond which an extension would only be granted if there were compelling reasons to do so). The Removal Applicant served partial evidence in answer on 19 April 2013 and 27 May 2013, and the balance on 11 July 2013. In the meantime,…

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: [2014] ATMO 34
Decision Date: 30 April 2014

CaseChat Overview and Summary

MG Icon LLC (the applicant) sought to register the trade mark "MG" in relation to clothing and footwear. Caprice Australia Pty Ltd (the opponent) opposed this application, arguing that the proposed mark was deceptively similar to its own registered trade mark "MG" for similar goods. The hearing officer, Nicole Worth, was tasked with determining whether the applicant's proposed trade mark should be registered.

The central legal issue before the hearing officer was whether the applicant's proposed trade mark "MG" was deceptively similar to the opponent's registered trade mark "MG" for the purposes of section 44 of the *Trade Marks Act 1995* (Cth). This involved an assessment of the visual, aural, and conceptual similarities between the two marks, as well as the nature of the goods in respect of which the marks were used.

The hearing officer found that the marks were identical in appearance and sound. While the opponent argued that the marks had different conceptual meanings, the hearing officer determined that the dominant impression conveyed by both marks was the letters "MG". Given the identical nature of the marks and the significant overlap in the goods covered by both the applicant's proposed registration and the opponent's existing registration, the hearing officer concluded that there was a real chance that consumers would be deceived into believing that the applicant's goods originated from or were connected with the opponent. Consequently, the opposition was upheld.

Orders