Mint (Aust) Pty Ltd v Intuit Inc

[2019] ATMO 16

TRADE MARKS ACT 1995

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

Re:Opposition by Mint (Aust) Pty Ltd to registration of trade mark application 1746965 (classes 9, 35, 36, 42) - MINT.COM - in the name of Intuit Inc.

Delegate:	Adrian Richards
Representation:	Opponent: Michael Deacon of Shelston IP (written submissions) Applicant: Michael Wolnizer and Madeline Chan of Davies Collison Cave (written submissions)
Decision:	2019 ATMO 16 - Opposition under section 52 of the Trade Marks Act 1995 – identical in all material respects to an opposition already decided in favour of the applicant – opposition dismissed – reduced costs awarded against opponent.

Decision and reasons

1. The procedural history and facts of this opposition are identical in all material respects to the recent decision of this office Mint Payments Ltd v Intuit Inc,[1] in which the opponent was unsuccessful and had costs awarded against it.

   [1] [2018] ATMO 158 (‘Mint’).

2. The present opposition had proceeded in the usual way and was due to be heard, when on 31 October 2018, attorneys for Intuit Inc (‘Applicant’) wrote to this office requesting dismissal of the opposition. The reasons for this request were:

   • The opponent in Mint and Mint (Aust) Pty Ltd (‘Opponent’) are related entities (the Opponent being a wholly owned subsidiary of the opponent in Mint).
   • The grounds of opposition, particulars of those grounds, and evidence were the same in both proceedings.
   • There had been no appeal to Mint filed in any court.

3. The matter was brought to my attention during the lead up to scheduling a hearing on the present opposition. On 30 November 2018 I wrote to the Opponent:

   Please find attached correspondence from the applicant’s attorneys seeking dismissal of this opposition. The request relies on the recently issued decision in relation to the same trade mark application: Mint Payments Ltd v Intuit Inc [2018] ATMO 158 (‘Mint’).

   I intend to issue a brief decision dismissing this opposition for the following reasons:

   1.The same issues are to be decided—the opposition mounted by the present opponent is identical in all relevant respects to Mint.

   2.The decision in Mint is final—Mint Payments Limited did not lodge an appeal.

   3.The opponents in each opposition are privies—the opponent in the present opposition is a wholly owned subsidiary of the opponent in Mint.

   Given all of this, it does not appear to be appropriate to reopen what has already been decided. Since Mint also dealt with costs, if I proceed along this course, I also intend to award costs as appropriate to the circumstances.

   The opponent has until 14 December 2018 to comment on both my proposal to dismiss this opposition and on the question of costs.

4. On 13 December 2018 the Opponent replied:

   We refer to your email dated 30 November 2018 and the letter filed on behalf of the Applicant dated 31 October 2018 in relation to the above opposition proceedings.

   The Opponent agrees with the proposal to dismiss the opposition proceedings considering the comments provided in your email, and acknowledging that there is no need for the parties to incur any additional costs unnecessarily as noted in the letter filed on behalf of the Applicant.

   Please proceed accordingly and confirm in due course.

5. Section 55 of the Act relevantly provides:

55Decision

(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. I am satisfied that no grounds of opposition have been established by the Opponent. Trade mark 1746965 may proceed to registration one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, registration shall not occur until the appeal has been withdrawn or discontinued. Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.

2. The present opposition should have been joined with the proceedings in Mint, or possibly not commenced at all. Costs usually follow the event, and I see no reason to depart from that in these circumstances. The duplication of effort on the part of the Applicant, while not the same degree as defending a unique opposition, means it is due some measure of its costs. The Opponent’s concession, late in proceedings though it was, is also worthy of some acknowledgement. Accordingly, I award reduced costs against the Opponent under s 221 of the Act in the same manner as Hume Industries (Malaysia) Berhard v James Hardie & Coy Pty Ltd.[2]

   [2] [2001] ATMO 78.

Adrian Richards
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
5 February 2019