MIS Implants Technologies Ltd v More Group Pty Ltd - [2022] ATMO 215

TRADE MARKS ACT 1995

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

Re:Opposition by MIS Implants Technologies Ltd to registration of trade mark application number 2103284 (class 10) - MGUIDE - in the name of More Group Pty Ltd.

Delegate:

Nicholas Butson

Representation:

Opponent: Cornwalls

Applicant: King & Wood Mallesons

Decision:

2022 ATMO 215

Trade Marks Act 1995 (Cth) – opposition under s 52 – s 58 considered – whether first user in Australia was manufacturer or distributor – s 58 established – registration refused

Background

This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’)[1] by MIS Implants Technologies Ltd (‘Opponent’) to the registration of the following trade mark:
Trade mark number:      2103284
Trade mark:   MGUIDE (Trade Mark’)
Applicant: More Group Pty Ltd (‘Applicant’)
Filing Date:   14 July 2020
Specification:                    Class 10: Apparatus for dental purposes; Apparatus for dental use; Dental apparatus and instruments; Dental apparatus for paralleling; Dental drill bits; Dental implant apparatus; Dental instruments; Dental tools; Medical devices for dental surgery (‘Applicant’s Goods’)
[1] Unless otherwise stated, each reference to a regulation below is a reference to a regulation in the Trade Marks Regulations 1995 (Cth) and each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth).

The application for the Trade Mark was accepted for possible registration on the 12 October 2020, with acceptance advertised on 15 December 2020.
A Notice of Intention to Oppose was filed by the Opponent on 16 December 2020, followed by a Statement of Grounds and Particulars (‘SGP’) on 18 January 2021. A Notice of Intention to Defend was filed by the Applicant on 27 January 2021.
The Opponent filed Evidence in Support on 3 May 2021. Evidence in Answer was filed by the Applicant on 5 August 2021. The Opponent filed Evidence in Reply on 6 October 2021.
Following the evidence stages, the parties requested to be heard. Both parties filed an outline of submissions prior to the hearing. As a delegate of the Registrar of Trade Marks, I heard the matter by video conference on 6 September 2022. Len Hickey from Cornwalls appeared on behalf of the Opponent. Craig Smith of Counsel and Bill Ladas, James Robb and Sarah Goddard from King & Wood Mallesons appeared on behalf of the Applicant.
I have decided this matter in my role as delegate of the Registrar of Trade Marks.

Evidence

Evidence in Support

The Opponent’s Evidence in Support is comprised of:

Declaration by Shlomi Magal (General Manager of the Opponent), made on 3 May 2021 with Exhibits 1-48 (‘First Magal Declaration’).

The First Magal Declaration details that the Opponent is an Israeli based research, development, manufacturing and sales company in the field of implant dentistry. It is stated that the Opponent supplies its goods through authorised distributors in different countries, who on-sell them to dentists. It…

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: [2022] ATMO 215
Decision Date: 6 December 2022

CaseChat Overview and Summary

This decision concerns an application by MIS Implants Technologies Ltd (the Applicant) to register a trade mark, which was opposed by More Group Pty Ltd (the Opponent). The delegate of the Registrar of Trade Marks was required to determine whether to register the trade mark, having regard to the grounds of opposition.

The primary legal issue before the delegate was whether any of the grounds on which the application was opposed had been established, specifically in relation to section 58 of the *Trade Marks Act 1995* (Cth). The delegate was required to decide, pursuant to section 55(1) of the Act, whether to refuse or register the trade mark based on the established grounds of opposition.

The delegate found that the Opponent had successfully established the ground of opposition under section 58 of the Act. Consequently, applying section 55(1), the delegate refused to register the trade mark. The delegate directed that the refusal be recorded one month from the date of the decision, with provisions for the refusal to be stayed pending any appeal. The delegate also awarded costs against the Applicant in favour of the Opponent, following the usual principle that costs follow the event.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

Section 55(1) 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. The Opponent has established the ground of opposition under s 58 of the Act. As a delegate of the Registrar, I accordingly refuse to register the Trade Mark. I direct that the refusal be recorded one month from the date of this decision. Should the Registrar be served with a notice of appeal before then, refusal of the Trade Mark shall not occur until the appeal has been decided or discontinued. Any disposition of the application should of course be in accordance with the court’s orders or direction. Both parties have sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle. I award costs against the Applicant under s 221, in accordance with the amounts detailed in sch 8 of the Trade Marks Regulations 1995 (Cth).

Ratio Decidendi

Legal Principle Established

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