Morgan & George Gerakis v Nathan Darma

[2017] ATMO 59

TRADE MARKS ACT 1995

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

Re:Opposition by Morgan Jonas & George Gerakis to registration of trade mark application 1627674(25) - BEAST MODE - in the name of Nathan Darma.

Delegate:	Iain Campbell Thompson
Representation:	Opponent: Self represented Applicant: Self represented
Decision:	2017 ATMO 59 Decision on the Written Record Trade Marks Act 1995 Section 52 opposition to registration: section 58 - Applicant concedes Opponents' prior use of Trade Mark in relation to ‘same kind of thing’ - opposition established Registration refused

Background

1.     In these proceedings under the Trade Marks Act 1995 (‘the Act’) Nathan Darma (‘the Applicant’) has applied to register the trade mark which appears below:

Application No:           1627674
Priority Date:               10 June 2014
Goods:  Class 25: Apparel (clothing, footwear, headgear)
Trade Mark:                BEAST MODE

(‘the Trade Mark’)

2. The Trade Mark was examined as prescribed by section 31 of the Act and subsequently advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 30 October 2014.

3.     On 1 December 2014, Morgan Jonas and George Gerakis (‘the Opponents’) filed a Notice of Opposition to the registration of the Trade Mark followed, on 2 December 2014 by a Statement of Grounds and Particulars (‘the SGP’). The SGP details grounds under sections 58, 60, 43, 59, and 62A of the Act.

4.     Thereafter, on 15 January 2015, the Applicant filed a Notice of Intention to Defend.

5.     The Opponents have not filed Evidence in Support of the Opposition; the Applicant has, however, filed Evidence in Answer as I will further discuss, below.

6.     Both parties have been informed of their right to be heard or to file written submissions: neither has elected to avail themselves of these opportunities.

7. Now, in order that the Registrar of Trade Marks may discharge her obligation under section 55 of the Act to decide this matter, it has been passed to me, one of her delegates, for my decision on the written record. The written record is comprised of those materials referred to in the preceding paragraphs.

Onus

1. The Opponents bear the onus of establishing one or more grounds of opposition on the balance of probabilities.[1]

   [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]-[133].

2. The relevant date at which the grounds under section 52 of the Act must be considered is the filing date of the opposed application[2] which generally, but not always, the same as the priority date.

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

   Evidence

   10.     As mentioned above, the Opponents did not file Evidence in Support.

   11.     The Applicant filed Evidence in Answer being a declaration made by the Applicant on 7 August 2015 with exhibits 1 and 2.

   12.     In his declaration, the Applicant relevantly states:

   Upon research into the opposition's brand I quickly found that they in fact don't have any registered intellectual property …

   The [Opponents] claim to have a reputation online for selling apparel including items with the [Trade Mark] on them.  As mention above, they don’t even have an online website for their brand apart from their eBay[^®] store.  The [Opponents have] been a member on eBay[^®] since November 2007 and since then have made a total of 860 transactions which equates to approximately 9 sales per month.

   Section 58

   13.     In their SGP the Opponents contend:

   The trade mark 'BEAST MODE' was first used by us (Lycan Athletics PTY LTD) in June 2013, we sell gym apparel with the slogan 'BEAST MODE' in addition to this, the applicant, Mr Darma has NEVER sold any clothing with the slogan 'BEAST MODE' nor does he use 'BEAST MODE' for any of his products that he sells online. We sell gym clothing, the slogan 'BEAST MODE' is an important trade mark for us.

   14. Section 58 provides:

   58Applicant 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.

   15.     Ownership of a trade mark may arise in two ways: firstly, by use as a trade mark; secondly, by the filing of an application for registration as a trade mark.  In the case of a dispute as to the ownership of a trade mark, the first person to publically use the trade mark in the course of trade in relation to particular goods or services, or to apply to register it as a trade mark for those goods or services (whichever is the earlier) is the owner of the trade mark.  In order to displace a statutory claim to ownership, an opponent must show first use of a trade mark which is at least substantially identical[3] to the impugned trade mark in relation to goods or services which are, as a minimum, ‘the same kind of thing’[4].

   [3] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495; (1994) 31 IPR 375; [1994] AIPC 91-049 at [62].

   [4] Re Hicks’ Trade Mark (1897) 22 VLR 636.

   16.     The situation before me is unusual: the Opponents have not filed any evidence of their use of a trade mark which is substantially identical to the Trade Mark.  However, with their Notice of Intention to Oppose they submitted a printout of an eBay^® page which shows use of the trade mark BEAST MODE on gym clothing on 3 July 2013.  This information is problematical since it is not in declaratory form and is not filed as Evidence in Support.  Regulation 21.17(1) of the Trade Marks Regulations 1995 (‘the Regulations’) provides:

   21.17Evidence in proceedings

   (1)Evidence that is given in writing in any proceedings before the Registrar must be in the form of a declaration.

   17.     The Applicant, for his part, acknowledges that he has researched the Opponents and does not appear to dispute the fact that they have had prior use of a trade mark identical to the Trade Mark before either any use of it by the Applicant or the filing of the application for registration of the Trade Mark.  Rather, the Applicant confirms that use by the Opponents but, on my understanding of his declaration, regards the application for registration as displacing any claims that the Opponents might have to the ownership of the Trade Mark.

   18.     However, as Carr J observed in PB Foods Ltd v Malanda Dairy Foods Ltd[5], ‘The scheme of the Act is not proprietorship by registration but rather registration of proprietorship, although such registration confers various benefits including some protection from infringement proceedings.’ As discussed in para [15] above, a statutory claim to ownership via the filing of an application to register a trade mark may be displaced by another person showing earlier use of a trade mark (which is at least substantially identical to the impugned trade mark) on goods which are ‘the same kind of thing’ in Australia before the filing date of the application. In other words, the Applicant’s apparent belief that by filing the application to register the Trade Mark he has displaced any claim the Opponents might have to the ownership of the Trade Mark is misplaced.

   [5] [1999] FCA 1602; [1999] AIPC 40,117; (1999) 47 IPR 47 at [78].

   19. Since the Applicant has researched the Opponents’ use of the Trade Mark, and tacitly acknowledges the Opponents’ earlier use of the Trade Mark, I am inclined to apply the provisions of regulation 21.15(4) of the Regulations to the information filed by the Opponents with the Notice of Intention to Oppose. Regulation 21.15(4) provides:

   (4)The Registrar is not bound by the rules of evidence, but may be informed on any matter that is before the Registrar in a way that the Registrar reasonably believes to be appropriate.

   20.     I note that the printout of the eBay® page featuring the Opponents’ trade mark BEAST MODE establishes the public use of that trade mark since on or around 3 July 2013: that is, before the filing date of the Trade Mark.

   21.     Although the Applicant characterises the Opponents’ use of their trade mark as being low, as little as one prior public use of a trade mark in relation to goods which are ‘the same kind of thing’ in Australia is sufficient to establish ownership of that trade mark: Thunderbird Products Corporation v Thunderbird Marine Products Pty Ltd[6].

   [6] [1974] HCA 51; (1974) 131 CLR 592; 4 ALR 687; (1974) 48 ALJR 456; 1A IPR 511.

   22.     Since the Opponents have had the use in Australia of a trade mark which is identical to the Trade Mark before either any use or the filing of the application to register the Trade Mark, on goods which are the ‘same kind of thing’, they have displaced the claims of the Applicant to the ownership of the Trade Mark.

   23. The ground under section 58 of the Act is established.

   Decision

   24. 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.

   25.     I refuse to register the Trade Mark.

   Iain Campbell Thompson
   Hearing Officer
   Trade Marks Hearings
   13 June 2017