Mountain H2O Pty Ltd v Australia's Finest Springvale Pty Ltd

[2003] ATMO 15

TRADE MARKS ACT 1995

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

Re:Opposition by Mountain H2O Pty Ltd to registration of trade mark application 832431(32, 35, 39) - KIEWA VALLEY - filed in the name of Australia's Finest Springwater Pty Ltd.

DATE OF DECISION:	10 March 2003
DELEGATE:	Hearing Officer Jock McDonagh
DECISION:	Section 52 Opposition: registration allowed - s 55(b)

Background

The applicant, Australia's Finest Springwater Pty Ltd of Wodonga Victoria, filed trade mark application 832431 on 19 April 2000. The application was for the word and device trade mark kiewa valley as shown:

The application covered the following goods and services:

Class 32:Water, filtered water, spring water, aerated water, mineral water.

Class 35:Retailing and wholesaling of water, filtered water, spring water, aerated water, mineral water.

Class 39:Delivery, transportation and handling services.

Following examination, the Registrar advertised the trade mark as accepted in the Australian Official Journal of Trade Marks on 30 August 2001. The opponent, Mountain H2O Pty Ltd of Albury New South Wales, filed notice of opposition to the trade mark's registration on 29 November 2001. That notice listed 24 grounds of opposition, in effect all of the grounds of rejection of, and opposition to, an application to register a trade mark provided in the Trade Marks Act 1995 ("the Act").

A request for extension of time to serve evidence in support was filed on 26 February 2002. The request for extension was granted, but no evidence in support was forthcoming.

The applicant requested an extension of time to serve evidence in answer on 28 August 2002. The extension was granted. The evidence in answer was served and filed on 25 September 2002. It comprised a statutory declaration by Robert Allen, the director of the applicant company.

Neither party has requested to be heard in this matter. Accordingly, the issue has come to me as a delegate of the Registrar of Trade Marks to decide on the material on file. Written submissions were provided on behalf of the applicant by its attorneys, Davies Collison Cave, Melbourne.

Evidence

As discussed above, there is no evidence in support of the opposition.

Evidence in answer to the opposition is the statutory declaration by Robert Allen mentioned above. The declaration contained seven exhibits providing examples of use of the trade mark.

Discussion

Under the Act, there is a presumption of registrability. Section 55 of the Act requires that "the Registrar must decide ... having regard to the extent (if any) to which any ground on which the application was opposed has been established." It follows that the proponent of the ground of opposition, the opponent, has the onus of establishing those grounds.

This interpretation is supported by the dicta of French J in Registrar of Trade Marks v Woolworths Limited (1998) 45 IPR 411, at 427 where he states:

“[t]he decision to reject an application regularly must now be based upon positive satisfaction that a ground for rejecting it is made out.”

The opponent has not placed before me any material that could satisfy me to any extent of any of the grounds on which the application was opposed. Further, the applicant has provided evidence that refutes grounds relating to inherent distinctiveness and distinctiveness acquired through use put forward by the opponent.

Conclusion

I have found that none of the grounds relied upon by the opponent in the notice of opposition have been established. In my capacity as the delegate of the Registrar, I dismiss the opposition. Subject to the payment of any outstanding fees, 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.

Jock McDonagh

Hearing Officer

Trade Marks Hearings

10 March 2003