Murrays Craft Brewing Co Pty Ltd v Artemis IP Limited

[2018] ATMO 72

TRADE MARKS ACT 1995

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

Re:Opposition by Murray’s Craft Brewing Co Pty Ltd to registration of Trade Mark Application 1773724 SHACK in the name of Artemis IP Limited

Delegate:	Michael Kirov Decision on the Written Record 2018 ATMO 72
Decision:	Opposition under s 52 of the Trade Marks Act 1995: Notice of Opposition nominates grounds under ss 58, 59, 60 and 62A of the Act but none supported by evidence - opposition not established.

Background

1. This is an opposition brought by Murray’s Craft Brewing Co Pty Ltd (“the Opponent”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark subject of the application detailed below in the name of Artemis IP Limited (“the Applicant”):

Application No:         1773724

Priority Date:             6 June 2016

GoodsClass 32: Cider (non-alcoholic); Aerated beverages (non-alcoholic); Preparations for making beverages; Fruit juices; Fruit based drinks; Fruit syrup (beverages or for making beverages); Beverages made from fruit concentrates

Class 33:Cider; Cider coolers (beverages); Sparkling cider

Trade Mark:              SHACK  (“the Opposed Mark”)

1. The Opponent, which is represented by StevensVuaran Lawyers, filed a Notice of Intention to Oppose on 7 December 2016, followed by a Statement of Grounds and Particulars (“SGP”) on 12 December 2016 specifying opposition grounds corresponding to ss 58, 59, 60 and 62A of the Act. The Applicant filed a Notice of Intention to Defend its application on 12 January 2017.

2. Thereafter, however, the Opponent did not file any evidence in support of the opposition and the Applicant’s attorneys, IP Solved (ANZ) Pty Ltd, subsequently advised the Registrar that it would not be filing any evidence in answer.

3. IP Australia wrote to the parties on 31 May 2017 noting no evidence had been filed and allowing one month for either party to request a hearing.  Neither party did so.

4. IP Australia subsequently wrote to the parties on 17 August 2017 confirming that since neither party had requested a hearing a Delegate of the Registrar would in due course decide the opposition based on the written record.  The letter further stated:

   IMPORTANT

   If you wish to file written submissions, you have 1 month from the date of this letter to file your submissions.  To ensure that a copy of the submissions is on file when the matter is assigned to a Delegate, please file the submission through online services.  Please also provide a copy of the written submissions to the other party at the same time as filing them with IP Australia.  This can be done through Objective Connect.

5. Only the Applicant responded to this invitation, with its attorneys filing submissions on 17 August 2017 (“the Submissions”).

6. The matter has now been allocated to me, as a Delegate of the Registrar of Trade Marks, to decide on the papers.  Given the parties have filed no evidence, my decision is necessarily based solely upon what is contained in the SGP and the Submissions.

Grounds of Opposition, Onus and Relevant Date

1. The grounds under ss 58, 59, 60 and 62A are particularised in the SGP as follows:

   Applicant not the owner of the trade mark - Section 58

   The [O]pponent has used the common law trade mark “Appleshack” in respect of alcoholic apple cider continuously since about 5 January 2016 (more than 5 months prior to the date of the opposed application). The [A]pplicant was aware of this use, as evidenced by the fact that it instructed its solicitors to write to the [O]pponent making an allegation of infringement which was, in all of the circumstances, a groundless threat for the purposes of s 129 of the Act. The [A]pplicant does not appear to have ever used “Shack” as a trade mark to distinguish its goods; rather, it has only used the composite trade mark “Sunshack”.

   Applicant not intending to use the trade mark - Section 59

   The [Applicant] appears to be a company registered in the British Virgin Islands.  The company does not appear to be known to ASIC (either as the holder of an ACN or an ARBN) and does not appear to be registered for GST.  Accordingly, it is not entitled to carry on business in Australia to any extent (including the use of trade marks).

   Trade mark is similar to a trade mark which has acquired a reputation in Australia - Section 60

   The [O]pponent has established a reputation in the common law trade mark “Appleshack” in respect of its alcoholic apple cider.  The first commercial use of the “Appleshack” mark was on 5 January 2016 (more than 5 months before the date of the present application) when cider was sold under that name at the Fire Station Hotel in Wallsend, New South Wales.  Subsequently, (and continuously since about that time) packaged “Appleshack” alcoholic apple cider has been sold through bottle shop chains including Dan Murphy’s, Australian Liquor Marketers, Independent Brands Australia, and independent liquor retailers.

   Application made in bad faith - Section 62A

   Solicitors acting for the [Applicant] wrote to the [O]pponent on 20 May 2016 asserting that the [O]pponent was infringing the [A]pplicant’s “Sunshack” trade mark. This assertion was untrue and was a groundless threat within the meaning of s 129 of the Act. Solicitors for the [O]pponent responded on 20 May 2016 noting, inter alia, that the [O]pponent was using “Appleshack” as a composite mark.  The present trade mark application was filed on 6 June 2016 (less than 3 weeks later), with the obvious inference being that it was filed in response to the failure of the [A]pplicant’s groundless threats to achieve their objective.

2. To succeed, the Opponent bears the onus of establishing at least one of these four grounds, with the relevant standard of proof required being the ordinary civil standard based on the balance of probabilities.[1]  The date at which the rights of the parties are to be determined is the 6 June 2016 filing date of the application.[2]

   [1] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26], affirmed by the Full Federal Court (Besanko, Jagot & Edelman JJ) in Telstra Corporation Limited v Phone Directories Company Pty Ltd (2015) 116 IPR 207 at [132]-[133].

   [2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 595.

Discussion

1. As mentioned, the Opponent has filed no evidence and accordingly there is nothing before me to corroborate any of the above quoted claims made in the SGP.  As the Submissions note, in such circumstances there is ample precedent indicating the Opponent has not discharged its onus of at least making out a prima facie case and thus that the Applicant has no case to answer.  In Medley Distilling Co v Croakers Gully Australia the Hearing Officer concerned put it this way: [3]

   [T]he mere filing of a notice of opposition containing a plethora of grounds which are unsupported by any evidence does not, in my view, effectively place the onus on an applicant to defend its application. In relation to this question, s 55 of the Act reads:

   [3] (2000) 53 IPR 430 at 433.

   55  Decision

   Unless the proceedings are discontinued or dismissed, 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.

   I believe that the words “having regard to the extent (if any) to which any ground on which the application was opposed has been established” make it clear that the onus is on the opponent to establish its grounds of opposition before there can be any onus on an applicant to refute it.  Here, the opponent has not served any evidence to support its grounds of opposition and the applicant has not served any evidence in answer to the opposition.  Therefore, I can only proceed to decide the matter on the facts before me and the relevant case law in relation to the grounds pursued.

2. As another Hearing Officer succinctly put it in Wal-Mart Stores Inc v Ozark-London Ltd:[4]

   If an opponent does not file any evidence in support of its opposition there is nothing for an applicant to respond to and that opposition should not be established (notwithstanding the fact that a notice has been served and filed).

   [4] (2004) 62 IPR 165 at 181. See also Australian Cricket Board v Lilyana Holdings Pty Ltd 57 IPR 110.

3. I accordingly find none of the four grounds listed in the SGP has been established.

Decision

1. Section 55(1) of the Act relevantly provides that, unless the proceedings are discontinued or dismissed:

   …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.

2. I have found the Opponent has not established any of the grounds raised in the SGP.  Application 1773724 may accordingly 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.

Costs

1. In the event of success, the Applicant’s attorneys sought costs on the Applicant’s behalf.  As the successful party, the Applicant is so entitled and I accordingly award costs against the Opponent as per Schedule 8 of the Regulations.

Michael Kirov
Hearing Officer
Oppositions and Hearings
15 May 2018