Nani Babu Pty Ltd v Nautanki Pty Ltd
[2023] ATMO 133
•7 September 2023
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Nautanki Pty Ltd to registration of trade mark application number 2107092 (class 43) - CHULHO (composite) - in the name of Nani Babu Pty Ltd
Delegate:
Benjamin Goldsworthy
Representation:
Opponent: None
Applicant: Baxter IP
Decision:
2023 ATMO 133
Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 44, 58, 58A, 60, 42(b), 62A and 62(b) – no grounds established – costs follow.
Background
Trade mark application number 2107092 in the name of Nani Babu Pty Ltd (‘Applicant’) for class 43 services was accepted with the provisions of s 44(4) of the Trade Marks Act 1995 (Cth)[1] applied. Acceptance was advertised on 9 July 2021. It was opposed by Nautanki Pty Ltd (‘Opponent’). Following the usual opposition process, the Applicant requested a decision without a hearing.
[1] Unless specified otherwise, a reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth).
The Opponent asserts grounds of opposition under ss 42(b), 44, 58, 58A, 60, 62(b) and 62A in its Statement of Grounds and Particulars (‘SGP’). The onus to prove one of the grounds of opposition[2] is squarely on the Opponent, however it filed no evidence in this matter.
Consideration
[2] Trade Marks Act 1995 (Cth) (‘Act’), s 55; Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, [152]-[156] (Greenwood, Besanko and Katzman JJ).
Section 44
For the s 44 ground of opposition the Opponent relies upon earlier trade mark application 2090264 for CHULHO and registered trade mark 2090274 reproduced below, both being for class 43 restaurant services (‘Earlier Trade Marks’).
Had the Earlier Trade Marks been registered or pending I would have been required to make an assessment under s 44. However, as 2090264 has lapsed and 2090274 has been removed they pose no basis for a ground of opposition under s 44. The s 44 ground of opposition fails.
Sections 42(b), 58, 58A, 60, 62(b) and 62A
What is required to establish a ground of opposition depends on the circumstances and evidence at hand, and how the parties have argued the grounds. That said, grounds of opposition are rarely self-supporting. Most grounds carry with them the practical necessity that they require evidence to be established. The SGP particularises s 42(b) in respect of reputation in another trade mark and or copyright infringement, both of which would certainly require supporting evidence. Grounds of opposition under ss 58, 58A, 60, 62(b) and 62A would I think always require evidence to be established. The absence of evidence is fatal to all of these grounds of opposition.[3]
[3] See for example, Emark Analytics APAC Pty Ltd v Martin Kostic [2023] ATMO 107 (Hearing Officer K Brown); A Local Group Pty Ltd v Regan Long and Sarah Fenson [2023] ATMO 91 (Hearing Officer Makrigiorgos); and Adam Vella v Matrix Property Group Pty Ltd [2023] ATMO 84 (Hearing Officer Smith).
Decision and costs
There is nothing before me that satisfies me on the balance of probabilities that a ground of opposition is established.[4] The opposition fails and trade mark 2107092 should proceed to registration one month from this decision subject to the usual appeal period.
[4] Act, s 33.
The Applicant sought its costs. The usual rule is for costs to follow the event. I award costs against the Opponent in accordance with s 221, in the amounts specified in the Trade Marks Regulations 1995 (Cth).
Benjamin Goldsworthy
Hearing Officer
Delegate of the Registrar of Trade Marks
7 September 2023
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