Next Retail Limited v Elektroteknik Sanayi Ve Ticaret Limited Sirketi

[2010] ATMO 16

TRADE MARKS ACT 1995

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

Re:Opposition by Next Retail Limited to registration of trade mark application 1103738 (9 & 11) (International Registration Designating Australia No 815899) - NEXT STAR & device - filed in the name of Yuksel Elektroteknik Sanayi ve Ticaret Limited Sirketi.

Delegate:

Jock McDonagh

Representation:

Opponent: Benjamin Fitzpatrick of counsel instructed by Griffith Hack Patent & Trade Mark Attorneys

Applicant: Not represented

Decision:

2010 ATMO 16

Reg 17A.29 opposition: Section 59 ground established – no intention to use the trade mark within Australia – protection refused. Costs awarded against holder.

Background

1. Yuksel Elektroteknik Sanayi ve Ticaret Limited Sirketi, a company based in Turkey (“the holder”) requested protection in Australia for the following international registration designating Australia (“IRDA”):

Application number:  1103738

Priority date:  6 September 2005

Advertised accepted:                    16 March 2006

Goods:Class 9: Weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound and images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes

Trade Mark:  

1. Section 189A of the Trade Marks Act 1995 (“the Act”) governs the consideration of IRDAs.  This section makes provisions for the regulations to “provide for such matters as are necessary to enable the performance of the obligations of Australia, or to obtain for Australia any advantage or benefit, under the Madrid Protocol.”

2. Notice of opposition to the protection of an IRDA is governed by the provisions of regulation 17A.29 of the Trade Marks Regulations 1995 (“the regulations”).

3. On 4 February 2008, Next Retail Limited, a company based in the United Kingdom, (“the opponent”) filed a Notice of Opposition (“the notice”).  On 13 February 2008, IP Australia wrote to the World Intellectual Property Organisation, advising about the opposition and the need for the holder to provide an address for service in Australia.

4. After requesting and being granted an extension of time for the purpose, the opponent filed its evidence in support of the opposition on 25 February 2009. 

5. IP Australia then wrote directly to the holder at its address of record in Turkey advising it of the date by which its evidence in answer was due, and reminding it of the requirement to nominate an address for service in Australia before it could take part in the opposition process.[1]  The holder did not respond within the allowed time, and no evidence in answer was filed.  The holder has not to date provided an address for service in Australia.

   [1] See subregulation 17A.33(3)

6. The opponent requested to be heard and the matter came before me, as a delegate of the Registrar, in Melbourne on 24 November 2009.  Benjamin Fitzpatrick of counsel, instructed by Griffith Hack, Patent and Trade Mark Attorneys represented the opponent.  The holder was not represented and filed no written submissions in support of its trade mark application.

Notice of opposition, grounds of opposition pursued and onus

1. The notice canvassed most of the grounds of opposition allowable under the Act. These grounds are applicable to IRDA by virtue of regulation 17A.31(3). However, at the hearing, Mr Fitzpatrick advised that the opponent would only be pursuing grounds under the provisions of sections 59 and 60 of the Act. For completeness, I note that none of the other grounds claimed on the notice have been established.

2. It is well known that the onus of establishing any ground of opposition rests with the opponent.  The ground need only be established on the balance of probabilities.

Evidence and submissions

Evidence in support

1. The opponent’s evidence in support consists of a declaration of Sarah Louise Noble, Company Secretary of the opponent, made on 3 February 2009.

2. The opponent also relied upon correspondence addressed directly to the holder in Turkey dated 4 July 2009, putting the holder on notice that the opponent would assert a lack of intention to use the trade mark in Australia. A copy of this correspondence was filed with this office under cover of a letter dated 6 July 2009.

3. The opponent also sought leave to adduce further evidence in support, being a declaration by Sally Shrimpton dated 23 November 2009. The declaration provides evidence of a number of on-line searches that appears to support the contention that the holder does not have a commercial presence in Australia, and none of its goods are available for purchase in Australia either by internet or traditional retail or wholesale means.

4. In opposition proceedings other than IRDA, the Regulations require service of evidence on opposing parties and a reasonable opportunity for such parties to make representations before a delegate may allow the introduction of further evidence. However, in IRDA proceedings Regulation 17A.33(3) does away with the requirements to serve a document on the holder or to give the holder an opportunity to make written representations or to be heard until the holder has notified, in writing, the Registrar of the holder’s address for service in Australia.

5. The evidence sought to be adduced is relevant to the section 59 ground of opposition. Therefore I allow the evidence and shall take it into account in these proceedings.

Discussion

1. At the hearing the opponent pursued grounds of opposition under sections 59 and 60 of the Act. It is my opinion that the ground under section 59 has been established, thereby establishing the opposition. My reasons for this opinion follow.

2. Section 59 of the Act reads as follows:

Applicant not intending to use trade mark

59. The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.

Note:  For applicant see section 6.

1. As submitted by the opponent, it is generally acknowledged that filing an application to register a trade mark is prima facie evidence of an intent to use it in respect of the goods and services nominated, at least at the time the application was filed:  Aston v Harlee Manufacturing Co (1960) 103 CLR 391 at 401.

2. The opponent further submitted that section 59, however, refers to a continuing or current intention to use the trade mark. This matter was noted by the delegate in Sapient Australia Pty Ltd and Sapient Corporation v SAP AG [2002] 55 IPR 68 as follows:

   This ground is also one where an applicant's intention to use is relevant. However, it is a ground written in the present tense and looks at the present state of the intention of the applicant. ... Thus, section 59 deals with current defects in intention to use, interlocking with s 58, under which the intention and facts at the time of filing are the relevant elements.

3. Since the opponent has provided evidence that enables me to infer a lack of intention to use, the onus of establishing its intention to use the trade mark shifts to the holder.  Jacobson J, in Health World Ltd v Shin-Sun Australia Pty Ltd and Others (2008) 75 IPR 478 stated:

   However, there is authority for the proposition that where an applicant for registration has been put on notice that its intention to use the mark was in issue, and has not responded to the opponent’s evidence, a finding of lack of intention may be made: Philip Morris Products SA v Sean Ngu [2002] ATMO 96; Tommy Hilfiger Licensing Inc v Tan (2002) 60 IPR 137; Shanahan at [11.110].

   The principle which underlies these authorities seems to me to be that the evidentiary onus shifts to the applicant for registration where an opponent makes a prima facie case of lack of intention to use the mark.

4. Mr Fitzpatrick submitted that it follows that the evidentiary onus shifts to the applicant for registration where an opponent makes a prima facie case of lack of intention to use the mark: Cadbury Limited v Cream & Dream s.r.o. (2008) 78 IPR 401.

5. I consider I am able to infer a lack of intention to use from the evidence provided by the opponent’s Shrimpton declaration and from the Trade Marks Office file. The opponent has attempted to contact the holder directly in order to advise it of the basis of the opposition and its intention to rely on the section 59 ground. IP Australia has likewise attempted to ensure the holder has had every chance to take part in these proceedings. Neither IP Australia nor the opponent has elicited any response from the holder. It should be noted that these elements would not be determinative by themselves, but taken in combination are sufficient to satisfy me.

6. I am therefore satisfied that, whatever its original intentions may have been, the holder has no current intention to use its trade mark in Australia. I find the ground of opposition under the provisions of section 59 has been established. The opponent is thus successful in its opposition, and there is no requirement for me to consider the ground pursued under section 60.

Decision and Costs

1. The opponent having established the ground of opposition under section 59, I refuse to extend protection to Australian trade mark application 1103738 (IRDA No 815899) for all goods listed in this IRDA. The International Bureau will be notified of this decision as soon as practicable after the appeal period has ended, in accordance with regulation 17A.34 (2).

2. The opponent sought its costs.  As a general rule, costs follow the event; therefore,  I award costs against the holder according to the official scale.

Jock McDonagh

Hearing Officer

24 February 2010