Nitro AG v Nitro Circus IP Holdings LP

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TRADE MARKS ACT 1995

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

ReOpposition by Nitro AG to extension of protection of International Registration 1320940 (Australian trade mark application 1813094) – NITRO CIRCUS – held by Nitro Circus IP Holdings LP

AND

Oppositions by Nitro AG to Australian trade mark applications 1684786 and 1684787 – NITRO CIRCUS – in the name of Nitro Circus IP Holdings LP

Delegate:                 Debrett Lyons

Representation:       Opponent: written representations only by AJ Park Law

Applicant: Wayne Covell of Worthy of the Name Pty Ltd

Decision:                   2019 ATMO 123

Trade Marks Act 1995 (Cth): Section 52 and Regulation 17A.33 oppositions: ss 42(b), 44, 58 and 60 of the Act considered – none established. Oppositions unsuccessful.

Background

  1. Nitro AG (‘NAG’), owner of the trade mark NITRO, has brought three oppositions under the Trade Marks Act 1995 (‘Act’) to registration and protection in Australia of NITRO CIRCUS (‘Trade Mark’) by Nitro Circus IP Holdings LP (‘NC’). 

  2. Two of the oppositions have been brought against Australian national trade mark applications and one against extension of protection to Australia of an existing International Registration (‘IRDA’).  The Trade Marks Regulations 1995 (‘Regulations’) control the application of the Act to the IRDA but for the purposes of these oppositions, Part V of the Act has common application[1] and I refer to the Regulations only where the IRDA should be treated differently.

    [1] See Reg. 17A.28

  3. NAG is the owner of the Australian trade mark registrations detailed below:

Regn. No.

Trade Mark

              Specification

Priority Date

559276

NITRO

Class 28: Skiing apparatus and equipment, including snow skies (sic) and snow boards.

21 Feb 1991

559277

NITRO

Class 25: Sporting clothing and all other goods in this class excluding motorcycle clothing, motorcycling footwear and motorcycling headgear.

21 Feb 1991

  1. Details of the IRDA, and then of NC’s national applications as examined and advertised for acceptance in the Australian Official Journal of Trade Marks[2], are set out below:

    [2] Application 1684786 was accepted on 17 July 2015 and advertised in the Australian Official Journal of Trade Marks on 20 August 2015. Application 1684787 was accepted on 4 July 2015 and advertised on 20 August 2015. Application 1813094 was accepted on 4 January 2017 and advertised on 12 January 2017.

    Application No:           1813094  (the IRDA)

    Int’l Regn:                   1320940

    Priority Date:               26 February 2016 (Convention)

    Filing Date:                  25 August 2016

    Goods:Class 28: Skateboards; ramps and jumps for skateboarding, inline skating, and BMX freestyle biking; pogo sticks

    Trade Mark:                 NITRO CIRCUS

    Application No:           1684786

    Priority Date:               1 April 2015

    Goods & Services:       Class 3: Temporary tattoo transfers; perfumery; cosmetics

    Class 5: First aid kits; adhesive bandages; nutritional supplement energy bars

    Class 18: Back packs; sport bags; handbags; purses; travel bags; duffel bags; tote bags; garment bags; luggage; umbrellas; messenger bags

    Class 21: Cups and mugs; drinking glasses; paper plates; lunch boxes; thermal insulated containers for food or beverages

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Details
Case
[2019] ATMO 123
Decision Date

CaseChat Overview and Summary

This matter concerned oppositions filed by Nitro AG ("NAG") against three trade mark applications by Nitro Circus IP Holdings LP ("NC"). NAG sought to oppose NC's applications for the trade mark NITRO CIRCUS on the basis of its own registered trade marks for the mark NITRO, arguing that NC's proposed marks were substantially identical or deceptively similar to its own registered marks and covered similar goods. The proceedings were heard by Debrett Lyons, Hearing Officer.

The primary legal issue before the court was whether NC's trade mark applications should be rejected under section 44 of the *Trade Marks Act 1995* (Cth). This required determining whether NC's goods were similar to the goods covered by NAG's prior registrations and whether the respective trade marks were substantially identical or deceptively similar. Additionally, the court considered grounds of opposition under section 42(b) of the Act, which relates to use contrary to law.

The Hearing Officer found that NAG bore the onus of proof, and the standard of proof was the ordinary civil standard on the balance of probabilities. Regarding section 44, the Hearing Officer examined the specifications of goods for both parties. NAG's registrations covered sporting clothing, footwear, headgear, and skiing apparatus and equipment, including snowboards. NC's applications covered goods such as toys and sporting equipment, including items like in-line skates, wakeboards, surfboards, and skateboards, as well as clothing. The Hearing Officer concluded that the goods were similar, and the trade marks were deceptively similar, but ultimately found that NAG had not established a ground of opposition under section 42(b).

Consequently, the Hearing Officer decided to extend protection for NC's International Registration Designating Australia ("IRDA") and allowed NC's national applications to proceed to registration, subject to any appeal. Costs were awarded in favour of NC, with reduced costs awarded in respect of two of the applications.

Orders

Orders of the court

Full text does not contain this section.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

The onus of proof rests upon NAG.[4] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[5] The date at which the rights of the parties are to be determined is generally the filing date of the applications except in respect of those grounds – ss 44 and 60 – which speak of a priority date. That date is 1 April 2015 for applications 1684786 and 1684787 and 26 February 2016 for application 1813094. Although the dates are separated by ten months nothing in my decision turns on that fact in this case.[4] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].[5] Per Gyles J in Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26].The evidence In deciding this matter I have considered the parties’ submissions and their evidence. NAG’s material evidence in support of its oppositions consists of the following declarations:·Thomas Delago made 30 March 2017 with Exhibits JA-1 to JA-19 (‘Delago’). Mr Delago is the co-founder and President of the Opponent. ·Mark William Bristow made 26 April 2017 (‘Bristow’). Mr Bristow is a Director of Blacklight Distribution Pty Ltd, NAG’s current Australian and New Zealand distributor. NC’s evidence in answer consists of the following declarations:·Wayne Covell made 18 July 2017 with Annexures WC-1 to WC-4 (‘Covell’). As stated, Mr Covell was NC’s representative at the hearing and is a principal of the business acting for NC in the present oppositions. ·Andrew James Edwards made on 31 July 2017 with Annexures AJE-1 to AJE-14 (‘Edwards’). Mr Edwards is the President of NC.Discussion and Reasoning NAG describes itself as a “snowboard and action sports brand”[6]. It claims to have first used the NITRO mark in Switzerland in 1990 and continuously in Australia since 1995[7]. It sells its goods in Australia through distributors and since 2014 that distributor has been Blacklight Distribution Pty Ltd. Delgardo declares that since 1995 NAG has sold snowboards, bindings, boots, outerwear, apparel, beanies, caps, bags and accessories bearing the “NITRO name and/or logo”[8]. NAG claims approximately 15% of the Australian[9] market share in snowboards, bindings and boots[10]. [6] Delago [5].[7] Id. [6,7].[8] Id. [14,15].[9] This is not explicit and is discussed later.[10] Delago [20]. NC is the promoter of a televised motocross bike show, together with live event tours showcasing motocross bike riding. The evidence, examined later, shows that the first Australian tour was during 2010 and that both in Australia and overseas the shows have met with enormous popularity. I turn then to the grounds of opposition which I have examined in the order they are presented in NAG’s written submissions.Section 44 Section 44 of the Act provides, relevantly:44Identical etc. trade marks(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if: (a) the applicant’s trade mark is substantially identical with, or deceptively similar to: (i) a trade mark registered by another person in respect of similar goods or closely related services; or (ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and (b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

Decision

Reasons for decision

I have taken those arguments into account. In the same way that the state of the Register was not, of itself, a conclusive factor in my consideration of s 44, so too it was not so singularly important as to cause me to think that the lack of that evidence was essential to my findings on s 42(b). Likewise, however NAG may have particularised it s 42(b) claim, the conclusions already reached in paragraphs 59 and 60 above are dispositive of the ground of opposition. I am not satisfied that use of the Trade Mark would be contrary to law and accordingly NAG has failed to establish this ground of opposition.Decision My decision is governed in the following ways. In respect of the IRDA, reg 17A.34N of the Regulations relevantly provides that, the Registrar must decide:(a)to refuse protection in respect of all the goods or services listed in the IRDA; or(b)To extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established. In respect of NC’s national applications, s 55 of the Act similarly provides that the Registrar must 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. The Opponent has not established a ground of opposition in any of the three cases. I find that the national applications may 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 and the disposition of the applications should be in accordance with the court’s order or direction. As to the IRDA, as the delegate of the Registrar I extend protection of the Holder’s Trade Mark to Australia and in accordance with reg 17A.34N(2) the International Bureau will be notified of this decision.Costs NC has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event and so I award costs in respect of trade mark number 1813094 against NAG under s 221 of the Act in line with the amounts in Schedule 8 of the Regulations. In respect of trade mark numbers 1684786 and 1684787, I award reduced costs against NAG in the same manner as indicated in Hume Industries (Malaysia) Berhard v James Hardie & Coy Pty Ltd.[46] [46] [2001] ATMO 78.Debrett LyonsHearing OfficerTrade Mark and Designs Hearings16 August 2019

Ratio Decidendi

Legal Principle Established

NAG reiterates that the s 44 ground of opposition relates to class 25 of application 1684786, class 28 of application 1684787, and all goods covered by application 1813094 (being class 28 goods). It relies on its registrations 559276 and 559277 for NITRO (‘the Registrations’), both of which have a priority date of 21 February 1991, earlier than the priority dates of the IRDA and the national applications. The Registrations cover class 25 and 28 goods and so s 44(1) requires me to decide (i) whether NC’s class 25 and class 28 goods are similar to the goods covered by the Registrations, and (ii) whether NITRO CIRCUS is substantially identical or deceptively similar to NITRO. The expression “similar goods” is defined in s 14(1) of the Act as goods that are the same as other goods or of the same description as that of other goods. NAG’s submissions are that:Class 25 [NAG’s] registration 559277 covers sporting clothing and all other goods in class 25, with limited exclusions. It is well established that under s 44(1) any notional or actual use which the scope of the prior registration allows may be relevant. It is the statutory rights of use of both parties that are to be compared, rather than the actual modes of use. Accordingly, registration 559277 must be taken to include all clothing, footwear and headgear in class 25, including [NC’s] class 25 goods (none of which fall within the limited exclusions of registration 559277).[NC’s] class 25 goods are therefore the same as, or similar to, the class 25 goods covered by registration 559277.Class 28[NAG’s] registration 559276 covers skiing apparatus and equipment, including snow skies (sic) and snow boards. [NC’s] class 28 goods broadly cover toys and sporting equipment. Notional use of these goods would encompass skiing apparatus and equipment by virtue of at least ‘sporting articles.’The nature and use of the [the parties’] class 28 goods are similar, particularly [NC’s] ‘in-line skates; wakeboards; toy scooters; surfboards; water skis; playthings; gymnastic articles; sporting articles; skateboards; ramps and jumps for skateboarding, in-line skating, and BMX freestyle biking; pogo sticks’. These goods and [NAG’s] class 28 goods are all sporting apparatus and equipment and are likely to be sold and bought through the same or similar trade channels. It is a curiosity of the evidence, not explained anywhere in submissions, that the clothing excluded from registration 559277 is the clothing most closely linked to the nature of NC’s entertainment business. I have examined the official records of registration 559277 and could see no evidence that NC or anyone else had brought part cancellation proceedings against registration 559277 and so the exclusion remains unexplained. In any event, what is not excluded from registration 559277 directly overlaps with much of NC’s class 25 specification and I find that the goods are similar. Another point of interest is that NC already holds an Australian registration for a quasi-identical trade mark, NITRO-CIRCUS, the details of which are set out below[11]:[11] Indeed, it also owns registration 1333845 for NITRO CIRCUS LIVE with a priority date of 26 November 2009 covering entertainment and sports events including snowboarding, skateboarding, skiing and surfing. Registration No: 1227672 Priority date: 3 March 2008Goods and Services: Class 9: Downloadable films provided via video-on-demand, prerecorded digital video disks, prerecorded compact disks, pre-recorded CD's, video tapes, laser disks and DVD's all featuring action sports and events for on and off road car and truck racing, motorcross, supercross, racing, skydiving, cliff jumping, cliff diving, snowboarding, bmx, skateboading, skiing, surfing, wakeboarding, and other sportsClass 25: Clothing namely, shirts, T-shirts, hooded sweatshirts, sweatshirts, jackets, sweaters, jerseys, beanies, gloves, pants, caps, hats, tanktops, visors, and wrist bandsClass 41: Entertainment services, in the nature of organising, performing and competing in action sporting events, namely, on and off road car and truck racing, motorcross, supercross, racing, skydiving, cliff jumping, cliff diving, snowboarding, bmx, skateboarding, skiing, surfing, wakeboarding competitions and events; film distribution and editing; motion picture film production; production of video disks