Omega SA v Jean-Claude Gillet - [2010] ATMO 74

TRADE MARKS ACT 1995

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

Re:Opposition by Omega SA to protection of international registration designating Australia 1205071(8, 9, 14, 28) (International Registration No 938182) - SEAMAXX - filed in the name of Jean-Claude Gillett.

Delegate:

Alison Windsor

Representation:

Opponent: Peter Hallett of Watermark patent and trade mark attorneys

Applicant: Not represented

Decision:

2010 ATMO 74

Reg 17A.29 opposition: Grounds of opposition pursued under ss 44, 60, 39, 42, 43 and reg 17A.31(4) – no grounds established – IRDA to proceed to protection – costs awarded against opponent.

Background

Jean-Claude Gillet, of Porto-Vecchio, France (“the Holder”) requested protection in Australia for the following international registration designating Australia (“IRDA”):

Application Number	1205071
Filing date	20 August 2007
Convention priority	22 February 2007 (France)
Goods	Class: 8 Side arms (other than fire-arms) Class: 9 Scientific (other than medical), nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; spectacles (optics); optical goods Class: 14 Horological and chronometric instruments Class: 28 Fishing tackle
Trade mark
Acceptance advertised:	29 November 2007

Notice of opposition to the protection of an IRDA is governed by the provisions of regulation 17A.29 of the Trade Mark Regulations 1995 (“the Regulations”).
On 22 May 2008 Omega SA[1] (“Omega” or “the Opponent”) filed a notice of opposition (“the Notice”) citing all the grounds of opposition allowed for by the Trade Marks Act 1995 (“the Act”).
[1] Omega SA is also referred to on the application form as Omega AG and Omega Ltd. All the references are to the same entity.
The parties served and filed evidence in support and in answer as provided for by Trade Mark Regulations 1995 (“the Regulations”), the Holder having nominated FB Rice and Co as its address for service in Australia. The Opponent advised that it did not intend to provide any evidence in reply. Following this advice, the Holder’s legal representative advised that the Holder would not be requesting a hearing, nor would he be represented in the event a hearing was held.
The Opponent requested a hearing and, as a delegate of the Registrar of Trade Marks, I heard submissions from Peter Hallett of Watermark Patent and Trade Mark Attorneys, representing the Opponent, by telephone in Melbourne on 8 June 2010. The Holder, meanwhile, had provided brief written submissions a few days earlier.

Grounds of opposition pursued

Despite having nominated all possible grounds of opposition in the Notice, at the hearing the Opponent gave brief submissions in respect only of the grounds relating to sections 39, 42, 43, 44, 60 and 62 of the Act. For completeness I decide that all other grounds of opposition mentioned on the Notice have not been established.
The Opponent noted in its submissions that the registration was only opposed in respect of “class 14, and class 9 to the extent that it relates to apparatus and instruments that measure time or determine longitude at sea, or precious metals and their alloys…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2010] ATMO 74
Decision Date: 11 August 2010

CaseChat Overview and Summary

Omega SA, the opponent, sought to oppose the registration of an international trademark application (No. 938182) by Jean-Claude Gillet, the holder. The dispute concerned the extent to which the grounds of opposition pursued by Omega SA had been established. The decision was made by the Registrar.

The primary legal issue before the Registrar was to determine whether any of the grounds of opposition advanced by Omega SA had been established, and consequently, whether to refuse protection for the trademark application, extend protection, or allow it to proceed. The Registrar was required to apply Regulation 17A.34 of the relevant regulations, which outlines the Registrar's obligations in deciding opposition proceedings.

The Registrar reasoned that Omega SA had failed to establish any of the grounds of opposition it had pursued. Accordingly, the Registrar decided that the trademark application could proceed to protection. The Registrar also ordered that Omega SA pay Jean-Claude Gillet's costs, to be taxed according to the official scale. The decision stipulated that protection would not proceed if an appeal was lodged within one month, pending the outcome of any such appeal.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

Regulation 17A.34 provides:Decision on opposition(1) Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide: (a) to refuse protection in respect of all of 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 any ground on which the IRDA was opposed has been established. (2) The Registrar must tell the International Bureau of his or her decision. The opponent has not established any of the grounds of opposition which it pursued. Therefore trade mark application 1205071 (International Registration No. 938182) may proceed to protection after one month from the date of this decision. If the Registrar is notified of an appeal before that time, the IRDA shall not proceed to protection until such time as the appeal is discontinued, or in the event of a direction by the court, the IRDA shall be subject to those directions. The Holder has requested his costs and is so entitled. I award costs against the Opponent according to the official scale.

Ratio Decidendi

Legal Principle Established

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