Opposition by AMS GROUP 1 PTY LIMITED and AMS GROUP 2 PTY LIMITED to registration of trade mark application 1942896 (20) – DART – in the name of Krost Business Furniture Centre Pty Ltd

[2021] ATMO 131

TRADE MARKS ACT 1995

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

Re:Opposition by AMS GROUP 1 PTY LIMITED and AMS GROUP 2 PTY LIMITED to registration of trade mark application 1942896 (20) – DART – in the name of Krost Business Furniture Centre Pty Ltd

Delegate:	Nicholas Smith
Representation:	Opponent: Self-Represented Applicant: UX Law
Decision:	2021 ATMO 131 Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b), 44, 58, 58A, 60 and 62A considered – none established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by AMS GROUP 1 PTY LIMITED and AMS GROUP 2 PTY LIMITED (together ‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of Krost Business Furniture Centre Pty Ltd (‘Applicant’): 

Application Number:	1942896
Filing Date:	23 July 2018
Goods:	Class 20: Coffee tables; Work tables; Conference tables; Tables (‘Applicant’s Goods’)
Trade Mark:	DART	(‘Trade Mark’)
Endorsements	Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.

1. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

2. Following the advertisement of the application’s acceptance for possible registration in the Australian Official Journal of Trade Marks, the Opponent filed a Notice of Intention to Oppose the registration on 16 March 2020 followed by a Statement of Grounds and Particulars (subsequently amended by this office) on 16 April 2020 (‘SGP’).  The SGP raised grounds of opposition under ss 42(b), 44, 58, 58A, 60 and 62A.  The Applicant filed a Notice of Intention to Defend on 29 August 2020. 

   Evidence

3. The Opponent did not file any evidence in support of its opposition or in reply.

4. The Applicant filed the following evidence in answer:

   ·Declaration made on 6 January 2020 by Tyron Krost, Director the Applicant, with Annexures A to I in what is described as the Annexure bundle (‘Krost declaration’).  This appears to be the same evidence filed with IP Australia as part of the examination process being a declaration of prior use for the purpose of s 44.

5. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing.  The Applicant requested that the matter proceed to a decision without hearing and paid the appropriate fee.  As a result the matter has been allocated to a delegate of the Registrar for a decision based on the written record.

6. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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. 

   In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.

   The Parties

7. The Opponent has not filed any evidence in this matter but in its SGP indicates that it is the owner of the trade mark listed below (‘Opponent’s Trade Mark’).   

Number	Trade Mark	Priority Date	Goods or Services
1739954	DART	8 Dec 2015	Class 20: Furniture; office furniture; parts, fittings and accessories for furniture being goods of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics; none of the aforementioned goods being domestic utensils or containers

1. The Applicant is an Australian company involved in the manufacture and supply of furniture.  I discuss the Applicant’s evidence in more detail under the s 44 ground below.

   Grounds of Opposition, Onus and Standard of Proof

2. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42(b)[1], 44, 58, 58A, 60 and 62A.  To successfully oppose the application the Opponent needs to establish one of the nominated grounds.

   [1] The s 42(b) ground of opposition is pursued on the basis that use of the Trade Mark would be contrary to law as it would breach s 18 of the Australian Consumer Law.

3. The onus of proof in an opposition rests upon the Opponent.[2]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3]  The date at which the rights of the parties are to be determined is the filing date 23 July 2018 (‘relevant date’), which is also the priority date for the purposes of ss 44 and 60.[4]

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [3] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J), see also s 29(1) Trade Marks Act 1995 (Cth).

4. As the Opponent has filed no evidence and provided no submissions, I have no hesitation deciding that the Opponent has not discharged the onus on it with respect to any of the grounds of opposition save the s 44 ground since these grounds are particularised by reference to the Opponent’s use of (and Applicant’s awareness of the use) and reputation in the Opponent’s Trade Mark.  It remains necessary to consider the ground of opposition under s 44.

   Discussion

   Section 44

5. The relevant provisions are reproduced below:

   Section 44 - Identical 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)it 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.

   Note 1: For deceptively similar see section 10.
   Note 2: For similar goods see subsection 14(1).

   (2)…

   (3)If the Registrar in either case is satisfied:

   (a)that there has been honest concurrent use of the 2 trade marks; or

   (b)that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

   Note:  For limitations see section 6.

   (4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

   (a)beginning before the priority date for the registration of the other trade mark in respect of:

   (i)            the similar goods or closely related services; or

   (ii)           the similar services or closely related goods; and

   (b)ending on the priority date for the registration of the applicant's trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

   Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
   Note 2: For predecessor in title see section 6.
   Note 3: For priority date see section 12.

   Section 10 - Definition of deceptively similar

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

6. To successfully oppose the application pursuant to s 44 the Opponent must establish the requirements of s 44(1), i.e. that the trade mark upon which it relies, being a trade mark registered by a person other than the Applicant:

   ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

   ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

   ·     is in respect of similar goods, and/or services which are closely related to, the Applicant’s Goods (‘the third requirement’).

7. In the event that each of these requirements is satisfied by the Opponent it may still be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4), that there has been honest concurrent use of the Trade Mark, other circumstances which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark.

8. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Mark.  The Opponent’s Trade Mark has an earlier priority date than the priority date of the Trade Mark, is substantially identical to the Trade Mark and is registered for similar goods, since the Opponent’s Trade Mark is registered for furniture which incorporates the Applicant’s Goods.  Each of the three requirements for s 44(1) are satisfied and it is necessary to consider whether the Trade Mark may proceed to registration pursuant to ss 44(3) and 44(4).

   Subsection 44(4): prior continuous use

9. Subsection 44(4) gives the Applicant the option of overcoming a finding under s 44(1) through the provision of evidence showing that it continuously used the Trade Mark for a period beginning before the priority date for the registration of the Opponent’s Trade Mark in respect of the similar goods.

10. The priority date for the registration of the Opponent’s Trade Mark is 8 December 2015.  I have reviewed the Krost Declaration, noting that its claims are not contradicted by any other evidence and I consider that it establishes that the Applicant commenced use of the Trade Mark in late 2012 in relation to a range of tables (which comprise the Applicant’s Goods).  This is supported by a large number of dated invoices prior to 8 December 2015 that refer to sale of table and table parts by the Applicant under the Trade Mark.  These invoices continue after December 2015 establishing that the use of the Trade Mark by the Applicant for the Applicant’s Goods has been continuous.

11. The Krost Declaration also contains examples of the Applicant’s use of the Trade Mark as a badge of origin for its tables in its catalogues released between 2013 and 2018 and in third party publications.  The Applicant also sets out its revenue for tables sold under the Trade Mark which is not insignificant. Finally the Applicant also includes invoices for the production of its catalogues which indicate a significant production run for each of the catalogues released between 2013 and 2018

12. As I am satisfied that the provisions of s 44(4) have been established by the evidence supplied by the Applicant, I find that the ground of opposition under s 44 has not been established.

    Decision and Costs

13. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application number 1942896 may proceed to registration not less than one month from the date of this decision.  If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

14. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

    Nicholas Smith
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    1 November 2021