Opposition by David Craig and Cathy Lin to registration of trade mark application number 1999416 (class 33) – David Traeger AUSTRALIA (stylised) - in the name of David Traeger

[2021] ATMO 33

TRADE MARKS ACT 1995

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

Re:Opposition by David Craig and Cathy Lin to registration of trade mark application number 1999416 (class 33) – David Traeger AUSTRALIA (stylised) - in the name of David Traeger

Delegate:

Katrina Brown

Representation:

Opponent: Self-represented

Applicant: Davies Collison Cave Pty Ltd

Decision:

2021 ATMO 33

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds pursued under ss 58, 60 and 62A – none established – trade mark to proceed to registration

Background

1. This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) by David Craig and Cathy Lin (‘Opponents’) to registration of the following trade mark:

Trade Mark No: 1999416

Trade Mark:  

(‘Trade Mark’)

Applicant:  David Traeger

Filing Date:  5 April 2019

Goods:                Class 33: Alcoholic beverages containing wine

1. The trade mark application was examined as required by s 31 of the Act and its acceptance for possible registration was advertised in the Official Journal of Trade Marks on 6 September 2019.

2. The Opponents filed a Notice of Intention to Oppose on 4 October 2019 followed by a Statement of Grounds and Particulars (‘SGP’) on 4 November 2019. The SGP nominated grounds of opposition under ss 41, 43, 44, 58, 58A, 60 and 62A. The grounds under ss 41, 43, 44 and 58A were inadequately particularised. The Opponents were given the opportunity to rectify the inadequacies but did not do so. Consequently, the inadequately particularised grounds of opposition were deleted from the SGP pursuant to reg 5.8(3)(c) of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

3. The Applicant filed a Notice of Intention to Defend on 3 March 2020.

4. Neither party filed any evidence, nor did they request to be heard. On 27 November 2020, the Applicant requested that a decision be issued. 

5. I will now decide this matter as a delegate of the Registrar of Trade Marks. 

Grounds of opposition and onus

1. The rectified SGP nominates grounds of opposition under ss 58, 60 and 62A of the Act.

2. The Opponents bear the onus of establishing at least one of the grounds of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2]

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [32].

   [2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 [133].

3. The date at which the rights of the parties are to be determined is 5 April 2019 (‘relevant date’) being both the filing and priority date of the Trade Mark.

Section 58

1. Section 58 of the Act provides:

   The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

1. This ground of opposition is particularised in the SGP as follows:

   Weeping Elm Wines Pty Ltd (WEW) owns 100% David Traeger Wines Pty Ltd (DWT), which owned the trade mark of David Traeger Australia (no 773646) from September 1998 to September 2018. Due to change of office address and change of key personnel, we did not receive the renewal notice to renew the trade mark of David Traeger Australia (no 773646) on time in September 2018. We registered three different types of wines under trade mark no 773646 with Wine Australia and exported those wines overseas.

1. The Opponents are essentially asserting that the Applicant is not the owner of the Trade Mark because David Traeger Wines Pty Ltd had an earlier registration (trade mark number 773646) for ‘David Traeger Australia’ and used that trade mark in relation to wine.

2. Trade mark number 773646, which is identical to the Trade Mark, was removed from the Register of Trade Marks (‘Register’) before this opposition matter commenced. Rights granted under the Act through the registration of a trade mark are of a limited species. The rights conferred by registration only endure for the term of the registration.[3]  In the words of Delegate Williams, ‘the rights given by registration die with the registration’.[4] The rights that David Traeger Wines Pty Ltd had as the registered owner of trade mark number 773646 ended with the removal of that registration from the Register. Consequently, the mere fact David Traeger Wines Pty Ltd once had a registration for an identical mark which has now ceased, is not sufficient to establish this ground of opposition.[5]

   [3] Shell v Rohm and Haas (1947) 78 CLR 601, 631 (McTiernan J).

   [4] The Sunraysia Natural Beverage Company Pty Ltd v Ocean Spray Cranberries, Inc [1996] ATMO 53 [48].

   [5] Ibid; Britax Child-Care Products Pty Ltd v Takata Corporation [1999] ATMO 8; Americana International Limited v Suyen Corporation [2009] ATMO 86.

3. Nonetheless, the Opponents could establish the ground of opposition by demonstrating that they, or some other entity such as David Traeger Wines Pty Ltd, were the first users of the Trade Mark, or a substantially identical trade mark. However, in this matter the Opponents have not provided any documentary evidence to substantiate that they, or another entity, used trade mark number 773646, or any other trade mark.

4. Consequently, the ground of opposition under s 58 of the Act has not been established.

Section 60

1. Section 60 of the Act provides:

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

2. This ground of opposition is particularised in the SGP as follows:

   We have used trade mark no. 773646 (DAVID TRAEGER AUSTRALIA) to sell three different types of wines since 1999 in Australia and overseas. Our wines have been well accepted in China through our past five years efforts…

3. To establish this ground of opposition, the Opponents must demonstrate the existence of a reputation in another trade mark in Australia before the relevant date. Reputation cannot be assumed; it must be established as a matter of fact by the Opponent.[6]

   [6] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159 [77].

4. In this matter, the Opponents have asserted in the SGP that they have used DAVID TRAEGER AUSTRALIA since 1999 to sell wine in Australia and overseas. However, no documentary evidence has been provided to substantiate these assertions. In the absence of such evidence, the Opponents cannot demonstrate, as a matter of fact, the existence of a reputation in DAVID TRAEGER AUSTRALIA, or any other trade mark.

5. Consequently, the ground of opposition under s 60 of the Act has not been established.

Section 62A

1. Section 62A of the Act provides:

   The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

2. This ground of opposition is particularised in the SGP as follows:

   The Applicant would intend to steal our market shares and create confusion by copying our products using the same trade mark to cause business losses to our companies and our business partners.

3. In Hard Coffee Pty Limited v Hard Coffee Main Beach Pty Limited, the Registrar’s delegate stated:

   The onus of demonstrating ‘bad faith’ falls squarely on the party making such an allegation with the need for evidence able to fulfil the degree of proof required to satisfy the civil standard of ‘balance of probabilities’. That said, the allegation of ‘bad faith’ is a very serious one and a finding of bad faith should not be taken lightly. [7]

   [7] [2009] ATMO 26 [12].

4. In this matter, the Opponents have not filed any evidence and as such I cannot be satisfied that the trade mark application was made in bad faith.

5. Accordingly, the ground of opposition under s 62A of the Act has not been established.

Decision

1. Section 55 of the Act relevantly provides:

   (1) Unless subsection (3) applies to the proceedings, 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.

2. The Opponents have not established a ground of opposition.

3. Accordingly, trade mark application number 1999416 may proceed to registration one month from the date of this decision.

4. If the Registrar is 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 application should otherwise be in accordance with the Court’s order or direction.

Costs

1. The parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle. I award costs against the Opponent according to the official scale set out in Schedule 8 of the Regulations.

Katrina Brown

Hearing Officer

Delegate of the Registrar of Trade Marks

29 April 2021