Opposition by Efficient Homes and Construction Pty Ltd to registration of trade mark application 1895281 (3) – BUBBLE BOY – in the name of Bubble Boy Enterprises Pty Ltd

[2020] ATMO 151

TRADE MARKS ACT 1995

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

Re:Opposition by Efficient Homes and Construction Pty Ltd to registration of trade mark application 1895281 (3) – BUBBLE BOY – in the name of Bubble Boy Enterprises Pty Ltd

Delegate:	Nicholas Smith
Representation:	Opponent: Trade Mark Direct Applicant: Self-represented
Decision:	2020 ATMO 151 Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b), 43, 58 and 59 considered – none established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Efficient Homes and Construction Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Bubble Boy Enterprises Pty Ltd (‘Applicant’): 

Application Number:	1895281
Filing Date:	17 December 2017
Goods:	Class 3: Babies' bath preparations (non-medicated); Baby bath preparations (non-medicated); Bath concentrates, not medicated; Bath creams, not medicated; Bath cubes, not medicated; Bath essences, not medicated; Bath foams, not medicated; Bath gels, not medicated; Bath lotions, not medicated; Bath oil concentrates, not medicated; Bath oils, not medicated; Bath preparations, not for medical purposes; Bath products, not medicated; Bath salts, not for medical purposes; Bath shampoo; Bath soap; Bubble bath; Bubble bath preparations; Cosmetic bath products; Cosmetic preparations for baths; Cosmetic preparations for use in the bath; Foam bath; Foam preparations for the bath; Foaming bath gels; Foaming bath liquids; Foams for the bath; Gels for use in the bath; Lathering products for use in the bath; Non-medicated bath additives; Non-medicated bath oils; Non-medicated bath preparations; Non-medicated bath salts; Non-medicated preparations for the bath; Non-medicated preparations for use in the bath; Oils being perfumed lathering products for use in the bath; Perfumed bath foam preparations (toilet preparations); Perfumed bath salts (toilet preparations); Perfumed preparations for the bath (toilet preparations); Preparations for personal use for use in the bath (non-medicated); Preparations for the bath (non-medicated); Preparations for use in the bath (non-medicated); Salts for bath use (‘Applicant’s Goods’)
Trade Mark:	BUBBLE BOY	(‘Trade Mark’)

2. Following the advertisement on 10 May 2018 in the Australian Official Journal of Trade Marks of the Trade Mark’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 4 July 2018.  The Opponent then filed a Statement of Grounds and Particulars (subsequently rectified by this office) on 26 July 2018 (‘SGP’). The rectified SGP raised grounds of opposition under ss 42(b), 43, 58 and 59 of the Act. The Applicant filed a Notice of Intention to Defend on 28 September 2018.

Evidence and Submissions

3. The Opponent did not file any evidence in this matter.  The Applicant did file evidence in this matter, being the Declaration of Gregory Ross Mathewson, the director of the Applicant with exhibits 1-17, dated 5 February 2019, however given the failure of the Opponent to file any evidence in support of its grounds of opposition it is not necessary to summarise or refer to the Applicant’s evidence any further.

4. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing.  By letter issuing from IP Australia on 11 June 2019 the parties were notified that as neither party had requested a hearing the matter would be given to a delegate of the Registrar for a decision based on the written record.  The letter indicated that the parties had three months from the date of the letter to file any written submissions they wished to reply upon.  Neither party filed any submissions.

5. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act 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.

Grounds of Opposition, Onus and Standard of Proof

6. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42(b), 43, 58 and 59 of the Act. To successfully oppose the application the Opponent needs to establish at least one of those grounds.

7. The onus of proof in an opposition rests upon the Opponent.[1]  The relevant standard of proof is the ordinary civil standard or ‘on the balance of probabilities’.[2] The date at which the rights of the parties are to be determined is 17 December 2017, being the filing date of the application in Australia (except in circumstances, not present here in which a different priority date is provided for in the Act).[3]

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

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

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

8. 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.  

9. Specifically, the Opponent has not to any extent established its ground of opposition under s 60 of the Act, which requires proof that the Opponent has a reputation in a particular mark. The same can be said for the s 43 ground as it was particularised in the SGP. The particulars of the s 43 ground asserted deception or confusion arising from the similarity of the Trade Mark to a prior trade mark previously used by the Opponent, for which no evidence has been provided. Like the s 43 ground, the s 58 ground requires evidence of the Opponent’s use of a prior trade mark, for which no evidence has been provided. Nor has the Opponent established the ground of opposition under s 59 of the Act, which requires evidence supporting the claim that the Applicant did not intend to use the Trade Mark in relation to the Applicant’s Goods. Finally the s 42 ground of opposition, as particularised in the SGP, claims that the use of the Trade Mark is in breach of the Competition and Consumer Act 2010 (Cth) and the common law of passing off. The Opponent has filed no evidence or submissions in support of that ground so I find that this ground has not been established.

Decision

1. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application no. 1895281 may proceed to registration not less than 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 either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

   Costs

2. 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 section 221 of the Act in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995 (Cth).

   Nicholas Smith
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   8 September 2020