Opposition by Jamie Smith, Oliver Sim and Romy Croft to registration of trade mark application number 1903635 (class 9, 25) - in the name of Coen Rodgers.
[2021] ATMO 9
•03 February 2021
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Jamie Smith, Oliver Sim and Romy Croft to registration of trade mark application number 1903635 (class 9, 25) - in the name of Coen Rodgers.
| Delegate: | Timothy Brown |
| Representation: | Opponent: Wrays Pty Ltd Applicant: Self represented |
| Decision: | 2021 ATMO 9 Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 58, 60, and 62 – no grounds established – trade mark to proceed to registration. |
Background
This is an opposition under section 52 of the Trade Marks Act 1995 (Cth) (‘the Act’) to the registration of the following trade mark:
Trade Mark Number: 1903635
Trade Mark: (‘the Trade Mark’)
Applicant: Coen Rodgers (‘the Applicant’)
Priority Date: 31 January 2018
Specifications: (‘the Goods’)
Class 9: Carrying cases adapted for sunglasses; Cases adapted for sunglasses; Chains for sunglasses; Devices for supporting sunglasses; Finished lenses for sunglasses; Frames for sunglasses; Lenses for sunglasses; Optical lenses for use with sunglasses; Straps for sunglasses; Sunglasses; Sunglasses being optical apparatus; Sunglasses being optically corrected; Sunglasses being tinted; Eyewear; Prescription eyewear; Sun visors (eyewear); Anti-glare glasses; Cases adapted for glasses; Chains for glasses; Frames for glasses; Glasses cases; Glasses for optical use; Glasses frames; Lenses for glasses; Optical glasses; Reading glasses; Spectacles (glasses); Sports glasses (eye wear)
Class 25: Apparel (clothing, footwear, headgear); Clothing; Footwear; Headwear; Hats; T-shirts; Headgear for wear
The Trade Mark was advertised for acceptance in the Australian Official Journal of Trade Marks on 28 June 2018.
A Notice of Opposition was filed by the Jamie Smith, Oliver Sim and Romy Croft (‘the Opponent’) on 27 August 2018. The Statement of Grounds and Particulars (‘the SGP’) was subsequently filed on 27 September 2018.
A Notice of Intention to Defend was filed by the Applicant on the 3 November 2018.
The Opponent filed Evidence in Support of its opposition on 12 February 2019 comprising of a declaration made on 11 February 2019 by Matthew Thornhill (‘the Thornhill Declaration’) and Annexures 1 through to 25.10.
Evidence in Answer was then filed by the Applicant on 24 May 2019 consisting of a declaration made on 20 May 2019 by the Applicant (‘the Rodgers Declaration’).
Evidence in Reply was filed by the Opponent on 26 July 2019 consisting of a declaration made on 24 July 2019 by Grace Ng (‘the Ng Declaration’) and Annexures GN-01 through to GN-28.
On 24 July 2019, the Opponent requested to amend the SGP to include two additional grounds of opposition. This request was allowed and the SGP was amended on 7 November 2019. Evidence supporting the additional grounds was filed on the 9 December 2019 consisting of a declaration made on 9 December 2019 by Marie Julienne Wong (‘the Wong Declaration’) and Annexures MW1 to MW10. No further evidence was filed by the Applicant in relation to the additional grounds of opposition.
Both parties were invited to make written submissions and/or request a hearing. Neither party requested a hearing with the Opponent choosing to rely on written submissions that were filed on 17 February 2020 (‘the Opponent’s Submissions’). No submissions were made by the Applicant.
10. As a delegate of the Registrar I will now decide this matter with reference to the material filed during these proceedings.
Evidence
The Opponent’s Evidence
11. The following evidence was filed by the Opponent:
· The Thornhill Declaration and Annexures 1 to 25.10;
· The Ng Declaration and Annexures GN01 to GN28; and
· The Wong Declaration and Annexures MW1 to MW10.
12. The Thornhill Declaration explains the Opponent comprises of the three members of the English band known as ‘The XX’, which was formed in 2005.
13. The Opponent has used the trade marks ‘the XX’, ‘XX’ and ‘X’ in both plain text and in the following stylised forms:
(‘the Opponent’s Trade Marks’)
| ‘The XX’ | |
| ‘XX’ | |
| ‘X’ | and |
14. According to the Thornhill Declaration, the Opponent’s Trade Marks were first used in 2005 via the social networking platform MySpace at < __j_unwrap_id="1">[1] and have since been consistently used in connection with the Opponent’s music albums and live music performances.
[1] Thornhill Declaration [10], Annexure 1.
15. Starting in 2009 the Opponent’s Trade Marks have also been promoted via the Opponent’s own social media and various third-party online platforms. Annexures 1 through to 25.10 of the Thornhill Declaration demonstrate use of the Opponent’s Trade Marks on the Opponent’s website < YouTube Channel, Instagram Account, Facebook page, MySpace page, and on the third party platforms Spotify, iTunes Store, Google Play, and Amazon Music.
16. The Thornhill Declaration also outlines information demonstrating public exposure of the Opponent’s Trade Marks in Australia, including charting information from the Australian Recording Industry Association (‘ARIA’),[2] sales of concert tickets,[3] interviews with various Australian radio stations,[4] and sales of merchandise in Australia.[5]
[2] Ibid Annexures 10,11.
[3] Ibid [37].
[4] Ibid [41].
[5] Ibid [42].
The Applicant’s Evidence
17. The Applicant’s evidence comprises solely of the Rodgers Declaration. In the Rodgers Declaration, the Applicant explains that he is a director of the company Rixx Eyewear Pty Ltd (ACN 612 310 362), which was established in 2015 by the Applicant and Mr Tommy Sheridan.
18. According to the Rodgers Declaration, the Trade Mark is the logo of the RIXX EYEWEAR brand, which was developed by the Applicant and Mr Sheridan and was first used via the website < in 2016.
19. The Rodgers Declaration includes examples of use of the Trade Mark that demonstrate promotion of the Trade Mark on the website < and the RIXX EYEWEAR Instagram, Twitter, and Facebook accounts.
20. The Rodgers Declaration also contains emails and invoices demonstrating the pre-filing development of the Trade Mark by the Applicant and Mr Sheridan. Of note is page 30 of the Rodgers Declaration, which demonstrates prior use of the Trade Mark on the website < on 20 November 2016.
Grounds of Opposition
21. The nominated grounds of opposition are sections 42(b), 58, 60 and 62 of the Act.
22. The Opponent bears the onus of establishing one or more of the grounds of opposition.[6] The required standard of proof is on the balance of probabilities.[7]
[6] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].
[7] Pfizer Products Inc v Karam (2006) FCA 1663, [6]-[26]; Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].
23. The date at which the rights of the parties will be determined is the date of the application,[8] which in this matter is the priority date of the Trade Mark, 31 January 2018.
Discussion and Reasons
[8] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.
Section 60
24. 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.
25. To establish the ground of opposition under section 60 the Opponent must demonstrate that another trade mark had a reputation in Australia prior to the priority date of the Trade Mark and because of that reputation the use of the Trade Mark would be likely to deceive or cause confusion.
26. Reputation in the context of section 60 has been taken to mean ‘recognition of [the mark] by the public generally’[9]. It is not assumed and must be established by the Opponent as a matter of fact.[10] The means by which a party may establish reputation were discussed by Lockhart J in ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343:
[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum, and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …
[9] See: McCormick & Co Inc v McCormick [2000] FCA 1335, [81], [85].
[10] Conagra Inc. v McCain Foods (Australia) Pty Ltd [1992] FCA 176; 33 FCR 302, [77], [118].
The degree of reputation required is one which a significant number of people in the relevant market would be aware.[11] In terms of assessing the reputation of a trade mark, Kenny J stated in McCormick & Co Inc v McCormick [2000] FCA 1335; AIPC ¶38–192 at [86]:
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product…[12]
[11] Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75].
[12] See also: Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG (1999 47 IPR 423, 436.
28. The Opponent’s evidence substantiating their reputation in the music industry is significant, and I accept that the Opponent’s Trade Marks had acquired a strong reputation in respect of music amongst a significant number of Australians before the priority date of the Trade Mark. I have reached this conclusion with regard to the following:
· The XX’s relatively large international audience evidenced by 4,239,622 monthly listeners to the Opponent’s Spotify Channel (as of 7 February 2019),[13] 518,693 subscribers on the Opponent’s YouTube Channel, 657,000 followers on their Instagram Account, 3,611,092 followers on their Facebook Account and 92,000 connection via MySpace.[14]
· The promotion and advertisement of albums and Australian tours via various digital and online mediums, such as online advertisements in JB-Hifi, Apple iTunes, Google Play and Amazon Music’s online stores and platforms,[15] radio interviews,[16] the Opponent’s website < and various social media accounts.
· Various music industry achievements, including success entering in at number 1 in the ARIA charts in 2017 and number 2 in 2012.[17]
· Ticket sales from live performances and national tours in Australia in 2010, 2013 and 2018.[18] In addition, performances at music festivals, namely St Jerome’s Laneway Festival in 2010, Splendour in the Grass in Byron Bay in 2017.[19]
[13] Opponent’s Submissions, page 3; Thornhill Declaration, page 8, Annexure 7.
[14] Thornhill Declaration [45]-[59], Annexures 19-24.
[15] Ibid [20]-[22], Annexures 4-5.
[16] Ibid Annexure 18.
[17] Ibid [31]-[32], Annexures 10, 11.
[18] Ibid [34]-[35] Annexures 12, 13.
[19] Ibid [39], Annexures 16, 17.
29. In addition to music, use of the Opponent’s Trade marks has been demonstrated on various articles of merchandise, in particular clothing, hats, posters and bags.[20] The Opponent wishes the sales figures regarding these goods to remain confidential, as such, I will merely note that the sales figures for these goods in Australia are not substantial. The goods identified by the Opponent are commonly available goods sold in supermarkets, departments stores, boutiques stores and online with the relevant consumers being the majority of the Australian public. In this context, the sales of the Opponent’s goods are not significant or characteristic of trade marks with strong reputations in relation to these particular goods. I do not accept that the reputation of the Opponent’s Trade Marks for music spills over to clothing, bags, posters, or any other merchandise.
[20] See: Ibid [42]-[43], [49].
30. It is not sufficient for the Opponent to demonstrate that its trade marks have a reputation; they must also establish that because of that reputation the use of the Trade Mark would be likely to deceive or cause confusion. This requires more than a mere possibility of deception or confusion;[21] there must be a real likelihood that an ordinary person would be caused to wonder whether the goods or services bearing the trade marks come from the same source.[22]
[21] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020; (1999) 93 FCR 365, [50].
[22] Ibid.
31. Although I have found that the Opponent’s Trade Marks have a strong reputation, it is limited to the music industry. The goods in which the Trade Mark are sought to be registered are eyewear in Class 9 and clothing in Class 25. These are not goods to which the reputation of the Opponent’s Trade Marks would extend. Section 60 of the Act does not require the earlier trade marks to have acquired a reputation relevant to the specific goods or services of the opposed trade mark.[23] However, the extent of the reputation is a consideration relevant to the question of whether use of the opposed trade mark would be likely to deceive or cause confusion.[24] The Opponent’s Trade Marks may be used in relation to various articles of merchandise, but the reputation of those trade marks is that of a group of musicians, not of a clothing or eyewear trade mark, or as a trader of those goods. While this may not be a determinative factor, the risk of confusion is less than it may have been if there was a closer nexus between the goods specified in the Trade Mark and the goods and services associated with the reputation of the Opponent’s Trade Marks.
[23] Qantas Airways Limited v Edwards [2016] FCA 729, [143].
[24] Ibid; See also: Monster Energy Company v Mixi Inc [2020] FCA 1398, [20]-[22]; Hills Industries Limited v Bitek Pty Ltd [2011] FCA 94, [208].
32. The differences between the trade marks can also not be ignored. Confusion does not arise solely from the reputation of the trade mark.[25] Although section 60 of the Act does not require the trade marks to be substantially identical or deceptively similar, the degree of similarity is a relevant consideration.[26] In my view, the trade marks have a relatively low degree of similarity. The letters ‘XX’ or the letter ‘X’ form the main feature of each of the Opponent’s Trade Marks. I note that the Opponent has assessed the stylisation of the Trade Mark as having little impact on the identity of the Trade Mark. However, I consider the stylisation sufficient to introduce a significant degree of ambiguity as to whether the Trade Mark could be readily identified by the letters ‘XX’ in the same manner as the Opponent’s Trade Marks. In addition, the crosshatching pattern of the Trade Mark is visually distinct from the more conventional stylisation of the letters in the Opponent’s Trade Marks. While I accept that the Trade Mark could potentially be characterised as the letters ‘XX’, I do not consider it likely.
[25] Rodgers Seller & Myhill Pty Ltd v Reece Pty Ltd [2010] ATMO 5, [39].
[26] Qantas Airways Limited v Edwards [2016] FCA 729, [142].
33. For completeness I would also note that the Rodgers Declaration contains reference to numerous other trade mark registrations and applications containing the letters ‘XX’. These trade marks have also been extracted by the Opponent in the Ng Declaration. In the absence of any submissions by the Applicant regarding the relevance of these trade marks to any of the nominated grounds of opposition I am not inclined to afford them, or the decision to register the trade marks by the Registrar, any weight in determining whether or not there is a likelihood of deception or confusion between the trade marks.
34. Given the above reasons, I do not consider the reputation of the Opponent’s Trade Marks strong enough to account for the differences in the trade marks and the goods. On the balance of probabilities, I am satisfied that there would not be a real, tangible danger of people being caused to wonder whether a connection exists between the Trade Mark and Opponent’s Trade Marks.
35. The Opponent has failed to establish the ground of opposition under section 60 of the Act.
Section 42(b)
36. Section 42(b) of the Act provides:
An application for the registration of a trade mark must be rejected if:
…
(b) its use would be contrary to law.
37. In their SGP the Opponent has identified sections 18 and 29 of the Australian Consumer Law (‘ACL’) of Schedule 2 to the Competition and Consumer Act 2010 (Cth) and the tort of passing off as the basis for this ground of opposition.
38. The Opponent bears the onus of establishing that use of the Trade Mark by the Applicant would be contrary to law. It is not enough to demonstrate that the Trade Mark might or could contravene section 18 or 29 of the ACL, or that the tort of passing off could be made out. The Opponent must demonstrate on the balance of probabilities that use of the Trade Mark would contravene the ACL or that the tort of passing off would be made out.[27]
[27] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28]; Primal Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [411].
Australian Consumer Law
39. Section 18 of the ACL provides:
A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
40. Section 29 of the ACL relevantly provides:
(1) A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services:
…
(g) make a false or misleading representation that goods or services have sponsorship approval, performance characteristics, accessories, uses or benefits;
41. These provisions require there to be a likelihood that the relevant consumer would be misled or deceived as to the origin of the Applicant’s goods due to the conduct of the Applicant. The requirement to mislead or deceive the relevant consumer is one of the key differences between section 18 and 29 of the ACL and section 60 of the Act. Unlike section 60 of the Act, sections 18 and 29 of the ACL cannot be established by demonstrating use of the opposed trade mark would be confusing or give consumers cause to wonder. As such, sections 18 and 29 of the ACL import a stricter requirement than section 60 of the Act.[28]
[28] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982[ HCA 44, [8]; Monster Energy Company v Mixi Inc [2020] FCA 1398, [32]-[33].
42. For the reasons already set out above in regard to the section 60 ground of opposition, in my view it is not likely that use of the Trade Mark would be likely to mislead or deceive an ordinary or reasonable consumer of the relevant goods into believing that the Trade Mark and any of the Opponent’s Trade Marks are related, or that there is any relationship per the sort described in section 29(1)(g) of the ACL.
43. I am not satisfied that use of the Trade Mark would contravene sections 18 or 29 of the ACL.
Passing Off
44. Where a trade mark does not contravene sections 18 or 29 of the ACL, it is unlikely to amount to passing off.[29] Hill J noted in Re Equity Access Pty Ltd v WestpacBanking Corporation [1989] FCA 771 at [40] that:
The scope for the operation of s.52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s.52 or s.53 will invariably mean that proceedings for passing off would likewise fail: Taco Company of Australia Inc v. Taco Bell Pty Ltd (1982) 42 ALR 177, 206; Telmak Teleproducts (Aust) Pty Ltd v. Coles Myer Ltd (unreported) 21 July 1989 Full Federal Court at p 18
[29] Monster Energy v USA Nutraceuticals Inc [2017] ATMO 22, [58].
45. Sections 52 and 53 of the Trade Practice Act were the antecedents of section 18 and 29 of the ACL. Given my findings in relation to section 18 and 29 of the ACL, it follows that use of the Trade Mark would not amount to passing off.
46. In consideration of the above reasons, the ground of opposition under section 42(b) has not been established.
Section 58
47. 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.
48. The term ‘owner’ is not defined by the Act. As explained in Shanahan’s Australian Law of Trade Marks and Passing Off (6th ed, 2016) at 50.2220:
The First user is the person entitled to claim to be the owner and if the applicant is shown not to be the first user, the ground of opposition will be established.
49. Ownership of a trade mark can be established through authorship and use of a trade mark prior to the filing date of an application for registration of a trade mark,[30] or, in the absence of any prior use, a combination of authorship, the filing of an application or an intention to use the trade mark.[31]
[30] Moorgate Tobacco Co Ltd v Phillip Morris Ltd (1984) 156 CLR 414, 432; Carnival Cruise Lines Inc v Stimar Cruises Ltd [1994] FCA 936; Food Channel Network Pty Ltd v Television Food Network GP (2010) 185 FCR 9; [2010] FCAFC 58, [49], [55].
[31] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [29].
50. In their amended SGP the Opponent has contested the ownership of the Trade Mark on two grounds: first, that the owner of the trade mark is the Opponent, and second, that the company Rixx Eyewear Pty Ltd is the first user of the Trade Mark.
51. To succeed with either of these submissions, the Opponent must establish:
· The Trade Mark is identical or substantially identical to an earlier trade mark;[32]
· The Trade Mark has been used in respect of good or services as ‘the same kind of thing’ as the earlier trade mark;[33] and
· The Opponent or Rixx Eyewear Pty Ltd has an earlier claim of ownership based on use of the earlier trade mark before the filing date of the Trade Mark.[34]
[32] Carnival Cruise Lines Inc v Sitmar Cruises Limited (1994) ALR 495; Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [50].
[33] Re Hick’s Trade Mark (1897) 22 VLR 636, 640.
[34] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402, 413.
The Opponent’s Claim of Ownership
52. In respect to their own claim for ownership of the Trade Mark, the Opponent has submitted that the Trade Mark is ‘substantially the same as the XX Marks, comprising the letters “XX” as their essential feature’[35]. For reference, ‘the XX Marks’ are the Opponent’s Trade Marks detailed in paragraph [13].
[35] Opponent’s Submissions [48].
53. In Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 Windeyer J outlined the test for determining substantial identity:
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[36]
[36] Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407, [12].
54. The comparison between trade marks for the purposes of determining substantial identity requires consideration of the dominant cognitive cues, or framed another way, the essential features of the respective trade marks.[37] If a total impression of resemblance emerges from the comparison then the trade marks will be considered substantially identical.[38]
[37] Accord Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, [206]; Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [51].
[38] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [50]; Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 68; (11994) 120 ALR 495, [62].
55. In my view the Trade Mark is not substantially identical to any of the Opponent’s Trade Marks. On a side-by-side comparison the differences in the essential features of the trade marks are clear. While the letters ‘XX’ or the single letter ‘X’ are the essential features of the Opponent’s Trade Marks, the same cannot be said for the Trade Mark. I previously characterised the Trade Mark as a device in the form of a cross hatched pattern. I consider the arrangement of the device in this fashion to be essential to the identity of the Trade Mark, and an overt point of distinction from the letters in the Opponent’s Trade Marks. The differences between the essential features of the trade marks are significant enough that there is not a total overall impression of resemblance.
56. For these reasons, I am satisfied that the Opponent is not the owner of the Trade Mark.
Rixx Eyewear Pty Ltd’s Claim of Ownership
57. Section 58 of the Act is not confined to the Opponent claiming ownership of the opposed trade mark. The ground may also be established by showing that the Applicant is not the owner of the Trade Mark.[39]
[39] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; 185 FCR 1 [55].
58. The Opponent’s argument arises from evidence provided by the Applicant to demonstrate prior use of the Trade Mark. In particular, the Opponent has drawn my attention to the Applicant’s statement in the Rodgers Declaration, ‘RIXX Eyewear is an Australian sunglasses brand founded by two mates, Tommy Sheridan and Coen Rodgers’[40].
[40] Rodgers Declaration page 17.
59. In further support of this ground, the Opponent has relied on:
· ASIC Current and Historical Extract for Rixx Eyewear Pty Ltd and National Business Name – Current and Historical Extract for business name RIXX EYEWEAR;
· Screen captures from < dated 17 April 2017[41];
· Annexure MW7 to MW10 showing emails and invoices for purchases of goods from Rixx Eyewear Pty Ltd.
· Annexures MW3 to MW6 showing several news articles discussing the development of the RIXX EYEWEAR brand.
[41] Ng Declaration Annexure GN-08.
60. The Opponent has also referred to annexures and statements made by the Applicant in the Rodgers Declaration, in particular:
Screen captures using Wayback Machine of < dated 20 November 2016 showing use of the Trade Mark on the designated goods,[42];
Invoices and email correspondence pertaining to the design and development of the RIXX EYEWEAR brand dated 22 January 2016[43];
Emails correspondence regarding use of the Trade Mark on articles of clothing from throughout 2016.[44]
Several articles discussing the development and launch of the RIXX EYEWEAR brand, including an article published on < which includes a quote from Mr Sheridan stating, in relation to the RIXX EYEWEAR brand that the ‘idea came to fruition over a dinner in Cottesloe with a friend and business partner Coen Rogers’[45].
[42] Rodgers Declaration page 30.
[43] Ibid pages 14-16.
[44] Ibid page 10-11.
[45] Ibid pages 121-122.
61. There is a clear commercial relationship between the Applicant and the company Rixx Eyewear Pty Ltd. The Rodgers Declaration and the information from ASIC contained in Annexure MW1 of the Wong Declaration demonstrate the Applicant is one of the directors of the company alongside Mr Sheridan. It is also apparent from the correspondence in the Rodgers Declaration that both the Applicant and Mr Sheridan were involved in the development and authorship of the Trade Mark alongside the brand RIXX EYEWEAR. This is supported by various articles provided in the Rodgers Declaration and referenced in the Wong Declaration that attest to the development of the brand by the Applicant and Mr Sheridan.
62. What is less clear is who first used the Trade Mark. This is because the evidence provided by both parties regarding the prior use of the Trade Mark is less cogent. While the evidence does demonstrate that the Trade Mark has been used in the course of trade in relation to goods of the same kind of thing as early as 2016, it does not clearly establish which party is using the Trade Mark. Of relevance here is the use of the Trade Mark on the website < While the screen captures demonstrate use of the Trade Mark on the online store before the priority date of the Trade Mark, they are insufficient to establish that Rixx Eyewear Pty Ltd is the user of the Trade Mark. This is because these screen captures only demonstrate that goods bearing the trade mark are being sold via this platform, not which party is using the Trade Mark. I note the invoice pertaining to the registration of the <rixxeyewear.com.au> domain in the Rodgers Declaration.[46] However, this only indicates the party charged for registration of the domain, not the identity of the registrant or the user of the Trade Mark on the platform. Beyond the Applicant’s statement that he and Mr Sheridan began trading on the website on 19 September 2016, and their commercial relationship with the company, there is little additional information available to link first use of the Trade Mark to Rixx Eyewear Pty Ltd.
[46] Ibid page 14.
63. The Opponent has provided contemporary invoices and emails after purchasing goods from this website and Australia Post demonstrating Rixx Eyewear Pty Ltd. However, this evidence is only sufficient to demonstrate that Rixx Eyewear Pty Ltd currently uses the Trade Mark. It does not that establish they were the first user nor does it negate the possibility that the Applicant is also using, or authorising use, of the Trade Mark.
64. In summary, I do not consider that the Opponent has discharged its evidentiary burden and established that the Applicant is not the owner of the Trade Mark. There is very little evidence before me as to the way the Trade Mark was used before its filing date, and no determinative evidence as to who the first user of the Trade Mark is. Although it is arguable that the company Rixx Eyewear Pty Ltd used the Trade Mark before the filing date, it is not clear who was the first party to use the Trade Mark, or, noting their involvement from initial conception of the Trade Mark, that the Applicant at the time was also not using the Trade Mark. As such, I cannot be satisfied on the balance of probabilities that the Opponent was not the first user of the Trade Mark.
65. The ground of opposition under section 58 of the Act has not been established.
Section 62
66. Section 62 of the Act relevantly provides:
The Registration of a trade mark may be opposed on any of the following grounds:
…
(b) that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars.
67. In order to establish the ground of opposition under section 62(b) of the Act, the Opponent must demonstrate that the representations or evidence was false in material particulars and that due to the false representations or evidence the trade mark was accepted for registration.
68. The Opponent’s basis for this ground of opposition relies solely on the contention that the Applicant is not the owner of the Trade Mark. As particularised in the Opponent’s submissions, ‘as the Opposed Application was filed in the name of Rodgers it is fundamentally defective for being filed in the name of the incorrect owner’[47].
[47] Opponent’s Submissions [60].
69. Given my findings in relation to the section 58 ground of opposition, it follows that on the facts available the ownership is not incorrect, or in the wording of section 62, false in material particulars. I would also add that section 62 of the Act requires the Opponent to demonstrate a causal connection between the false representation and the decision to accept the trade mark application.[48] This would be a challenge for the Opponent to establish even if they had established that the Applicant was not the owner of the Trade Mark.
[48] Mars Australia Pty Ltd (formerly Effem Foods Pty Ltd) v Societe des Produits Neslte SA (2010) 86 IPR 581.
70. Section 33 of Act requires the Registrar to, following examination, accept an application for registration of a trade mark, unless he or she is satisfied that the application has not been made in accordance with the Act,[49] or there are grounds under the Act for rejecting the application.[50] There are no grounds for rejection that pertain to ownership,[51] and the only relevant requirement under the Act is that the person making the application have legal personality.[52] Beyond issues relating to the legal personality of the Applicant there is little reason for the Registrar to interrogate an Applicant’s claim for ownership during the examination process. As such, a representation made in relation to ownership under section 27(1) of the Act does not generally form a basis for accepting the application for registration.[53]
[49] Trade Marks Act 1995 (Cth) s33(1)(a).
[50] Trade Marks Act 1995 (Cth) s33(1)(b).
[51] See: Trade Marks Act 1995 (Cth) ss39-44.
[52] Trade Marks Act 1995 (Cth) s27(2)(c).
[53] See, eg: MB Holdings (Australia) Pty Ltd v B2 Import and Export SA CC [2001] ATMO 100.
71. There are exceptions. In O’Brien Glass Industries (t/as Windscreens O’Brien) v Cleary (2004) 60 IPR 595; [2004] ATMO 22 it was evident from the evidence provided by both parties that the applicant had knowledge that their claim of ownership was false, and that the applicant by his own admission was seeking to ‘gazump’ the opponent’s ownership claim.[54] The delegate of the Registrar noted that:
this is an unusual finding, and would by no means naturally follow every opponent’s successful claim to ownership in terms of s 58, which is, in any event, the most appropriate forum in which to argue such issues. In practice, the Registrar has no reason, in most cases, to question the veracity of an applicant’s claim to be the owner of a trade mark, at the time he or she accepts it. Further, the course of an ownership finding for an opponent will not necessarily reveal, as were revealed in this instance, the circumstances under which the opposed trade mark application was made.[55]
[54] O’Brien Glass Industries (t/as Windscreens O’Brien) v Cleary (2004) 60 IPR 595; [2004] ATMO 22, ]26]-[27].
[55] Ibid [27].
72. The present circumstances do not suggest anything beyond a typical case of disputed ownership, in which case, section 58 of the Act would be the appropriate mechanism for challenging a claim of ownership of a trade mark.
73. In consideration of the above reasons, I am satisfied that the Registrar did not accept the Trade Mark for registration because of a representation that was false in material particulars.
74. The ground of opposition under section 62 of the Act has not been established.
Decision
75. Section 55(1) of the Act provides:
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.
76. The Opponent has failed to establish any of their nominated grounds of opposition. Accordingly, trade mark 1903635 may proceed to registration one month from the date of this decision.
77. Should the Registrar be served with notice of appeal before the registration of the Trade Mark, I direct that the registration of the Trade Mark not occur until the appeal has been decided or discontinued, and that any disposition of the application be in accordance with the Court’s orders or direction.
Costs
78. Both parties have sought an award of costs. As the Opponent has not been successful in their opposition, I award costs against the Opponent under section 221 of the Act in accordance with Schedule 8 of the Trade Marks Regulations1995 (Cth).
Timothy Brown
Hearing Officer
Delegate of the Registrar of Trade Marks
03 February 2021
Key Legal Topics
Areas of Law
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Intellectual Property
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Administrative Law
Legal Concepts
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Standing
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Costs
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Procedural Fairness
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Remedies
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