Opposition by KTSN Development Pty Ltd to registration of trade mark application number 2011617 (Class 38) – MINIPORT figurative - in the name of Miniport Holdings Pty Ltd.

[2021] ATMO 106

TRADE MARKS ACT 1995

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

Re:Opposition by KTSN Development Pty Ltd to registration of trade mark application number 2011617 (Class 38) – MINIPORT figurative - in the name of Miniport Holdings Pty Ltd.

Delegate:	Blake Knowles
Representation:	Opponent: Self-represented. Applicant: Self-represented.
Decision:	2021 ATMO 106 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under ss 58 and 62A – s 58 established – registration refused.

Background

1. This is a decision on the opposition by KTSN Development Pty Ltd (‘Opponent’) to registration of a trade mark application number 2011617 (‘Application’).  

2. On 4 June 2019 (‘Relevant Date’), Miniport Holdings Pty Ltd (‘Applicant’) filed an application to register the following trade mark:

(‘Trade Mark’)

1. The Application was accepted for registration and subsequently advertised for opposition on 5 November 2019 in respect of Class 38: Internet service provider (ISP) services.

2. The Opponent filed a notice of intention to oppose registration of the Trade Mark on 17 November 2019 and a statement of grounds and particulars (‘SGP’) on 17 December 2019. The Applicant filed a notice of intention to defend the opposition on 12 March 2020.

3. The parties had the opportunity to file evidence in accordance with the timetable set out in reg 5.14[1]. The Opponent filed Evidence in Support on 15 June 2020. The Applicant did not file Evidence in Answer.

   [1] Unless otherwise stated, each reference to a section or regulation in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth) or regulation of the Trade Marks Regulations 1995 (Cth).

4. The Opponent requested to have the matter decided based only on the evidence filed and the particulars outlined in the SGP. The Applicant elected not to be heard or file submissions.   

Grounds and onus

1. The SGP nominated grounds of opposition under ss 58 and 62A. The Opponent carries the burden of establishing one or more of the grounds of opposition on the balance of probabilities.[2]

   [2] Pfizer Products Inc v Karam [2006] FCA 1663, 22 (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, 133 (Besanko, Jagot and Edelman JJ).

2. The rights of the parties are assessed as at the Relevant Date.[3]

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

Evidence

1. The following Evidence in Support was filed under reg 5.14:

   Declaration of David Tisdall, director of Opponent, made 7 August 2020, with Exhibits 3 to 16, 18 to 21, and 23.

2. Mr Tisdall declares that a company called Wik Wok Pty Ltd that was incorporated in 2013 operated from 2015 a residential Internet service provider business under the trade name ‘Miniport’. An ASIC extract for Wik Wok Pty Ltd is annexed to the declaration.

3. Mr Tisdall declares that in 2016, the company Miniport Pty Ltd was incorporated and the Miniport business was transferred from Wik Wok Pty Ltd to Miniport Pty Ltd at some time prior to February 2017. An ASIC extract for Miniport Pty Ltd is annexed to the declaration.

4. Mr Tisdall declares that the Miniport business was put up for sale in December 2018, and the Opponent was the successful bidder.

5. Mr Tisdall declares that the Applicant was incorporated in March 2019. An ASIC extract for the Applicant is annexed, which indicates that the Applicant was incorporated in May 2019.

6. Mr Tisdall annexes to the declaration (i) an invoice that was issued prior to the Relevant Date by Miniport Pty Ltd to an Australian company for what appear to be Internet services (the invoice refers to NBN Plus and a preconfigured router) and (i) an Internet Archive Wayback Machine webpage extract dated 12 September 2018 which is an advertisement for High Quality NBN services. The Trade Mark is used on both the invoice and the webpage extract.  

7. Mr Tisdall also provides evidence of a business dispute between former business partners and directors of Miniport Pty Ltd, particularly relating to the sale of the Miniport business. However, as I have been able to decide this matter under s 58, it is not necessary to outline particulars of the dispute in detail or consider the relevance of this evidence under s 62A.

Discussion

Section 58

1. To establish this ground, the Opponent must show use in Australia, by either the Opponent or some other person who is not the Applicant, of a trade mark that is substantially identical to the Trade Mark[4] and which has been used for Internet service provider services or services that are the ‘same kind of thing’.[5]

   [4] Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495, 513.

   [5] Re Hicks Trade Mark (1897) 22 VLR 636, 640.

2. The trade mark relied on by the Opponent must have been used in the course of trade prior to the Relevant Date, or prior to the date of first use of the Trade Mark by the Applicant, whichever is earlier. Use of a trade mark in relation to services means use of the trade mark in physical or other relation to the services.[6]

   [6] Trade Marks Act 1995, s 8.

3. The test for determining whether two trade marks are substantially identical requires the trade marks to be assessed as follows:

   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.[7]

   [7] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 414 (Windeyer J).

4. I am satisfied that there has been use of the Trade Mark in relation to Internet service provider services prior to the Relevant Date, based on the combination of the following invoice dated 13 November 2018 and Internet Archive Wayback Machine extract from 12 September 2018:

1. I consider that, in the absence of any evidence to the contrary, the abovementioned use of the Trade Mark in the course of trade was by a person other than the Applicant, namely Miniport Pty Ltd. The ASIC extract for the Applicant included in the Evidence in Support clearly indicates that the Opponent was incorporated on 20 May 2019. The Applicant therefore cannot have used the Trade Mark prior to this date. In addition, the Applicant has not filed any evidence which indicates it acquired rights in the Trade Mark from Miniport Pty Ltd.

2. As I am satisfied that a person other than the Applicant has earlier use of an identical trade mark for Internet services provider services, the ground under s 58 is established.  

3. As I have found that a ground of opposition under s 58 is established, I do not need to consider the other ground of opposition relied on, namely, s 62A.

Decision

1. The Opponent has established a ground of opposition. As such, I have decided to refuse registration of the Trade Mark. Noting the appeal period, this refusal will be recorded one month from the date of this decision unless the Registrar of Trade Marks is served with a notice of appeal. If an appeal is filed, the disposition of this opposition will be for the court.

Blake Knowles
Hearing Officer
Delegate of the Registrar of Trade Marks

21 September 2021