Opposition by Taliberry Entertainment Pty Ltd to registration of trade mark application 2044878 (41) – 1Dance Africa – in the name of 1DANCE PTY LTD

[2021] ATMO 120

TRADE MARKS ACT 1995

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

Re:Opposition by Taliberry Entertainment Pty Ltd to registration of trade mark application 2044878 (41) – 1Dance Africa – in the name of 1DANCE PTY LTD

Delegate:	Nicholas Smith
Representation:	Opponent: Frankel Lawyers Applicant: Self-represented
Decision:	2021 ATMO 120 Trade Marks Act 1995 (Cth) - Section 52 opposition: s 58 considered – ground established – registration refused

Background

1. This decision concerns an opposition brought by Taliberry Entertainment Pty Ltd (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of 1DANCE PTY LTD (‘Applicant’): 

Application Number:	2044878
Filing Date:	18 October 2019
Services:	Class 41: Arranging of musical entertainment; Directing of musical shows; Musical concert services; Musical entertainment services; Musical performance services; Musical performances; Organisation of musical events; Event management services in relation to the organisation of educational, entertainment, sporting or cultural events; Management of cultural events; Management of entertainment events; Organisation of promotions (entertainment events); Organisation of promotions (sporting events); Organising events for cultural purposes; Organising events for entertainment purposes; Organising of entertainment and social events; Arranging of entertainment; Arranging of exhibitions for entertainment purposes; Booking of entertainment; Club entertainment services; Club services (entertainment or education); Conducting of exhibitions for entertainment purposes; Entertainment; Live entertainment; Live entertainment production services; Management of entertainment services; Night club services (Entertainment); Organisation and conducting of dance, music and other entertainment festivals; Organisation of competitions (education or entertainment); Organisation of contests (education or entertainment); Organisation of entertainment events; Organisation of exhibitions for entertainment purposes; Organisation of fairs for entertainment purposes; Organisation of fashion shows for entertainment purposes; Organising charitable fundraising events being the provision of entertainment, sporting and cultural services; Organising of entertainment; Party planning (entertainment); Production of live entertainment; Provision of club entertainment services; Provision of live entertainment (‘Applicant’s Services’)
Trade Mark:	1Dance Africa	(‘Trade Mark’)

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 followed by a Statement of Grounds and Particulars (rectified by this office) on 3 June 2020 (‘SGP’). The SGP raised grounds of opposition under ss 58 and 62A. The Applicant filed a Notice of Intention to Defend on 14 August 2020.

   Evidence

3. The Opponent filed the following evidence in support of its opposition:

   ·Declaration made on 9 October 2020 by Joseph Akol, the Director of the Opponent, with Annexures 1-3 (‘Akol declaration’).

4. The Applicant did not file any evidence in answer.

5. The Opponent did not file evidence in reply.

6. 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 Opponent 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.

7. 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 Opponent

8. The Opponent is an Australian company.  

9. The relevant claims/statements in the Akol declaration can be summarised as follows:

   ·     In 2018 the Opponent conceived of a large scale public musical and cultural entertainment event to be called 1Dance Africa, which would promote new musical and dance talent from Africa in Australia. The Opponent engaged A.P.E. Events Pty Ltd (‘APE’) to promote and assist in the management of the 1Dance Africa event. On or around 23 July 2019 a partnership agreement was entered into between APE and the Opponent where the parties agreed to jointly organise appearances and concerts under the name 1Dance Africa (‘Partnership Agreement’).  Under clause 4 of the Partnership Agreement the parties agreed that title to and intellectual property rights in the Trade Mark should be jointly owned and that the parties should obtain a trade mark in their joint names.  In the event of termination, clause 6 of the partnership agreement provides that clause 4 of the agreement survives termination.

   ·     In October 2019, two musical and dance events under the Trade Mark took place in Sydney and Melbourne respectively.  On 17 October 2019 APE issued a notice of termination of the Partnership Agreement. 

   ·     On 18 October 2019, Harris Meitanis, the managing director of APE, established the Applicant and is the sole director and company secretary of the Applicant.    

10. The Annexes to the Akol declaration contain the Partnership Agreement, the notice of termination of the Partnership Agreement and a company search report for the Applicant.  I note that the notice of termination refers to the October 2019 events taking place so it is not in dispute that the 1Dance Africa events took place under the Trade Mark prior to the date on which the Trade Mark was applied for. 

    The Applicant

11. The Applicant has not filed any evidence and as such I have no information about it other than what is set out on the Register. 

    Grounds of Opposition, Onus and Standard of Proof

12. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 58 and 62A. To successfully oppose the application the Opponent needs to establish one of the nominated grounds. As will become apparent, the Opponent has successfully established the ground of opposition pursuant to s 58. Consequently, it is unnecessary that I consider the remaining ground of opposition. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the Court.

13. The onus of proof in an opposition rests upon the Opponent.[1]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2]  The date at which the rights of the parties are to be determined is the filing date 18 October 2019 (‘relevant date’).[3]

    Discussion

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

    [2] 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).

    [3] 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).

    Section 58 – Applicant not owner of trade mark

14. Section 58 is reproduced below:[4]

    [4] In summarising the principles that apply with respect to s 58 of the Act I have paraphrased from Richard Khouzame v Melambada Pty Ltd (Unreported, Australian Trade Marks Office, 6 January 2017), [12] (Hearing Officer Wilson).

    Section 58. Applicant not owner of trade mark

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

    Note:For applicant see section 6.

15. The owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier.  It is now well established at law that to succeed under this ground of opposition the Opponent must establish three factors.  These are:

    · that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first factor’);[5]

    · that the Applicant’s Services are the ‘same kind of thing’ as the goods for which the trade mark(s) relied upon by the Opponent was used (‘the second factor’);[6] and

    ·     that a person other than the Applicant has the earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark by the Applicant (‘the third factor’).[7]

    [5] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375 (Gummow J).

    [6] Re Hicks’s Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).

    [7] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).

16. The ground based on s 58 was particularised in the SGP by reference to the prior use of the Trade Mark by APE and the Opponent for the 1Dance Africa events that took place on 11 and 12 October 2019.

17. In respect of the second factor the delegate in Sola Tube Australia Pty Ltd v Gabriel Andrews[8] stated as follows:

    The “same kind of thing” in respect of the goods or services of the parties does not equate to goods or services which may be “of the same description” (the latter being a term of art for goods or services which are not the same but which consumers are likely to believe come from the same source). It is a narrower test that applies in the context of a claim to ownership.[9]

    [8] [2014] ATMO 103, [14] (Hearing Officer Worth).

    [9] Colorado Group Limited v Strandbags Group Pty Ltd [2007] FCAFC 184; (2007) 74 IPR 246; Krone AG v Brook (t/as Cannon Watch Co) (1996) 34 IPR 340.

18. I am satisfied on the unchallenged evidence before me that at the relevant date, the Trade Mark was jointly owned by the Opponent and APE.  This conclusion arises from the fact that the Opponent and APE had jointly arranged two musical and dance events under the Trade Mark on 11 and 12 October 2019 and the nature of the Partnership Agreement between the entities. The fact that the Partnership Agreement had been terminated does not affect the joint ownership at common law.  The first and third factors are established.

19. With respect to the second factor, I find that the following Applicant’s Services are the ‘same kind of thing’ as the services for which the Opponent and APE have used the Trade Mark.

    Class 41: Arranging of musical entertainment; Directing of musical shows; Musical concert services; Musical entertainment services; Musical performance services; Musical performances; Organisation of musical events; Event management services in relation to the organisation of educational, entertainment, sporting or cultural events; Management of cultural events; Management of entertainment events; Organisation of promotions (entertainment events); Organising events for cultural purposes; Organising events for entertainment purposes; Organising of entertainment and social events; Arranging of entertainment; Arranging of exhibitions for entertainment purposes; Booking of entertainment; Conducting of exhibitions for entertainment purposes; Entertainment; Live entertainment; Live entertainment production services; Management of entertainment services; Organisation and conducting of dance, music and other entertainment festivals; Organisation of entertainment events; Organisation of exhibitions for entertainment purposes; Organising of entertainment; Production of live entertainment; Provision of live entertainment

20. I find that the Opponent has established the ground of opposition pursuant to s 58 for all the Applicant’s Services other than: Organisation of promotions (sporting events); Club entertainment services; Club services (entertainment or education); Night club services (Entertainment); Organisation of competitions (education or entertainment); Organisation of contests (education or entertainment); Organisation of fairs for entertainment purposes; Organisation of fashion shows for entertainment purposes; Organising charitable fundraising events being the provision of entertainment, sporting and cultural services; Party planning (entertainment); Provision of club entertainment services

    Resolution of Opposition

21. In Apple Inc. v Registrar of Trade Marks Yates J stated that:

    My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[10]

    [10] [2014] FCA 1304, [232].

22. In circumstances where an opposition has been established in respect of some, but not all of an applicant’s goods or services the Registrar may proceed to reject the application in its entirety, under the principles outlined above, but also has a discretion to offer an amendment to an applicant, allowing it to amend the application to remove services for which a ground of opposition has not been established.

23. In the present case I do not think it is appropriate to offer an amendment since the nature of the specification of the Applicant’s Services contains many overlapping services and as such it would be difficult to sensibly excise various services.  I note that if the Applicant wishes to register the Trade Mark for a narrower range of services it may choose to file such an application.

    Decision and Costs

24. I have found the Opponent has established the ground of opposition it raised pursuant to s 58. As the delegate of the Registrar I accordingly refuse to register the Trade Mark. I direct that the refusal be recorded one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that the refusal shall not occur until the appeal has been withdrawn or discontinued. Otherwise, the disposition of this application should be in accordance with the Court’s orders or directions.

25. The Opponent 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 Applicant under s 221 in the relevant amounts under Schedule 8 of the Regulations.

    Nicholas Smith
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    12 October 2021