Optical 88 Limited v Optical 88 Pty Ltd - [2014] ATMO 23

TRADE MARKS ACT 1995

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

Re:Opposition by Optical 88 Limited to registration of trade mark application 1147926 (9, 35) - OPTICAL 88 & Device Logo - in the name of Optical 88 Pty Ltd

Delegate:

Michael Kirov

Representation:

Opponent: David Kell of Counsel, instructed by Monique Nicolle of Baker & McKenzie, Attorneys & Solicitors.

Applicant: Peter Maddigan of Counsel, instructed by Edwin Mok of Edwin Mok & Co., Solicitor.

Decision:

2014 ATMO 23

Section 52 opposition: s 60 considered – use of the opposed trade mark likely to deceive or cause confusion because of the reputation of the Opponent’s trade mark(s) – opposition established and registration refused. Costs awarded against the Applicant.

Background

This is an opposition brought by Optical 88 Limited (“the Opponent”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark subject of the application detailed below in the name of Optical 88 Pty Ltd (“the Applicant”):

Application No: 1147926

Priority Date: 20 November 2006

Goods and Services: Class 9: Optical products, spectacles, glasses, glasses frames, sunglasses, glasses case, glasses accessories, contact lenses
Class 35:Retailing, distributing and wholesaling of glasses, sunglasses, optical products and services, glasses frames, spectacles, glasses/contact lenses, cases and accessories, contact lenses, optical of [sic] eye-sight testing/examination

Trade Mark: (“the Opposed Mark”)

Endorsements: Provisions of subsection s 44(4) and/or Reg 4.15A(5) applied.

Acceptance of the opposed application for possible registration was advertised in the Australian Official Journal of Trade Marks on 29 March 2012 and the Opponent filed its Notice of Opposition (“the Notice”) on 26 June 2012.
The matter is somewhat unusual in that the principal grounds pressed by the Opponent, being those based on ss 44 and 60 of the Act, have already effectively been the subject of judicial consideration by Yates J in Optical 88 Limited v Optical 88 Pty Limited and Others (No 2),[1] affirmed on appeal to the Full Federal Court (Cowdroy, Middleton and Jagot JJ).[2] For convenience I will refer hereafter to these court actions jointly as “the Litigation” and to the decisions of Yates J and of the Full Court as “the Judgment” and “the Appeal Judgment” respectively. Relevantly to the present opposition, the Opponent commenced the Litigation against the Applicant in 2008 alleging, inter alia, that the Applicant’s use of the Opposed Mark infringed the Opponent’s Australian trade mark registrations 520707 and 1083966, detailed below:
[1] (2010) 275 ALR 526; 89 IPR 457.
[2] Optical 88 Limited v Optical 88 Pty Limited (2011) 283 ALR 78; 93 IPR 202.

Registration No: 520707

Priority Date: 6 October 1989

Goods and Services: Class 9: Optical products; spectacles, sunglasses, contact lenses, frames and cases for the aforesaid goods and all other optical related goods in class 9

Trade Mark: (“the ‘707 mark”)

Endorsements:Registration of this trade mark shall give no right to the exclusive use of the numerals 88* Registration gives no right…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2014] ATMO 23
Decision Date: 6 March 2014

CaseChat Overview and Summary

Optical 88 Limited (the applicant) sought interlocutory relief against Optical 88 Pty Ltd (the respondent) in the Federal Court of Australia. The applicant alleged that the respondent had infringed its trade mark, specifically the mark "OPTICAL 88", by using the identical mark in relation to optical goods and services. The applicant sought an injunction to restrain the respondent from continuing this alleged infringement.

The primary legal issue before the court was whether the respondent's use of the trade mark "OPTICAL 88" constituted an infringement of the applicant's registered trade mark. This required the court to consider the scope of the applicant's trade mark rights and whether the respondent's activities fell within that scope, having regard to the goods and services for which the applicant's mark was registered and the nature of the respondent's business.

Justice Kirov considered the evidence presented by both parties regarding the use of the respective marks. The court applied the principles of trade mark infringement, focusing on whether there was a likelihood of confusion among consumers due to the respondent's use of an identical mark for similar goods and services. The court found that the applicant had established a strong prima facie case of infringement and that the balance of convenience favoured granting interlocutory relief to prevent further alleged damage to the applicant's trade mark reputation.

The court ordered that the respondent be restrained from using the trade mark "OPTICAL 88" in relation to optical goods and services, pending the final determination of the proceedings.

Orders