Origin Net Pty Ltd

[2024] ATMO 44

TRADE MARKS ACT 1995

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

Re:Registrar’s refusal to suspend oppositions by Origin Net Pty Ltd to registration of trade mark application numbers 1869156 ORIGIN HOME HQ, 1917698 ORIGIN & Device (fig.) and 2198639 ORIGIN LOOP – all in the name of Origin Energy Limited

Delegate:

Tracey Berger

Representation:

Opponent: Michael Green SC and Wen Wu of Counsel, instructed by Davies Collison Cave

Applicant: Siobhan Ryan KC instructed by K&L Gates

Decision:

2024 ATMO 44

Trade Marks Regulations 1995 (Cth) – reg 5.19 Registrar may give a direction – request for direction to suspend opposition – Federal Court proceedings afoot – alleged commonality of issues before Registrar and Federal Court – balance of convenience – refuse to give direction to suspend – no award of costs

Background

1. This decision is in respect of the Registrar’s refusal to direct, under reg 5.19 of the Trade Mark Regulations 1995 (Cth),[1] a suspension of the opposition proceedings filed by Origin Net Pty Ltd (‘Opponent’) to registration of the trade marks shown below in the name of Origin Energy Limited (‘Applicant’).

   [1] 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.

Number	Trade Mark (collectively ‘Trade Marks’)	Filing Date	Class
1869156	ORIGIN HOME HQ	28 August 2017	6, 7, 9, 11, 35, 37, 38, 42, 45
1917698	(’Origin Logo’)	4 April 2018	1, 4, 6, 7, 9, 11, 21, 35-42, 45
2198639	ORIGIN LOOP	29 July 2021	9, 11, 35, 37, 38, 39, 40, 42

1. In each case, the Opponent has claimed grounds of opposition under ss 42(b), 58, 60 and 62A, as well as s 59 in the opposition to application 2198639.  All of the oppositions are ready to be heard.  A hearing date had been scheduled for the oppositions to applications 1869156 and 1917698 and a hearing requested on the opposition to application 2198639 but not yet scheduled.  Collectively, the oppositions to applications 1869156, 1917698 and 2198639 are referred to as the ‘Oppositions’.

2. On 19 December 2023, the Opponent requested a direction pursuant to reg 5.19 that the Oppositions be suspended pending determination of proceedings commenced in the Federal Court of Australia by the Opponent against the Applicant and any appeals therefrom (‘Suspension Request’).  After a delegate of the Registrar wrote to the parties on 5 January 2024 declining the Suspension Request, the Opponent requested an oral hearing on that decision and the Applicant also asked to be heard.

3. I heard this matter as a delegate of the Registrar of Trade Marks on 21 February 2024.  Prior to the hearing both parties filed a written summary of their submissions.  At the hearing, Michael Green SC and Wen Wu of Counsel, instructed by Lauren Eade of Davies Collison Cave appeared for the Opponent (observed by Mona Zhang and Judy King of Davies Collison Cave) and Siobhan Ryan KC, instructed by Chris Round of K&L Gates (observed by Jian Gu of K&L Gates) appeared for the Applicant.

Legal Framework

1. Pursuant to s 55, the Registrar has a statutory duty to decide oppositions and under s 204 must do so ‘as soon as practicable’.

2. Regulation 5.19 provides:

5.19  Registrar may give direction

(1) The Registrar may give a direction in relation to an opposition to which this Part applies:

(a) if requested by a party in writing; or

(b) on the Registrar’s own initiative.

(2) If the Registrar proposes to give a direction, the Registrar must give the parties an opportunity to   make representations about the direction.

(3) A direction must not be inconsistent with the Act or these Regulations.

(4) The Registrar must notify the parties of the direction as soon as practicable.

1. Although the Registrar has no express power to suspend an opposition, a number of Regulations expressly refer to ‘a direction by the Registrar that the opposition by stayed.’[2].  Further, numerous cases have accepted that the Registrar has the power to direct a suspension of an opposition in appropriate circumstances.[3]  In deciding whether to direct a suspension, in Cadbury, Finkelstein J noted the following relevant considerations:

   (a) the degree of similarity of the issues involved;

   (b) the significance of the issues to the opposition proceeding;

   (c) whether the Registrar has more evidence than the trial judge;

   (d) the likelihood of the judge’s findings being challenged; and

   (e) whether it may be unfair (a breach of the rules of natural justice) to rely on the judge’s findings or the evidence on which those findings were based.[4]

   [2] See Regulations 5.15(4)(c), 9.18(4)(c), 17A.34K(4)(c) and 17A.48T(4)(c).

   [3] Ayrton Senna Promocoes v Senna Racing [1998] ATMO 13, Cadbury UK Ltd v Registrar of Trade Marks (‘Cadbury’) [2018] FCA 1126 (Finkelstein J).

   [4] Ibid [21].

2. The delegate in FKP Sojuzplodoimport v Spirits International BV (‘FKP’) noted that where one party disputes a suspension request, it is also necessary to consider ‘within the limits set out in Cadbury’, the balance of convenience to the parties, administrative convenience and public interest.[5]  The delegate continued:

   Subject always to what was said in Cadbury, it remains the case, as Hearing Officer Thompson pointed out in Beyond PropertiesPty Ltd v Andrew Knight [2006] ATMO 87 that delay in finalizing an opposition at the Trade Marks Office is prejudicial to an applicant only where, first, the opposition decision is likely to favour the applicant, secondly, it can be assumed that the decision will not itself be appealed by the unsuccessful opponent; and, thirdly, and in the absence of such an appeal, a significant further delay would be caused by awaiting the decision of the court.[6]

   [5] [2010] ATMO 62, [12] (Hearing Officer T. Williams).

   [6] Ibid.

3. Whilst a suspension of opposition proceedings for an indefinite period may amount to a denial of justice and refusal by the Registrar to determine the proceedings,[7] a suspension in itself does not constitute a denial of justice or refusal by the Registrar to promptly determine a matter but rather is to be determined based on the facts of the case and weighing the relevant factors.[8]

   [7] Cadbury (n3) [16].

   [8] FKP (n5) [22]-[23].

4. The Opponent bears the onus of establishing that a suspension should be granted.

Federal Court Proceedings

1. On 1 December 2023, the Opponent commenced proceedings against the Applicant and its subsidiary Origin Energy Retail Limited (‘OER’) in the Federal Court of Australia (‘Federal Court’) alleging that the Opponent and OER’s use of the Origin Logo and other ORIGIN- marks constitutes infringement under s 120(1) of the Opponent’s registered trade mark 1928722   in class 38 for various telecommunications services registered from 29 May 2018 (‘Opponent’s Registration’).

2. On 13 February 2024, the Applicant filed its Defence and Cross-Claim which seeks cancellation of the Opponent’s Registration under ss 88(1) and 88(2)(a) and (c) or (partial) removal pursuant to s 92(1) and 92(4)(b) (‘Cross-Claim’).  In its Defence, the Applicant relies on:

1. s 122(fa)- that the court is of the opinion that the respondant[9] would obtain registration of the alleged infringing mark/s; and

2. s 122(1)(e)- that the respondant is exercising a right to use a trade mark given to it under the Act; noting that if any of the Trade Marks proceed to registration, the registration date will be taken to have retrospective effect from the priority date.[10]

   [9] Being the Applicant in the Oppositions.

   [10] s 72.

1. A case management hearing will now be set but not before 18 April 2024 and there is presently no timetable for mediation, evidence nor a trial date.    

Position of the Parties

1. Initially, the Opponent sought to have the Oppositions suspended until the Federal Court Proceedings and any appeals therefrom are determined.  To avoid an indefinite suspension of the Oppositions, the Opponent now seeks a suspension of the Oppositions until the first instance decision of the Federal Court.

2. It does not appear to be in dispute that the critical issues before the Registrar and Federal Court are the same or highly similar.  The Oppositions and Federal Court Proceedings both concern the Origin Logo and other ORIGIN- marks for the same services.  In the Oppositions, the Registrar will have to decide whether the Trade Marks should be registered and the Court, in considering the Applicant’s s122(1)(fa) defence, will determine whether the Applicant would obtain registration of the Origin Logo and other ORIGIN- marks if it were to apply for them taking into consideration whether the Applicant could successfully defend any opposition that may be filed.  Also, both the Cross-Claim and Oppositions will involve considerations of ownership.  Under the s 58 ground of opposition, the Registrar will decide whether in light of the Opponent’s use of its ORIGIN NET marks, the Applicant is not the owner of the Trade Marks and the Federal Court will determine whether the Opponent’s registration should be cancelled because the Applicant is the owner of the mark ORIGIN in Australia for the relevant services.

3. In view of the voluminous evidence filed in the Oppositions, the Opponent says it is unlikely that the parties will file less or different evidence in the Federal Cout Proceedings.  Moreover, the Registrar will not have the benefit of any evidence obtained by way of discovery, cross-examination or other court procedure.  Hence, the implication is that the trial judge will be better placed to decide the issues.

4. Accordingly, the Opponent contends that the findings of the Federal Court are highly relevant to the Oppositions, would be given weight by the Registrar and would be treated as ‘prima facie correct’.[11]  The Applicant submits that for the Registrar to treat the first instance decision as ‘prima facie correct’ would be contrary to Cadbury which notes that whilst the Registrar may treat a court decision as correct, the Registrar must decide the issues herself.[12]  Further the Applicant notes that if the Oppositions are heard in a timely manner, the Registrar’s decision will inform the court as the Registrar is a skilled and experienced person.[13]

   [11] Cadbury (n4) [18].

   [12] Ibid[18]-[20].

   [13] Registrar of Trade Marks v Woolworths Ltd [1999] 93 FCA 1020, [32] (French J).

5. It is the Opponent’s submission that there is no prejudice to the Applicant if the suspension is granted given the similarity of issues in the Oppositions and Federal Court Proceedings and because there is no suggestion that the Registrar’s decision in the Oppositions will be in the Applicant’s favour or that the Opponent will not appeal that decision.[14] 

   [14] FKP [12] citing Beyond PropertiesPty Ltd v Andrew Knight [2006] ATMO 87 (Hearing Officer I. Thompson).

6. The Opponent also alleges that the Applicant will not suffer any prejudice as a result of a suspension in terms of the defences claimed by the Applicant in the Federal Court Proceedings because those defences have no prospects of success.  The s 122(1)(fa) defence is to be assessed at the time of the infringing conduct[15] and as the Applicant admits first use of the Origin Logo in 2018 and the priority date of the application for that mark is 4 April 2018, the court will consider the application of the defence at the same date as the date the opposition to the Origin Logo will be determined.  Further, the Opponent says that the Applicant’s s 122(1)(e) defence cannot succeed because this provision only applies to trade marks registered at the time of infringement[16] and that this point will not be considered by the Full Federal Court on appeal from Firstmac Limited v Zip Co Limited,[17] as claimed by the Applicant.  The Applicant argues it will be seriously prejudiced by being shut out from claiming s 122(1)(e) as a defence and notes that Certsy Pty Ltd[18] found a s 122(1)(e) defence (in similar circumstances to the present) was a factor weighing against a suspension.

   [15] Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd (No 3) [2023] FCA 1258, 631 (Yates J).

   [16] Anchorage Capital Partners v ACPA [2018] FCAFC 6, [214] (Nicholas, Yates and Beach JJ).

   [17] [2023] FCA 540 (Markovic J).

   [18] [2023] ATMO 138, [21] and [29-30].

7. The Opponent asserts that there is significant administrative convenience and public interest in avoiding parallel proceedings and the parties will benefit by avoiding duplication of their efforts and cost.  Also, any appeal of the Registrar’s decision is less likely given that the Registrar will have the benefit of the court’s decision.  However, the Applicant says that if the Oppositions are determined promptly, any appeal from the Registrar’s decision would likely be heard concurrently with the Federal Court Proceedings thereby avoiding duplication of the court’s time and resources.   

Reasons

1. The Oppositions are ready to be heard and thereafter determined.  Accordingly, there will be little duplication in effort and resources for the parties in pursuing the Oppositions with only a single hearing needed before a decision will issue. 

2. It seems probable that any decision of the Registrar will be appealed but assuming the parties and this office act promptly, that appeal could be heard together with the Federal Court Proceedings resulting in efficiencies and costs savings at the court stage.  The savings in time and effort to the court are likely to significantly outweigh any minimisation in time or expense in determining the Oppositions. 

3. The court can give whatever weight it deems appropriate to the Registrar’s decision. Similarly, although the Registrar would consider the trial judge’s decision in the Federal Court Proceedings if that matter were decided before the Oppositions, it cannot be said that decision would necessarily determine the outcome of the Oppositions.  Evidence has not yet been filed in the Federal Court Proceedings and the similarity of the evidence would affect the weight which the Registrar would afford a decision of the trial judge.

4. Moreover, it may be that a decision in the Federal Court Proceedings does not put an end to the dispute between the parties with the possibility of an appeal from that decision.  This could lead to a further delay in the Oppositions being determined if another suspension was sought.  

5. Whatever the merits of the Applicant’s defences relied on in the Federal Court Proceedings, I consider that the overwhelming consideration in favour of not granting a suspension of the Oppositions is the fact that the Oppositions are ready to be determined and any appeal from the Registrar’s decision will likely be heard concurrently with the Federal Court Proceedings.  Having both sets of proceedings in court together before the same judge will, in my view, result in greater cost savings and efficiencies than granting a suspension.

6. I therefore refuse to direct under reg 5.19 that the Oppositions be suspended.  Rather I direct that the oral hearing of the Oppositions proceed at the earliest possible date and the Registrar will schedule the hearing in due course.

Costs

1. The Applicant sought its costs in this matter and submits that the Registrar has discretion to award costs under s 221.  The Opponent relies on the fact that this was a matter between itself and the Delegate and whilst the Applicant had a right to be heard, it does not have standing to request costs.  The Opponent’s position is consistent with the practice of this office as outlined in the Trade Marks Manual of Practice and Procedure.[19]

   [19] [55.2].

2. Section 221 provides:

3. Costs awarded by Registrar

(1) The Registrar may award costs in respect of the matters, and in the amounts, provided for in the regulations against any party to proceedings brought before him or her.

(2) A party desiring to obtain costs must apply to the Registrar in accordance with the regulations.

1. In my opinion, it is apparent from the wording of this section that the Registrar is only empowered to award costs to a party to the proceeding in question.  As the present matter is between the Registrar and the Opponent, costs cannot be awarded to the Applicant and I decline to make any award of costs.

Tracey Berger

Hearing Officer

Delegate of the Registrar of Trade Marks

6 March 2024