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

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

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’.
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.
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…

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

AGLC: Origin Net Pty Ltd [2024] ATMO 44
Case: [2024] ATMO 44
Decision Date: 6 March 2024

CaseChat Overview and Summary

Origin Net Pty Ltd sought a direction from the Registrar of Trade Marks under regulation 5.19 of the *Trade Marks Regulations 1995* (Cth) to suspend opposition proceedings before the Registrar. The applicant argued that parallel Federal Court proceedings, involving allegations of trade mark infringement and passing off, raised common issues with the opposition proceedings. The applicant contended that suspending the opposition would avoid duplication of effort and potential inconsistency in findings.

The primary legal issue before the Registrar was whether to exercise discretion under regulation 5.19 to suspend the opposition proceedings. This required the Registrar to consider the balance of convenience, specifically weighing the potential prejudice to the parties from proceeding with the opposition against the prejudice from delaying it, and to assess the degree of overlap between the issues in the two forums.

The Registrar determined that the balance of convenience did not favour suspension. While acknowledging some overlap in the factual matrix, the Registrar found that the legal tests and scope of inquiry in the opposition proceedings before the Registrar and the infringement proceedings in the Federal Court were sufficiently distinct. The Registrar concluded that the potential prejudice to the opponent from a significant delay in resolving the opposition outweighed the benefits of suspending the proceedings, particularly given the applicant's role in initiating the opposition. Consequently, the Registrar refused to give a direction to suspend the opposition proceedings and made no award of costs.

Orders