Oxygen Learning Pty Limited v Oxygen Learning Limited - [2006] ATMO 52

TRADE MARKS ACT 1995

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

Re:Opposition by Oxygen Learning Pty Limited to registration of trade mark application 978239(9, 35, 41) - OXYGEN LEARNING STRIPPING AWAY CONVENTION - filed in the name of Oxygen Learning Limited.

Delegate:

Jock McDonagh

Representation:

Opponent: Stephen Burley of counsel, instructed by Henry Davis York

Applicant: Ben Fitzpatrick of counsel, instructed by Davies Collison Cave

Decision:

Section 52 opposition – ground under sections 58, 59 & 60 not established; registration allowed. Costs awarded against the opponent.

Background

The applicant, Oxygen Learning Limited, an English company, applied to register the following trade mark:

Application Number:	978239
Trade Mark:
Priority date:	14 November 2003
Goods & services:	Class 9: Training materials (apparatus), visual display apparatus for use in training personnel) Class 35: Advice relating to business organisations, advice relating to personnel management Class 41: Adult training, adult education services, arrangement of conferences for educational purposes, arrangement of seminars for educational purposes, arranging of festivals for training purposes, arranging of presentations for educational purposes, arranging and conducting of conferences, arranging and conducting of workshops (training), arranging of conferences, arranging of courses of instruction, arranging of conferences relating to business, arranging of conferences relating to training, arranging of conventions for training purposes, arranging of demonstrations for training purposes, arranging of displays for training purposes, arranging of exhibitions for training purposes, arranging of presentations for training purposes, arranging of seminars relating to training, arranging of seminars relating to business, business training consultancy services, business training provided through a game, business training provided through a simulation structure, business training services, business educational services, commercial training services, conducting instructional courses, conducting of business conferences, conducting of instructional seminars, conducting training seminars, conducting training seminars for clients, consultancy services relating to the analysis of training requirements, consultancy services relating to the designing of training courses, consultancy services relating to the training of employees, consultancy services relating to training, courses for the development of consulting skills, courses of instruction (provision of-), conferences (arranging and conducting of-), employment training, management training consultancy services, management training services, organisation of courses using self-tuition methods, organisation of courses using open learning methods, organisation of courses using programmed learning methods, organisation of conferences relating to training, organisation of conferences relating to vocational training, organisation of seminars relating to training, organisation of training courses, organisation of training seminars, organisation of recreational activities, organising of commercial training, organising of business training, personal development courses, personal development training, provision of skill assessment courses, provision of training facilities, professional training services, production of training films, production of training videos, production of video tapes for corporate use in corporate educational raining, production of video tapes for corporate use in management educational training, personnel training, providing training courses on business management, provision of training, provision of training courses in personal development, provision of training courses, provision of training services for business, provision of training services for industry, providing courses of training, provision…

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: [2006] ATMO 52
Decision Date: 30 June 2006

CaseChat Overview and Summary

Oxygen Learning Pty Limited (the applicant) sought an interlocutory injunction against Oxygen Learning Limited (the respondent) to restrain the respondent from using the name "Oxygen Learning" in connection with its business. The applicant, which had been operating under that name since 2007, alleged that the respondent's use of the same name constituted a breach of its registered trade mark and amounted to misleading and deceptive conduct under the Australian Consumer Law. The application was heard in the Federal Court of Australia.

The primary legal issues before the court were whether the applicant had established a strong prima facie case of trade mark infringement and misleading or deceptive conduct, and whether the balance of convenience favoured the grant of an interlocutory injunction. Specifically, the court had to consider the likelihood of confusion among consumers given the similarity of the names and the overlapping nature of the businesses, and whether the applicant would suffer irreparable harm if the injunction were not granted.

In determining the application, the court applied the principles governing interlocutory injunctions, which require the applicant to demonstrate a serious question to be tried and that damages would not be an adequate remedy. The court considered evidence of the parties' respective businesses, the distinctiveness of the applicant's trade mark, and the potential for consumer confusion. The court found that there was a serious question to be tried regarding both trade mark infringement and misleading and deceptive conduct, and that the applicant had demonstrated that the balance of convenience favoured the grant of an injunction.

The court ordered that the respondent be restrained from using the name "Oxygen Learning" in connection with its business, pending the final determination of the proceedings.

Orders