Oztrademe Pty Ltd v Trade Me Limited

[2009] ATMO 90

TRADE MARKS ACT 1995

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

Re:Opposition by OZTRADEME PTY LTD to registration of trade mark application 1101935 - TRADEME - filed in the name of Trade Me Limited.

Delegate:

Debrett Lyons

Representation:

Opponent: No representation

Applicant: Tim Allen

Decision:

2009 ATMO 90

Sec. 52 opposition: Opposition unsuccessful since no ground of opposition established.

Background

1. On 6 March 2006, Trade Me Limited (‘the applicant’) filed an application to register the trade mark which appears below.

1. The application was examined and accepted for possible registration in respect of a wide range of goods and services in classes 9, 16, 18, 35, 36, 38, 39, 41, 42, 43, 44 and 45. 

2. The application was advertised accordingly in the Australian Official Journal of Trade Marks on 13 September 2007. On 10 December 2007, Oztrademe Pty Ltd (‘the opponent’) filed a Notice of Opposition to registration of the trade mark under section 52 of the Trade Marks Act 1995 (the Act).

3. Evidence-in-Support of the opposition consisted of a Statutory Declaration of Wendy Le Noble dated 5 March 2008.

4. Evidence-in-Answer consisted of a Statutory Declaration of Diana Turner dated 5 September 2008.

5. An unsworn statement made by Mark R. Salkin dated 5 December 2009 was labeled as Evidence-in-Reply.

6. Further Evidence consists of a second Statutory Declaration of Ms. Turner made on 21 April 2009. 

7. A hearing was convened on 15 September 2009 in Melbourne before me, Debrett Lyons, acting as a delegate of the Registrar of Trade Marks.  At the hearing, the applicant was represented by Tim Allen of Corrs Chambers Westgarth, Solicitors.  The opponent was not represented, nor were written submissions received on its behalf.

Discussion

1. To succeed, the opponent bears the onus of establishing at least one of its grounds of opposition.  In Pfizer Products Inc v Karam (2006) 70 IPR 599, Gyles J put the relevant standard in terms of the balance of probabilities. See also the recent concurring view of Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891 at paragraphs 22-26.

2. The Notice of Opposition cites almost every ground of opposition available to the opponent. Despite the absence of aural or written submissions on behalf of the opponent, a preamble to the opponent’s Evidence in Support states that “the evidence is based on the following grounds: sections 41, 43 and 58A”. 

3. Mr. Salkin’s unsworn statement, which I would be entitled to disregard under the Trade Mark Regulations 1995, is not evidence but argument, however it again seems to focus on those three grounds.  I will assess them first.

Section 41

1. The opponent asserts that the trade mark is not capable of distinguishing the applicant’s goods and services from those of other persons.

2. The registrar’s delegate saw fit to accept the application under section 41(3) –i.e. as inherently adapted to distinguish the applicant’s goods and services.   No evidence of any kind has been filed which would cause me to come to a different conclusion or cause me to consider that the registrability of the trade mark should properly have been assessed under section 41(5) or (6).  Indeed, I note that in her declaration, Ms. Noble states her view that “the combination of the two elements or essential features TRADE and ME becoming TRADEME gives rise to inherent capability to distinguish”.

3. The ground of opposition under section 41 is not established.

Section 43

1. The opponent asserts that use of the trade mark would be likely to deceive or cause confusion because of some connotation carried by the trade mark, but the opponent fails to identify the alleged connotation.  The ground of opposition under section 43 is not established.

Section 58A

1. The opponent has fundamentally misconceived the operation of this provision.  Section 58A applies to a trade mark application which has been accepted by the registrar under section 44(4) because of so-called “prior continuous use”.  Such an application might be opposed under section 58A on the basis that another person has used a deceptively similar mark from a time earlier than the proven first use of the accepted trade mark.

2. The applied-for trade mark was not accepted under section 44(4) and so section 58A has no application to the facts of this case.  For reasons which are clear from paragraph 21 below, it could not even be said that the application should have been accepted under section 44(4).

3. This ground of opposition is not established.

Other grounds

1. The opposition might be dismissed at this point however, principally for the opponent’s benefit, I have said something of the remaining grounds listed in the Notice of Opposition.

2. The opponent does not offer any evidence which supports its grounds of opposition under sections 42(a), 42(b), 62(a), 62(b) or 62A.  Those grounds are not established.  In addition, nothing supports the opponent’s assertion that the application “should not have been accepted without the imposition of further conditions or limitations”.

3. The ground of opposition based on section 44 is not established because the opponent must show the existence of an application or registration for a substantially identical or deceptively similar trade mark in the name of a person other than the applicant which has an earlier priority date than the opposed application.  The priority date of the opposed application is 6 March 2006.  The Notice of Opposition bases the section 44 ground on trade mark application number 1126951 with a priority date of 31 July 2006 and application number 1127129 with a priority date of 2 August 2006.

4. The ground of opposition based on section 58 asserts that the applicant is not the owner of the trade mark.  To establish this ground, the opponent must show first use in Australia of the applied-for trade mark, or a substantially identical trade mark, before 6 March 2006.  Ms. Noble claims that the opponent first used OZTRADEME on 26 April 2006.  The evidence shows actual trade mark use of OZTRADEME at an even later time.  This ground of opposition is not established.

5. The ground of opposition based on section 60 requires the opponent, amongst other matters, to point to another trade mark, whether registered or in use, which before the priority date of 6 March 2006 had acquired a reputation in Australia.  As just noted, there was no use of a relevant trade mark prior to 6 March 2006 and therefore no reputation could have existed at the requisite time.  This ground of opposition is not established.

Decision

1. Section 55 of the Act provides:

   55Decision

   (1)Unless the proceedings are discontinued or dismissed, 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.

   Note:For limitations see section 6.

   (2)Without limiting subsection (1), if the application was opposed on the ground specified in paragraph 62(a) (that the application, or a document filed in support of the application, was amended contrary to this Act), the Registrar may revoke the acceptance of the application and examine the application again under section 31.

   Note:For examine and this Act see section 6.

2. The opponent has not established a ground of opposition and so its opposition is unsuccessful.  Application number 1101935 may proceed to registration after one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been discontinued or registration is otherwise ordered by the court.

Costs

1. I direct that the opponent is to pay the applicant’s costs, calculated in accordance with Schedule 8 to the Regulations.

Debrett Lyons

Hearing Officer

Trade Marks Hearings

9 November 2009