PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd - [2020] ATMO 132

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by PDP Capital Pty Ltd to registration of trade mark application number 1835886 (class 30) – WICKED (Word) - in the name of Grasshopper Ventures Pty Ltd.

Delegate: Kate Doherty

Representation: Opponent: S Stewart of Counsel, i/b Clayton Utz
Applicant: D Larish of Counsel, i/b K Newcombe

Decision: 2020 ATMO 132
Trade Marks Act 1995 (Cth) – opposition pursuant to section 52 – Grounds of opposition pursued ss 41, 42(b), 44, 58, 59, 60 and 62A; s 41 established; trade mark will not proceed to registration.
Background
1.    This is an opposition decision following an online hearing on 6 April 2020. I heard the matter as Delegate of the Registrar of Trade Marks for the following trade mark pursuant to the Trade Marks Act 1995 (‘the Act’):
Trade Mark No:               1835886
Trade Mark:   WICKED (‘Trade Mark’)
Words:  WICKED
Filing date:   28 June 2011 (Divisional)
Applicant:  Grasshopper Ventures Pty Ltd
Specification of Goods: (at time of filing): Class 30
Dips including chocolate dips and savoury dips; desert foods in this class including chilled and frozen sweet mousses, chocolate mousses and white mousses, desert toppings and sauces including chocolate toppings and sauces and fruit-flavoured toppings and sauces; sauces (condiments); ice
2.    In response to the Examiner’s assessment of the evidence, the Applicant’s attorney made an application on 28 June 2018 to amend the goods within the class (‘the Applicant’s goods’):[1] The amended specification applies in this opposition proceeding:
[1] Letter by eServices dated 28 June 2018 from K Newcomb.
Class 30: Dips including chocolate dips; desert foods in this class including chilled and frozen sweet mousses, chocolate mousses and white mousses, dessert toppings and sauces including chocolate toppings and sauces

3. The Trade Mark was advertised accepted on 12 July 2018. A Notice of Opposition was filed on 12 September 2018 by PDP Capital Pty Ltd (‘The Opponent’). On 12 September 2018, the Applicant filed a Notice of Intention to Defend the Opposition. The Statement of Grounds and Particulars (‘SGP’) was deemed adequate on 5 December 2018, and nominates the grounds of opposition ss 41, 42(b), 44, 58, 59, 60 and 62A.
Evidence
4. Summary of evidence received from the parties:

Declarant

Party

Evidence Stage

Date

Annexures

Decision Reference

P Polly

Opponent

EIS

20 March 2019

A-Z-AA

Polly Declaration

B Doyle

Opponent

EIS

20 March 2019

1-6

Doyle Declaration

R Valentine

Applicant

EIA

5 July 2019

A-Z-AB

Valentine Declaration

B Doyle

Opponent

EIR

9 September 2019

1 only

Finch Affidavit

B Doyle

Opponent

EIR

9 September 2019

1 only

Masluk Affidavit

B Doyle

Opponent

EIR

9 September 2019

1 only

Brebbia Affidavit

B Doyle

Opponent

EIR

9 September 2019

1 only

Medley Affidavit

B Doyle

Opponent

EIR

9 September 2019

1 only

Polly Affidavit

B Doyle

Opponent

EIR

9 September 2019

1 only

FOI Declaration

P Polly

Opponent

r 21.19

5 February 2020

A-C

Further Evidence

The declarations annex evidence which includes…

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: [2020] ATMO 132
Decision Date: 7 August 2020

CaseChat Overview and Summary

PDP Capital Pty Ltd (the Applicant) sought to register the trade mark WICKED. Grasshopper Ventures Pty Ltd (the Opponent) opposed this application. The decision was made by Hearing Officer Kate Doherty of the Trade Marks and Designs office.

The central legal issue before the Hearing Officer was whether the Applicant had established that the trade mark WICKED was capable of distinguishing its goods, as required by section 41 of the *Trade Marks Act 1995* (Cth). This involved assessing whether the word "wicked" was inherently adapted to distinguish the Applicant's goods or had acquired distinctiveness.

The Hearing Officer found that the Applicant had failed to demonstrate that the plain word WICKED was capable of distinguishing its goods. Consequently, the ground of opposition under section 41 was established. The Hearing Officer also determined that the opposition was successful under section 55(1) of the Act.

As a result, Trade Mark number 1835886 will not proceed to registration. The Applicant was directed to pay the Opponent's costs, calculated in accordance with Schedule 8 of the *Trade Mark Regulations 1995* (Cth). The decision may be appealed to the Federal Court.

Orders

Orders of the court

Full text does not contain this section.

Background

Background to the litigation

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Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

The Applicant has not established that the plain word Trade Mark, WICKED, is capable of distinguishing the Applicant’s goods. Therefore, I find the ground of opposition pursuant to section 41 has been established.Decision37. The Opponent has established a ground of opposition. Pursuant to section 55(1), Trade Mark number 1835886 will not proceed to registration. 38. The parties may appeal this decision to the Federal Court in accordance with s 56 of the Act. If the Registrar has been served with notice of appeal, I direct that the Trade Mark shall not be removed from the Register until the appeal has been decided or discontinued.Costs39. Costs ordinarily follow the event for an Opposition Hearing. No submissions have been received to displace the proposition.40. I therefore direct costs against the Applicant pursuant to s 221 of the Act in the relevant amounts prescribed by Schedule 8 of the Trade Mark Regulations 1995 (Cth).Kate DohertyHearing OfficerOppositions and HearingsTrade Marks and Designs7 August 2020

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.

Delegate:	Kate Doherty
Representation:	Opponent: S Stewart of Counsel, i/b Clayton Utz Applicant: D Larish of Counsel, i/b K Newcombe
Decision:	2020 ATMO 132 Trade Marks Act 1995 (Cth) – opposition pursuant to section 52 – Grounds of opposition pursued ss 41, 42(b), 44, 58, 59, 60 and 62A; s 41 established; trade mark will not proceed to registration.

Declarant	Party	Evidence Stage	Date	Annexures	Decision Reference
P Polly	Opponent	EIS	20 March 2019	A-Z-AA	Polly Declaration
B Doyle	Opponent	EIS	20 March 2019	1-6	Doyle Declaration
R Valentine	Applicant	EIA	5 July 2019	A-Z-AB	Valentine Declaration
B Doyle	Opponent	EIR	9 September 2019	1 only	Finch Affidavit
B Doyle	Opponent	EIR	9 September 2019	1 only	Masluk Affidavit
B Doyle	Opponent	EIR	9 September 2019	1 only	Brebbia Affidavit
B Doyle	Opponent	EIR	9 September 2019	1 only	Medley Affidavit
B Doyle	Opponent	EIR	9 September 2019	1 only	Polly Affidavit
B Doyle	Opponent	EIR	9 September 2019	1 only	FOI Declaration
P Polly	Opponent	r 21.19	5 February 2020	A-C	Further Evidence