Pegasus Investments & Holdings Pty Limited v OMNI Footwear Pty Limited

[2001] ATMO 87

TRADE MARKS ACT 1995

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

Re:Opposition by PEGASUS INVESTMENTS  & HOLDINGS PTY LIMITED to registration of trade mark application 795393(25) - Omni- filed in the name of OMNI FOOTWEAR PTY LIMITED.

Background

On 25 May 1999, Omni Footwear Pty Limited ("Omni"), an Australian company, applied under the Trade Marks Act 1995 ("the Act") to register the trade mark Omni in respect of footwear in class 25.  The application was advertised accepted for registration in the Official Journal of Trade Marks on 6 January 2000. 

Pegasus Investments & Holdings Pty Limited ("PIH") opposes the registration of this application.  On 4 July 2000, within the extended time allowed to it for that purpose, it filed a notice of opposition.  In support of its opposition, it then filed and served evidence.  This stage of the opposition was completed on 4 February 2001.

No evidence in answer was served.  Neither party sought to be heard in the matter, when offered the opportunity to do so, nor has either provided written submissions. 

The matter has now come to me, as delegate of the Registrar in this matter, to decide whether the application should be registered or refused.

Evidence

The evidence consists of a statutory declaration by Paul Robins, Director of PIH, dated 2 February 2001.

The declaration states that the identical trade mark was first used in relation to footwear by PIH in May 1996.  Since then, it has used the trade mark continuously throughout Australia, and on 6 April 2000 sought to register it under application 830811.  Five years' wholesale sales figures are provided.  The main outlets for the opponent's goods are the 125 retail outlets of Payless Shoes Pty Ltd ("Payless"), and five years' retail sales figures of the goods sold under this trade mark by Payless are included in the declaration.  A considerable numbers of pairs of shoes bearing the trade mark appear to have been sold. 

It is mainly through the retailers of the goods that the trade mark is advertised to the public.  However, PIH itself has promoted the trademark, for example through sponsorship of leading competition skateboard riders in 1996.

Mr Robins also gives details of the manufacturing arrangements whereby the goods are obtained from a Hong Kong company.

There are 19 exhibits to the declaration, which provide documentary and physical support to the facts set out in the declaration.

Grounds of opposition

The grounds of opposition nominated in the Notice of Opposition appear to fall particularly within the scope of ss 58, 60 and 42.  However, the Notice also includes a "catch-all" ground:  "Such other grounds as the Registrar of Trade Marks or the Court, on appeal, may see fit to allow.", and a statement that "The onus is on the Applicant to show that the Opposed Trade Mark should proceed to registration, but the Applicant has not discharged and cannot discharge that onus."

Reasons

Onus

Section 55 of the Act provides:

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.

The onus in an opposition proceeding is therefore upon the opponent to establish at least one of the grounds of opposition it nominated in its notice of opposition.  This is consistent with the presumption of registrability under s 33 which applies at the examination stage.

There is no onus on an applicant to show that its trade mark should proceed to registration until and unless a prima facie ground of opposition is made out.  At the opposition stage, the onus does not shift to an applicant unless the notice of opposition points to a fact which itself constitutes a ground of opposition, or until sufficient evidence in support of the opposition is served.

Ownership

Section 58 allows as follows:

Applicant not owner of trade mark

58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Ownership of a trade mark may be established by showing who had first use in Australia of the same trade mark, or of a substantially identical trade mark, in respect of "the same kind of thing", before the priority date of the application.  (Re Hicks' Trade Mark (1897) 22 VLR 636; Carnival Cruise Lines Inc v Sitmar Cruises Ltd 31 IPR 375 at 391).

In the present case, the trade marks are identical.  The opponent's goods are footwear, which are the same goods as those for which the applicant seeks protection. 

In view of the opponent's comprehensive evidence of use since 1996, and the lack of any evidence or statements in response from the applicant, I find that this ground of opposition has been established.

Any other  allowable grounds

I can see no other ground on which the opposition should succeed.  Specifically, there is not enough evidence to establish either s 42 or s 60.

Decision

The opposition has succeeded on one of the grounds on which it was brought.  I therefore refuse to register application 795393.

Costs

PIH sought costs in its notice of opposition.

There appears to be no reason why costs should not follow the event.  I therefore direct that Omni, the trade mark applicant, pay the costs of the opponent, PIH, in accordance with the official scale.

Arminel Ryan
Senior Examiner

21 September 2001