Q Original Plastics UG and Von Wulfing GmbH & Co Kg v Quadro Der Grossbaukasten Limited

[2017] ATMO 117

TRADE MARKS ACT 1995

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

Re:Opposition by Q.Original Plastics UG and von Wulfing GmbH & Co Kg to registration of trade mark application 1587183 (19, 20) - QUADRO and Device - in the name of Quadro Der Grossbaukasten Limited

DELEGATE:  Nicholas Smith

Decision on the Written Record

DECISION:  2017 ATMO 117

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b) 44, 58, 60 and 62A considered – none established – trade mark

to proceed to registration   

Background

1. This is an opposition brought jointly by Q.Original Plastics UG (‘First Opponent’) and von Wulfing GmbH & Co Kg (‘Second Opponent’) (‘Opponents’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Quadro Der Grossbaukasten Limited (‘Applicant’):

   Application Number:         1587183

Filing Date:  22 October 2013

Goods:Class 19: Construction elements not of metal, namely plastic tiles, plastic blocks, transportable buildings of plastic, branching pipes, not of metal, all being those of which toys, sporting articles and furniture can be stuck together; Non-metal scaffolding; Non-metal swimming pools; Staircases, not of metal; Non-metal stairs; pipes of plastic

Class 20: Furniture except furniture fittings; Dog kennels; dog beds; dog baskets; Pet furniture, Picture and photograph frames; Shelves; Portable kennels; Plastic boxes; Wood boxes; Decorative centerpieces of bone, ivory, plaster, plastic, wax, wood; Figures of bone, ivory, plaster, plastic, wax, wood; Wall plaques made of bone, ivory, plaster, plastic, wax, wood; Statues of bone, ivory,

plaster, plastic, wax, wood (‘Applicant’s Goods’)

Trade Mark:           (‘Trade Mark’)

1. Following the advertisement on 22 October 2015 in the Australian Official Journal of Trade Marks of the application’s acceptance for possible registration, the Opponents filed a Notice of Intention to Oppose on 22 December 2015. The Opponents then filed a Statement of Grounds and Particulars (‘SGP’) on 15 January 2016. The SGP was assessed by this office as adequate. The Applicant filed a Notice of Intention to Defend on 19 February 2016. The SGP raised grounds of opposition under ss 42(b) 44, 58, 60 and 62A of the Act.

Evidence

1. The Opponents did not file Evidence in Support of their opposition. The Opponents provided to this office 111 pages of attachments to the SGP. These pages are not evidence in the opposition, have not been provided in declaratory form in accordance with Reg 21.17, and their provenance and reliability has not been verified in any way. As these attachments have not been provided in evidence the Applicant has not had an opportunity to answer them. I have received no submissions from the Opponents requesting that I take the attachments into account pursuant to reg 21.15(4) or 21.19 of the Trade Marks Regulations 1995 and in circumstances where the Opponents had the opportunity to file the attachments as evidence and chose not to, I shall not take them into account in making my decision.

1. The Applicant filed its Evidence in Answer (‘EIA’) on 7 September 2016. This evidence consists of a declaration made on 7 September 2016 by Kevin Ashby, the legal representative of the Opponent, with Exhibits A-1 to A-5 (‘Ashby Declaration’). The Opponents did not file any evidence in reply.

1. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions. Neither party chose to avail itself of these opportunities. By letter issuing from IP Australia on 6 February 2017 the parties were notified that as neither party had requested a hearing the matter would be given to a delegate

of the Registrar for a decision based on the written record. The letter indicated that the parties had one month from the date of the letter to file any written submissions they wished to reply upon.  Neither party chose to file submissions in this matter.

1. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by section 55 of the Act which relevantly provides that, unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide on the basis of the written record, comprised of the materials mentioned in the previous paragraphs:

   (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 Opponents

1. The Opponents have provided no evidence and, therefore, I am unable to provide any information about the Opponents other than what is set out in the EIA and on the Register.

1. The Opponents were the registered owner of Trade Mark no. 345679 for QUA DRO, with a priority date of 1 May 1980 (‘Opponents’ Trade Mark’). On or around 29 May 2016 the Opponents’ Trade Mark was removed from the Register for non-use.

The Applicant

1. The Applicant is a company registered in the UK but whose principal place of business is in Hamburg, Germany.

Grounds of Opposition, Onus and Standard of Proof

1. As indicated above in the SGP the Opponents nominated grounds of opposition under ss 42(b) 44, 58, 60 and 62A. To successfully oppose the application the Opponents need to establish at least one of those grounds. The onus of proof in an opposition rests upon the

Opponent(s).1    The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.2

1. With the exception of ss 42(b) and 44 (discussed below), as the Opponents have filed no evidence and provided no submissions I have no hesitation deciding that the Opponents have not discharged the onus on them and have consequently not to any extent established any of the remaining grounds of opposition nominated in the SGP (namely sections 50, 60 and 62A of the Act). The mere filing of the Notice of Opposition without any supporting evidence or

   submissions does not serve to place the onus on the Applicant to defend its application.3

1. With respect to the Opponents’ s44 ground of opposition, this ground is particularised solely by reference to the Opponents’ Trade Mark which on 29 April 2016 was removed from the Register. In the absence of any registered trade mark on which they can rely on, I also find that the Opponents have not established their ground of opposition under s44 of the Act.

Discussion

Section 42

1. Section 42 of the Act is reproduced below:

42 Trade mark scandalous or its use contrary to law

An application for the registration of a trade mark must be rejected if:

(a)  the trade mark contains or consists of scandalous matter; or

(b)  its use would be contrary to law.

1. The Opponents particularised this ground of opposition solely on the basis that the use of the Trade Mark would be contrary to law (s 42(b)). The onus is on the Opponents to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.4 The relevant time for assessing whether an application is contrary to law is at the relevant date, being the date the trade mark application is made but ‘looking forward to prospective conduct after registration’.5

1 Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

2 Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

3 Medley Distilling Co v Croakers Gully Australia (2000) 53 IPR 430, 433.

4 Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

5 Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353.

1. The ground of opposition pursuant to s 42(b) of the Act was particularised in the SGP as follows:

   The Joint Opponents or their predecessors in business have used the trade mark QUA DRO in Australia continuously from as early as 1979 to July 2009.

   In light of the Joint Opponent's reputation in the QUA DRO, use of the Opposed Mark in relation to the same or similar goods or services in relation to Class 19: Construction elements not of metal, namely plastic tiles, plastic blocks, transportable buildings of plastic, branching pipes, not of metal, all being those of which toys, sporting articles and furniture can be stuck together; Non-metal scaffolding; Non-metal swimming pools; Staircases, not of metal; Non-metal stairs; pipes of plastic and Class 20: Furniture except furniture fittings; Dog kennels; dog beds; dog baskets; Pet furniture, Picture and photograph frames; Shelves; Portable kennels; Plastic boxes; Wood boxes; Decorative centerpieces of bone, ivory, plaster, plastic, wax, wood; Figures of bone, ivory, plaster, plastic, wax,  wood;  Wall plaques made of bone, ivory, plaster, plastic, wax, wood; Statues of bone, ivory, plaster, plastic, wax, wood , would be likely to mislead or deceive consumers contrary to sections 18 and 29 of the Australian Consumer Law (Schedule 2 to the Australian Competition and Consumer Act 2010 (Cth)) and, or alternatively, constitute the common law tort of passing off.

   The use of the Opposed Mark would therefore be contrary to law within the meaning of section 42.

1. For the Registrar to be satisfied that the use of the Trade Mark would be in breach of ss 18 and/or 29 of the ACL or passing off (as particularised in the SGP), the Opponents would need to show, at the very minimum, that a reputation existed in the trade mark nominated in the SGP as at the filing date of the Trade Mark. The Opponents have provided no evidence or submissions as to the existence of any reputation in the Opponents’ Trade Mark as at the filing date. Given the absence of any reputation held by the Opponents in the Opponents’ Trade Mark as at the filing date, I am not satisfied that the Opponents have met this burden. Therefore, the Opponents have failed to establish the ground of opposition under s 42(b).

Decision

1. The Opponents have failed to establish any of the grounds of opposition they nominated in the SGP. Trade Mark application no. 1587183 may proceed to registration not less than 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 either the appeal is withdrawn or discontinued. Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

Nicholas Smith Hearing Officer

Trade Mark and Designs Hearings 17 October 2017