Quicksilver International Pty Ltd v s.Oliver Bernd Freier GmbH & Co. Kg
[2008] ATMO 14
•6 February 2008
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re: Opposition by Quiksilver International Pty Ltd to protection of international registration designating Australia 942425 - QS (STYLISED) (international registration number 744782) - in classes 3, 6, 9, 14, 18, 20, 25 and 26 filed in the name of s.Oliver Bernd GmbH & Co. KG.
Delegate: | Alison Windsor |
Representation: | Opponent: Tim Allen, Corrs Chambers Westgarth, Lawyers, of Melbourne Holder: Trevor Stevens, Davies Collison Cave, Patent and Trade Mark Attorneys of Sydney |
Decision: | 2008 ATMO 14 Regulation 17A.29 opposition: Ground under s.41 not established, other grounds not pressed –opposition dismissed. |
Background
Application 942425, an international registration designating Australia (“IRDA”), was filed in the name of s.Oliver Bernd GmbH & Co. KG (“the holder”) under the Madrid Protocol on 29 August 2002. IP Australia was notified on 6 February 2003 and, following examination of the IRDA, advertised on 11 March 2004 its intention to extend protection to Australia. Details of the IRDA are as follows:
| Application Number: | 942425 |
| Priority Date: | 29 August 2002 |
| Goods: | Class: 3 Perfumes, essential oils, products for body-and beauty care, addition for bath, as far as in class 3 included, shower gels, deodorant for own use, hair tonic, products for cleaning, care and embellishment of hair, setting lotion, hair colouring, hair tinting, nail polish, nail polish remover, cosmetic sun protection products, tooth brush products, non medical mouth and tooth care products Class: 6 Packing boxes made of metal Class: 9 Glasses made of metal and plastic, sun glasses, spectacle case Class: 14 Jewellery, in particular fashion jewellery, tie pins, pins, watches, chronometrical instruments, precious stones Class: 18 Products made of leather and imitation leather, as far as included in class 18, in particular travelling trunks and suitcases, bags, for example sport and shopping bags, small leather products, in particular toilet cases, purses, key bags, umbrellas, parasols; products made of plastic and materials, namely bags, in particular sports and shopping bags, so far as included in class 18 Class: 20 Packing boxes made of plastic, furniture, mirror frames Class: 25 Clothing for women and men, including woven and knitted clothing, and clothing made of leather and imitation leather, in particular blouses, shirts, t-shirts, sweatshirts, jackets, pullovers, tops, bustiers, trousers, skirts, twinsets, suits, coats, underwear, swimwear, headgear, scarves, headbands, neckties, jogging and fitness clothing, gloves, belts for clothing, stockings, tights, socks, shoes Class: 26 Elastic ribbons and hair bands; buttons, hooks and eyelets for clothing, lace and embroidery |
| Trade Mark: | |
| Acceptance Advertised: | 11 March 2004 |
| Endorsement: | Provisions of subsection 41(5) applied. |
On 11 June 2004 Quiksilver International Pty Ltd (“the opponent”) filed a notice of opposition (“the notice”) to extension of protection of the IRDA to Australia.
The opponent subsequently sought and was granted extensions until 11 March 2005 to serve evidence in support of the opposition. By letter dated 11 March 2005 the opponent’s attorneys advised that the opponent was only pressing one of the 13 grounds raised in the notice, namely “the ground of opposition under s.41(5) of the Trade Marks Act 1995”, on the face of it corresponding to ground 2 in the notice - “the opposed trade mark is not capable of distinguishing the applicant’s goods”. The letter further advised the opponent was not lodging or serving any evidence in support of the opposition. The letter also referred to Regulation 21.19 of the Trade Marks Regulations 1995 noting it obliged the relevant Hearing Officer to provide the Opponent with a copy of any evidence that might be relied upon in deciding the opposition which had not actually been formally served and lodged in the opposition proceedings themselves. This, it was said, would include a copy of the evidence lodged with IP Australia by the holder in support of the application during its examination, being a Statutory Declaration sworn by Bernd Freier on 23 December 2003 (“the First Freier Declaration”).
The opponent filed no evidence in support, however the holder served evidence in answer on 11 July 2005, that being a Statutory Declaration sworn by Bernd Freier on 6 July 2005 with Exhibits BF-1 and BF-2 (“the Second Freier Declaration”). It is convenient to here mention that in this brief Declaration Mr Freier notes the opponent has said it is only proceeding in relation to the ground arising under s.41 of the Act. He accordingly attaches a copy of IP Australia’s “Notice of Acceptance” of 1 March 2004 on application 942425 and states his understanding that the Notice of Acceptance itself constitutes evidence that the Registrar of Trade Marks has already satisfied herself application 942425 meets the requirements of s.41.
By letter dated 3 October 2005 the opponent’s attorneys sought certain directions from the Registrar under Regulation “21.14” (obviously Regulation 5.16 was intended since Regulation 21.14 only deals with proceedings “other than opposition proceedings”) concerning the future conduct of the matter and sought an extension until 11 January 2006 for the opponent’s evidence in reply.
By letter dated 2 November 2005 the opponent’s attorneys advised that the opponent would not be lodging any evidence in reply and requested the matter be set down for hearing.
By letter dated 1 May 2006 and following input from both parties’ attorneys a delegate of the Registrar confirmed a hearing would be set down and also confirmed the following direction, to which both parties had earlier indicated their agreement:
“If, pursuant to reg 21.19, the hearing officer intends to take into account information contained in the declaration made by Bernd Freier on 23 December 2003 (‘the Freier declaration’), the hearing officer will make that declaration available to the opponent. The opponent will be given a reasonable opportunity to make representations and to file and serve further evidence in response to the Freier declaration. If the opponent does file and serve such evidence, the applicant will be given a reasonable opportunity to make representations and/or to file and serve evidence in response to the opponent’s further evidence.”
The matter was in due course heard before me in Canberra as a delegate of the Registrar of Trade Marks on 22 November 2007. Trevor Stevens of Davies Collison Cave of Sydney appeared for the Applicant and Tim Allen of Corrs Chambers Westgarth of Melbourne appeared via telephone on behalf of the Opponent.
Submissions
The thrust of Mr Allen’s submissions on behalf of the opponent was that since the opponent was opposing registration of the QS (Stylised) mark on the ground that “The opposed trade mark is not capable of distinguishing the Applicant’s goods” I could not in my role as Hearing Officer merely rely on any presumption that the mark was so capable, but rather was obliged, as Mr Allen put it, to make up my own mind on the issue. In doing so, said Mr Allen, I was unable to rely on evidence lodged by the holder with the original examiner of application 942425 prior to its acceptance, both because case law supported such a view and because of the above quoted direction in connection with the proceedings confirmed by the Registrar’s delegate on 1 May 2006.
Given the holder had not lodged any evidence in the opposition directly addressing the opposed mark’s capacity to distinguish its goods, Mr Allen submitted I was thus obliged to consider the issue based on IP Australia’s relevant policy as to the prima facie registrability of marks essentially consisting of two letters. This policy, he said, made it clear that “certain marks” were simply not registrable on a prima facie basis and that, while a mark essentially consisting of a single letter was obviously in this category, the opposed mark should also be seen as such a mark.
Mr Allen also referred to two relatively recent Office decisions, All-type Printing Pty Ltd v Peter Douglas (and others) [2006] ATMO 83 and Johnny Walker Pty Ltd v Chocolatier (Aust) Pty Ltd [2002] ATMO 105, as authorities for the proposition that where a properly advised applicant elects not to file evidence in answer to an opposition and this puts the applicant in a difficult position in defending the application then so be it. I note, incidentally, that both of these cases concerned oppositions based on s.44 of the Act.
On the holder’s part Mr Stevens firstly pointed out that, unlike the above two cases referred to by Mr Allen, in the present case the holder has filed evidence in answer in the proceedings and it is in fact the opponent that has filed no evidence at all. He also highlighted a minor discrepancy in the words used in ground 2 of the Notice (“the opposed trade mark is not capable of distinguishing the Applicant’s goods”) and the opponent’s attorneys’ subsequent advice that the opponent would only be pressing “the ground of opposition under s.41(5) of the Trade Marks Act 1995”, although I mention at this point that I have not considered this to be significant in reaching my decision.
The principal submissions made by Mr Stevens were, however, that there was significant and consistent case law with respect to oppositions under the Trade Marks Act 1995 (“the Act”) confirming that:
§the opponent bears the onus of establishing a relevant ground of opposition (Pfizer Products Inc v Karam (2007) 70 IPR 599 and Registrar of Trade Marks v Woolworths (1999) 45 IPR 411 cited);
§a decision to reject the application must be based on “positive satisfaction” that a relevant ground for so doing has been made out (Registrar of Trade Marks v Woolworths cited);
§the “presumption of registrability” applies to a mark in opposition proceedings no less than it does during the application stage (Pfizer Products Inc v Karam cited); and
§where the opponent files no evidence in support of a ground of opposition then that ground has not been made out and the applicant accordingly has no case to answer (Medley Distilling Co v Croakers Gully Australia Pty Ltd 53 IPR 430, Australian Cricket Board v Lilyana Holdings Pty Ltd 57 IPR 110 and Wal-Mart Stores Inc v Ozark-London Ltd 62 IPR 165 cited).
Mr Stevens further argued that the opposed mark might reasonably be considered to have sufficient inherent adaptation to distinguish the Applicant’s goods in any event. He referred to the well known test posited by Kitto, J in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 that the matter
“largely depend[ed] upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods”.
The opponent had not filed or pointed to any evidence that the letter combination QS was in common use, was descriptive, formed a relevant acronym or abbreviation, or was otherwise likely to be desired by other traders. The opponent had thus not discharged its onus of establishing its ground of opposition under s.41 and, particularly given the presumption of registrability, the opposition must fail.
Decision
In my opinion the authorities relied upon by Mr Stevens and mentioned above do indeed make it plain that an opponent bears the initial onus of establishing a relevant ground of opposition, at least on the balance of probabilities, before an applicant (or holder) would need to respond in defense of its application. In appropriate circumstances it is perhaps arguable an opponent might successfully discharge this onus in an opposition based on s 44 of the Act by relying on submissions alone and without filing evidence, provided the notice of opposition itself clearly specifies the earlier mark or marks relied upon. However in the present case I do not believe the opponent has discharged its onus by merely filing the notice of opposition, referring in submissions to non-specific Office “guidelines” contained in the “Australian Trade Marks Manual of Practice and Procedure”, and inviting me to take judicial notice, as it were, of the opponent’s personal proposition that a mark such as the opposed mark is manifestly incapable of distinguishing the holder’s goods. I thus do not consider the holder has a case to answer in this opposition.
I have found that the sole ground relied on in the notice has not been established and the opposition is therefore unsuccessful. I direct that protection of the trade mark QS (Stylised) be extended to Australia in respect of all of the goods listed in the IRDA, (Australian application number 942425), 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 protection shall not occur until the appeal has been decided or discontinued. If the Registrar has not been so served with a notice of appeal before that time the International Bureau will be notified of this decision as soon as practicable after the appeal period has ended, in accord with Regulation 17A.34(2).
Costs
As the successful party the holder is entitled to its costs and I award costs against the opponent as per Schedule 8 of the Trade Mark Regulations 1995.
Alison Windsor
Hearing Officer
Trade Marks and Designs Hearings
6 February 2008
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