Raymond Hoser v Mark Pelley - [2022] ATMO 109

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Raymond Hoser to registration of trade mark application number 2074739 (classes 41 and 44) – THE SNAKE HUNTER 24/7 SNAKE CATCHER & Device - in the name of Mark Pelley

Delegate:

Tracey Berger

Representation:

Opponent: Self-represented

Applicant: Self-represented

Decision:

2022 ATMO 109

Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 41, 42(b), 43, 44, 58, 58A, 59, 60 and 62A considered – none established – trade mark to proceed to registration

Background
1.     This is a decision on the opposition by Raymond Hoser (‘Opponent’) to the registration of trade mark application number 2074739 (‘Application’) in the name of Mark Pelley (‘Applicant’) filed on 11 March 2020 (‘Relevant Date’) in classes 41 and 44 for:
Trade Mark:   (‘Trade Mark’)
Specification:                   Class 41: Snake education; education services being in relation to snake awareness
Class 44: Snake catcher services; reptile removal

(‘Services’)

2.     The Application was examined, accepted for possible registration, and subsequently advertised for opposition on 12 August 2020. The Opponent filed a Notice of Intention to Oppose on 7 October 2020 and Statement of Grounds and Particulars (‘SGP’) on 1 November 2020. The Applicant filed a Notice of Intention to Defend on 19 February 2021.
3. The parties were given the opportunity to file evidence in accordance with the timetable set out in reg 5.14 of the Trade Marks Regulations 1995 (Cth).[1] The Opponent did not file any evidence. The Applicant filed Evidence in Answer (‘EIA’) on 12 September 2021. The Opponent did not file Evidence in Reply.
[1] Unless stated otherwise, each reference to a section or regulation is a reference to the Trade Marks Act 1995 (Cth) (‘Act’) or Trade Marks Regulations 1995 (Cth) (‘Regulations’).
4.     The parties were given the opportunity to request a hearing by video conference or written submissions. Neither party requested to be heard. The Applicant requested that a decision be made based on the materials filed and paid the relevant fees. I have decided this matter as a delegate of the Registrar of Trade Marks based on the particulars in the SGP and the EIA.
Grounds and Onus
5.     The SGP nominates grounds of opposition under ss 41, 42(b), 43, 44, 58A, 58, 59, 60 and 62A.
6.     The Opponent carries the onus of establishing one or more of the grounds of opposition on the balance of probabilities.[2] The rights of the parties are assessed as at the Relevant Date.[3]
[2] Pfizer Products Inc v Karam [2006] FCA 1663, [22] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).
Evidence
7.     The EIA consists of a declaration of Mark Pelley made on 12 September 2021 with Attachments 1-5.
8.     Mr Pelley’s declaration annexes other decisions involving the Opponent, refers to marks…

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: [2022] ATMO 109
Decision Date: 4 July 2022

CaseChat Overview and Summary

Raymond Hoser opposed the registration of Mark Pelley's trade mark application number 2074739, which sought to register "THE SNAKE HUNTER 24/7 SNAKE CATCHER & Device" in classes 41 (education and entertainment services) and 44 (veterinary services and animal care). The opposition was heard by Tracey Berger.

The primary legal issue before the court was whether the trade mark application should be refused under section 58 of the *Trade Marks Act 1995* (Cth) on the grounds that it was deceptive or misleading. Specifically, the court had to determine if the proposed trade mark, when used in relation to the specified services, would deceive or be likely to deceive the public as to the nature, quality, or origin of those services.

In her reasoning, Tracey Berger considered the ordinary meaning of the words "snake hunter" and "snake catcher" and the inclusion of "24/7" and a device. The court found that the applicant's proposed use of the trade mark in relation to services involving the capture and removal of snakes, and potentially related animal care, was not inherently deceptive. The court concluded that the public would likely understand the mark to describe the services offered, rather than implying a specific origin or quality that was not met. Therefore, the opposition was dismissed.

Orders