Raymond Hoser v Stewart Gatt - [2019] ATMO 119

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 1897631 (classes 41, 44) - STEWY THE SNAKE CATCHER with cartoon snake device - in the name of Stewart Gatt.

Delegate:

Nicholas Barbey

Representation:

Opponent: Self-represented

Applicant: Written submissions prepared by Andrew Petale of Y Intellectual Property

Decision:

2019 ATMO 119

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

Background

This matter concerns an opposition brought by Raymond Hoser (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘the Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Stewart Gatt (‘the Applicant’):
Trade Mark:
(‘the Trade Mark’)
Application Number:  1897631
Filing Date:  28 December 2017
Services:Class 41: snake education; education services being in relation to snake awareness
Class 44: snake catcher services; reptile removal
(‘the Applicant’s Services’).
The application to register the Trade Mark was examined as required by s 31 of the Act and its acceptance was advertised in the Australian Official Journal of Trade Marks on 17 May 2018.
The Opponent filed a Notice of Intention to Oppose registration and a Statement of Grounds and Particulars on 17 May 2018.
On 22 May 2018, the Opponent was provided with written notice that its Statement of Grounds and Particulars was inadequate. The notice stated the ss 42 and 43 grounds were inadequately particularised and would be deleted if the Opponent did not amend or provide further information regarding same.
On 24 May 2018, the Opponent provided additional information to adequately particularise the s 42 ground and elected to delete s 43 as a ground of opposition. Accordingly, the rectified Statement of Grounds and Particulars (‘rectified SGP’) nominated grounds of opposition under ss 41, 42(b), 44, 58A, 60 and 62A.
The Applicant filed its Notice of Intention to Defend the Trade Mark on 6 July 2018.
The Opponent filed Evidence in Support (‘EIS’) and this was followed by the Applicant filing Evidence in Answer (‘EIA’). In turn, the Opponent filed Evidence in Reply (‘EIR’).
In due course both parties were advised of their right to request a hearing or to make written submissions. The Opponent requested an oral hearing and filed written submissions in two parts (collectively ‘the Opponent’s Submissions’). The Applicant chose to file written submissions (‘the Applicant’s Submissions’) prepared by Andrew Petale of Y Intellectual Property.
As a delegate of the Registrar of Trade Marks, I heard the matter in Canberra on 28 May 2019. The Opponent attended the hearing by telephone. The Applicant was not represented at the hearing and relied on its written submissions.

Grounds of opposition, onus…

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: [2019] ATMO 119
Decision Date: 2 August 2019

CaseChat Overview and Summary

This matter concerned a trade mark opposition proceeding before the Registrar of Trade Marks. The opponent, Raymond Hoser, sought to oppose the registration of trade mark application number 1897631 by the applicant, Stewart Gatt. Mr Hoser’s opposition was based on his registered trade mark, number 1436529, which covered services in classes 41 and 44, including education, training, entertainment involving animals, and pest control services, particularly relating to snakes and reptiles. Mr Hoser asserted his long-standing reputation and use of terms such as "snake catcher" in connection with his business.

The primary legal issue before the Registrar was whether Mr Hoser had established any grounds for opposing the registration of Mr Gatt's trade mark. This involved considering the extent to which Mr Hoser's existing trade mark rights and reputation, particularly in the term "snake catcher," might be infringed or prejudiced by the proposed registration. The Registrar also had to determine the appropriate outcome under section 55 of the *Trade Marks Act 1995* (Cth), which dictates whether to refuse or register a trade mark based on established grounds of opposition.

The Registrar found that Mr Hoser had not established any grounds for opposition. While Mr Hoser provided evidence of his extensive use of the term "snake catcher" and his reputation in the wildlife industry, this evidence was not sufficient to demonstrate that the registration of Mr Gatt's trade mark would cause confusion or otherwise infringe Mr Hoser's rights. The Registrar noted that much of the evidence presented by Mr Hoser related to unrelated legal disputes and did not have significant probative value for the present opposition. Consequently, the Registrar decided that the trade mark application could proceed to registration.

The Registrar ordered that trade mark application number 1897631 be registered one month from the date of the decision, unless an appeal was filed. If an appeal was filed, registration was to be stayed until the appeal was resolved. The Registrar also awarded costs against Mr Hoser in favour of Mr Gatt, following the general rule that costs follow the event.

Orders

Orders of the court

Full text does not contain this section.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

Section 55 of the Act relevantly provides:Decision(1) Unless subsection (3) applies to the proceedings, 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 Opponent has not established a ground of opposition. It follows that trade mark application number 1897631 may proceed to registration 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 the appeal has been decided or discontinued and the disposition of the application should be in accordance with the court’s order or direction. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. Accordingly, I award costs against the Opponent as per s 221 of the Act in the amounts set out in Schedule 8 of the Trade Mark Regulations 1995 (Cth).

Ratio Decidendi

Legal Principle Established

The Opponent has been operating a registered business in the wildlife space since the early 1980s and they are also the owner of the following Australian trade mark registration (‘Hoser Registration’):Trade Mark: Owner: Raymond HoserRegistration Number: 1436529Priority Date: 13 July 2011Services:Class 41: education, training, courses, entertainment, involving, but not limited to, animals of all kinds including metazoan; the foregoing including all forms of entertainment, sporting and cultural activities including using relevant and available technologies and media, such as, but not limited to, online or part-page; educational and entertainment activities in relation to wildlife, controller, catcher, demonstrator, displayers, zoos, and education type permits; parties, events, displays, shows, incursion and mall shows; providing entertainment and educational information; teaching including hands on, verbal and including the provision of educational informationClass 44: pest control; pest control consulting; removal of unwanted snakes, reptiles and other wildlife from private premises of persons, companies and other entities in accordance with state and federal wildlife laws, as well as provision of information on such reptile related matters, including general zoological and reptile-related consultancy work Hoser 1 canvasses the Opponent’s use of the term ‘snake catcher’ and describes the Opponent as the ‘go to’ person for snake catcher related news. Hoser 1 also speculates on the history of prior use of the Trade Mark under s 44(4) of the Act as the Opponent erroneously believes the Trade Mark was accepted under this provision. Hoser 2 replies to various claims made in the Gatt Declaration, many of which are immaterial to the present matter. It provides further evidence regarding the Opponent’s reputation in various monikers incorporating the word ‘snake’ including ‘snakeman’, ‘snakebusters’ and ‘snake catcher’. Hoser 3 discusses a pending Federal Circuit Court proceeding instituted by the Opponent against a third party together with a settlement deed executed between the Opponent and that third party. Further discussion of this material is not required. The Applicant is not a party to either matter and the information before me in relation to those matters is not relevant to my decision. Similar considerations are applicable to the content of Hoser 5 which concerns a legal dispute between the Opponent and another third party. Hoser 4 contains instances of alleged consumer confusion between the Opponent and the Applicant. Four telephone recordings were exhibited – three between the Opponent and unidentified third parties. The remainder being a conversation between the Applicant and an unidentified third party. The recordings do not provide significant insight to the present matter as three of the recordings do not make any reference to the term ‘snake catcher’. The final recording, which does reference the term ‘snake catcher’, is insufficiently particularised[4] to carry any significant probative value.[4] See discussion at [62] of this decision.