Re: Opposition by Carbar Holdings Pty Ltd to registration of trade mark application 1837603 (11) - Carbar in the name of Shenzhen Fengduzhihui Vehicle Lamps Co., Ltd

[2020] ATMO 8

TRADE MARKS ACT 1995

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

Re:      Opposition by CARBAR HOLDINGS PTY LTD to registration of trade mark application 1837603 (11) – CARBAR - in the name of Shenzhen Fengduzhihui Vehicle Lamps Co., Ltd.

Delegate:

Nicholas Smith

Decision on the Written Record

Decision:

2020 ATMO 8

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 41, 42, 43, 58, 59, 60 and 62A considered – none established – trade mark to proceed to registration

Background

This decision concerns an opposition brought by CARBAR HOLDINGS PTY LTD (‘Opponent’) 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 Shenzhen Fengduzhihui Vehicle Lamps Co., Ltd (‘Applicant’): 

Application Number:

1837603

Filing Date:

11 April 2017

Goods:

Class 11: Lights for automobiles; Lights for vehicles; Anti-glare devices for vehicles (lamp fittings); Headlights for automobiles; Bicycle lights; Light bulbs for directional signals for vehicles; Vehicle headlights; Vehicle reflectors; Lighting apparatus for vehicles; Anti-dazzle devices for automobiles (lamp-fittings); Lamps for directional signals of automobiles

(‘Applicant’s Goods’)

Trade Mark:

CARBAR

(‘Trade Mark’)

Following the advertisement on 7 September 2017 in the Australian Official Journal of Trade Marks of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 6 November 2017.  The Opponent then filed a Statement of Grounds and Particulars (‘SGP’) on 12 December 2017 which raised grounds of opposition under ss 41, 42(b), 43, 58, 59, 60 and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 15 January 2018.

Neither party filed any evidence or submissions in respect of the opposition.

I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that (unless the proceedings are discontinued, dismissed, or have lapsed under s 54A) the Registrar must, at the end of the opposition proceedings, 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.  In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs, which in this case consists of the SGP.

The Parties

As neither party has provided any evidence, I cannot provide any information about the parties other than what is set out on the Register, namely that the Applicant is a company based in China that has applied for the Trade Mark. 

Grounds of Opposition, Onus and Standard of Proof

As indicated above in the SGP the Opponent nominated grounds of opposition under ss 41, 42, 43, 58, 59, 60 and 62A of the Act. To successfully oppose the application the Opponent needs to establish at least one of those grounds. The onus of proof in an opposition rests upon the Opponent. The relevant standard of proof is the ordinary civil standard based on the balance of probabilities. The date at which the rights of the parties are to be determined is 11 April 2017 (‘relevant date’), being the filing date of the application in Australia (except in circumstances not present here, in which a different priority date is provided for in the Act).

With the exception of ss 41, 42 and 43 (discussed below), as the Opponent has filed no evidence and provided no submissions I have no hesitation deciding that the Opponent has not discharged the onus on it and have consequently not to any extent established any of the other grounds of opposition nominated in the SGP (namely ss 58, 59, 60 and 62A of the Act). The mere filing of the Notice of Opposition (which is done by filing a Notice of Intention to Oppose and a SGP), without any supporting evidence or submissions does not serve to place the onus on the Applicant to defend its application.

With respect to the s 42 ground of opposition, the Opponent has particularised the ground of opposition in the SGP by suggesting that the use of the Opponent’s Trade Mark would be contrary to law including the Act, the Competition and Consumer Act 2010 (Cth) and the common law action of passing off. In the absence of any evidence or submissions on this ground as particularised, this ground of opposition cannot succeed. I find that the Opponent has not established the ground of opposition under s 42 of the Act.

With respect to the Opponent’s s 43 ground of opposition, the Opponent has particularised the ground of opposition in the SGP by alleging the existence of a trade mark owned by the Opponent and its use on particular goods. As the opponent has provided no evidence or submissions to support its particulars, I also find that the Opponent has not established the ground of opposition under s 43 of the Act.

Discussion

Section 41

Section 41 of the Act is set out below:

41 – Trade Mark not distinguishing applicant’s goods or services

(1)        An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

Note:      For goods of a person and services of a person see section 6.

(2)        A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

(3)        This subsection applies to a trade mark if:

(a)     the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b)     the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

(4)        This subsection applies to a trade mark if:

(a)     the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b)     the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

(i)        the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

(ii)        the use, or intended use, of the trade mark by the applicant;

(iii)       any other circumstances.

Note 1:    Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

(b) the time of production of goods or of the rendering of services.

Note 2: For goods of a person and services of a person see section 6.

Note 3: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).

(5)        For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

Note 1: For applicant and predecessor in title see section 6.

Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the

Paraphrasing what the Hearing Officer said in Pacific Magazines Pty Ltd v Bauer Consumer Media Ltd:

[T]he Opponent bears the onus of establishing its s 41 ground of opposition. However, its onus is effectively limited to satisfying me that the [Trade] Mark is not sufficiently adapted to distinguish the Applicant’s Goods as to qualify for registration on that basis alone, being the issue addressed in particular by s 41(3) [as it stood prior to the Amending Act.]

The ground based on s 41 of the Act is particularised in the SGP as follows:

Trade Mark Number 1837603 (the 'Opposed Trade Mark') is not capable of distinguishing any or all of the Applicant's goods and/or services from the goods and services of the Opponent and/or other persons, taking into account that the Opposed Trade Mark is visually, aurally and conceptually identical and/or similar to various trade marks established by the Opponent that incorporate the term 'carbar' ('Opponent's Established Trade Mark'). Traders in the motor vehicle/car and related motor vehicle /car accessories industries industry are likely to need to use 'carbar' (or derivatives of 'carbar' thereof) to describe their motor vehicles/cars and related accessories.

In the absence of any evidence or submissions from the Opponent, I do not find that the Opponent has made any use of or has any reputation in any trade mark that incorporates the term ‘carbar’. In any event such reputation is irrelevant to the test under s41.

Furthermore, there is no evidence before me of any ordinary meaning of the word ‘carbar’ in respect of the Applicant’s Goods or any desire of other traders to use such a word to describe their products. In such circumstances, bearing in mind the presumption of registrability, I find that the Opponent has failed to establish the ground of opposition under s 41 of the Act.

Decision

The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade Mark application no. 1837603 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

Oppositions and Hearings

23 January 2020