Re: Opposition by Phillibourne Pty Ltd to registration of trade mark application number 1875376 (class 7) - iPaddock Industries Turbodrum (Figurative) in the name of IP Machinery Pty Ltd

[2020] ATMO 111

TRADE MARKS ACT 1995

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

Re:Opposition by Phillibourne Pty Ltd to registration of trade mark application number 1875376 (class 7) – iPaddock Industries Turbodrum (Figurative) - in the name of IP Machinery Pty Ltd.

Delegate:	Kate Doherty
Representation:	Opponent: Corrs Chambers Westgarth Applicant: S Rebikoff of Counsel, instructed by The Loft Legal
Decision:	2020 ATMO 111 Trade Marks Act 1995 (Cth) – opposition pursuant to section 52 – Grounds of opposition pursued ss 43, 58 and 62A; none stablished; trade mark will proceed to registration.

Background

1. IP Machinery Pty Ltd (‘the Applicant’), filed trade mark application number 1875376 on 17 October 2017 in class 7 of the International Classification of Goods and Services. The current details of the application are set out below:

Trade Mark No:               1875376

Trade Mark:    (‘Trade Mark’)

Words:  IPADDOCK INDUSTRIES TURBODRUM

Filing date:   17 October 2017

Applicant:  IP Machinery Pty Ltd

Specification of Goods: (at time of filing):  Class 7: Agricultural apparatus (other than tractors); Agricultural implements, other than hand-operated; Agricultural machine tools; Agricultural machines; Agricultural machines for cultivating; Agricultural machines for fertilising; Agricultural machines for harvesting; Agricultural machines for soil working; Agricultural machines for sowing; Agricultural spraying machines; Apparatus for agricultural use (machines); Mechanical control apparatus for agricultural machines; Ploughs being agricultural machines; Towable agricultural machines

1. The Trade Mark was advertised accepted on 8 March 2018.  Notices of Opposition were filed on 8 May 2018, and  Statements of Grounds and Particulars (‘SGP’) on 8 June 2018 by Apple Inc, as well as by Phillibourne Pty Ltd (‘the Opponent’).  On 20 October 2017, the Applicant filed a Notice of Intention to Defend the Oppositions.  A cooling off period then took place.  Evidence was filed by both parties in accordance with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).

2. I heard the Phillibourne Pty Ltd opposition in Canberra as a delegate of the Registrar of Trade Marks on 6 March 2020. The Opponent was represented by Corrs Chambers Westgarth. The Applicant was represented by S Rebikoff of Counsel, instructed by The Loft Legal.

3. The SGP nominates the grounds of opposition ss 43, 58, 60 and 62A.  The s 60 ground was not pursued at the hearing.

Evidence

1. Summary of evidence received from the Opponent.

Declarant	Party	Evidence Stage	Date	Annexures	Decision Reference
L Phillips	Opponent	EIS	15 November 2018	1-19	First Phillips Declaration
T Provost	Opponent	EIS	15 November 2018	1	Provost Declaration
M Fels	Applicant	EIA	29 February 2019	1-51	Fels Declaration
J White	Applicant	EIA	27 February 2019	James Declaration
J Buttle	Applicant	EIA	26 February 2019	Buttle Declaration
M Curnow	Applicant	EIA	25 February 2019	Curnow Declaration
B White	Applicant	EIR	27 February 2019	Benjamin Declaration
L Phillips	Opponent	EIR	19 July 2019	20-23	Second Phillips Declaration

The declarations annex evidence which includes copies of: product images, social media posts, advertisements, and email correspondence.

The Opponent’s Evidence

1. The Opponent commenced operating in 1992 and developed a reputation for farming products, particularly for machines that collect and feed cut crops into the thresher of harvesters.1F[1] These goods are often referred to as ‘pick ups’ and that terminology is used in this decision.  A chronology of the Opponent’s evidence is as follows:

   [1] First Phillips Declaration, [7].

   a)    Since 1992 the Opponent supplied products throughout Australia with the ‘Phillbourne Merredin (WA)’ brand.2F[2]

   [2] Ibid. [5].

   b)   From 1995 until 2008, Phillbourne manufactured and supplied a pick up package called the ‘Phillips Swathmaster’.3F[3]  The ‘Phillips Swathmaster’ contains a part called a ‘feed drum’ which is designed to deliver cut crop into the thresher.

   [3] Ibid, [10]-[12].

   c)    Since 1995, the Opponent has also manufactured and supplied these feed drums as standalone goods named ‘Phillips False Front’.4F[4]

   [4] Ibid, [13].

   d)   In 2008, additional improvements were made to the Phillips Swathmaster pick up design and the improved design was named the ‘Phillips Rollerdown’.  That pick up has been manufactured and supplied by Phillbourne since that time.

   e)   The Opponent sells all their products with a Phillbourne branded sticker, reproduced here:

   f)    On or around 5 August 2016, Mr Phillips received a call from Michael Fels who requested that Mr Phillips build a retrofit table auger (a feed drum) based on  ‘Phillbourne False Front’ design which could fit a Macdon® D60 and D65 combine harvesters to improve performance, particularly for working with canola.5F[5]

   [5] Ibid, [17].

   g)    Mr Fels advised Mr Phillips by email that he was confident that if Mr Phillips could make the new feed drum that he was sure he could find several other farmers to purchase the product and that it was likely there would be a large market for this new range of feed drums6F[6].

   [6] Ibid, Annexure 3.

   h)   In August 2016, Mr Phillips states that he came to an agreement with Mr Fels on behalf of the Opponent to redesign the Phillbourne Feed Drum to fit the Macdon® D60 and D65 combine harvesters and that the Opponent would manufacture the redesigned feed drums to meet customer orders. Mr Fels would supply to the Opponent sales and marketing services for the purpose of maximising customer orders of the Opponent’s redesigned feed drums.7F[7]

   [7] Ibid, [20].

   i)    For the Applicant’s marketing and sales services the Opponent would pay the Applicant an amount that was equal to a percentage of the net sales revenue received from the sales of the redesigned feed drums. 8F[8]

   [8] First Phillips Declaration, Annexures 4 and 5.

   j)    From August to October 2016, Mr Phillips states that he redesigned the Opponent’s feed drums to fit Macdon® D60 and D65 combine harvesters.

   k)    In October 2016 the redesigned feed drum was offered for sale, and on 25 November 2016 the first sale occurred.9F[9]  

   l)    During October/November 2016, Mr Fells commenced referring to the drum as MICFELLSDRUM. The Opponent did not like the name and wanted to change it.  In December 2016 Mr Fells suggested TURBODRUM which the Opponent agreed to.  Since that time the redesigned drums were sold with the name TURBODRUM.10F[10]

   m)    On 15 December 2016 the Opponent made the first sale of a feed drum bearing the name TURBODRUM. 11F[11]

   n)   On 20 December 2016 Mr Fels advised the Opponent that the website for sales of the feed drums was successfully launched and that he would notify the Opponent once sales were recorded.12F[12]

   o)   On 22 December 2016, both parties paid for the first print advertisement of the feed drum to be placed in the Farm Weekly magazine. 13F[13] Following this and until the 30 September 2017 the Opponent and Applicant placed over 20 advertisements for TURBODRUM in various newspapers or magazines.14F[14]

   p)   The Opponent’s stickers as seen above at [6(e)] were applied to the feed drums.  A new sticker was redesigned after both parties expressed a desire that neither party should have a more prominent position within the sticker design. 15F[15]

   q)   From April 2017 until September 2017 the TURBODRUMs were sold and branded with the newly redesigned sticker, shown here:

   r)    A number of Agricultural Shows were attended by the Opponent with the TURBODRUM, and the feed drum acquired some recognition and awards. 16F[16]

   s)    In August 2017 the Opponent became aware that the Applicant was claiming ownership of the rights to both the TURBODRUM design and Trade Mark. 17F[17]

   [9] First Phillips Declaration, [25].

   [10] First Phillips Declaration, [24].

   [11] First Phillips Declaration, Annexure 7.

   [12] First Phillips Declaration, Annexure 8.

   [13] First Phillips Declaration, Annexure 9.

   [14] First Phillips Declaration, Annexures 10 and 11.

   [15] First Phillips Declaration, Annexure 12.

   [16] First Phillips Declaration, Annexure 17.

   [17] First Phillips Declaration, Annexures 18 and 19.

The Applicant’s Evidence

1. The Applicant’s evidence seeks to characterise the level of the Opponent’s involvement in the design and development of the TURBODRUM feeder drum.  Much of the evidence relates to the role each party had into the design of the goods and ownership of the design of the feed drum, rather than the Trade Mark.  

2. Mr Fels disputes the nature of the agreement between the parties as described by Mr Phillips and states that while an agreement was confirmed between the parties around 17 November 2016 it was not for the Opponent to manufacture redesigned feed drums and pay Mr Fels a percentage of the sales for marketing and sales services.[18]  Mr Fels states that it was a case of the Opponent manufacturing feed drums as designed by the Applicant and that he would receive a percentage of sales as a licence royalties from the Opponent.[19]

   [18] Fels Declaration [35]-[36], [39], [40], [94], [103]; Buttle Declaration [8]-[9]; Crunow Declaration [3]-[4].

   [19] Second Phillips Declaration [18]-[20].

3. The Fels declaration states that the Applicant trades under the name ‘iPaddock’ and ‘iPaddock Industries’ and that under these names the Applicant designs and sells agricultural machinery and software related to farming.[20]

   [20] Fels Declaration, [10].

4. Mr Fels states that under the ‘iPaddock’ brand there are a number of farming goods bearing trade marks including the TURBODRUM feed drum, including a system for picking up and transferring grain which is sold with the following trade mark:

[21] Trade Mark 1882505, Filed 21 November 2017, iPaddock Industries Unstacker (Figurative); Fels declaration, Annexure 31.

0B1BApplicant’s Other Mark8F18F[21]

1. The evidence of Mr Fels in regards to development of the feed drum and Trade Mark correlates with dates proposed by the Opponent in regards to: first sales, website launch, advertising and email correspondence between the parties.

2. A chronology of the Applicant’s evidence is as follows:

a)On 17 November 2016 Mr Fells states he first used the term TURBODRUM, this was in a social media post on the Twitter platform.19F[22]

b)During November 2016 the parties discussed various names for the feed drum by email.20F[23]

c)On 16 December 2016, Mr Fels engaged graphic designer, James White, to design a TURBODRUM logo for the feed drums as well as design an advertisement.[24]

d)According to Mr Fels the TURBODRUM logo that Mr White designed was created with the same stylisation as the Applicant’s other marks.  Specifically, utilising the ‘arrow’ element and the green strike to convey a message of speed. The ‘iPaddocksindustries’ with leaf design element is placed superiorly to indicate a house brand.

e)The stylisation of the first design that Mr White created at Mr Fels request in the Trade Mark was used for the iPaddock ‘Unstacker’ trade mark as seen above at paragraph nine.  The same stylisation was also applied to the Applicant’s iPaddock ‘Alpha Disc’ goods.21F[25]

f)Mr Fels agrees that he sought input from the Opponent in relation to the placement of the expression ‘Manufactured by Phillbourne’ within both the stickers applied to the goods and advertisements for the redesigned feed drums.22F[26]

[22] Fels declaration, Annexure 26.

[23] Fels declaration, Annexure 28.

[24] Fels Declaration, [141].

[25] Fels declaration, Annexure 31.

[26] Fels declaration, Annexure 32.

Onus and Standard of Proof

1. The relevant standard of proof is the civil standard, or ‘on the balance of probabilities’.1F23F[27]  The evidential burden is reversed once evidence is filed which supports the s 58 ground of opposition but only in relation to the time prior to the date of filing the application for registration.

   [27] Pfizer Products Inc v Karam (2006) FCA 1663 per Gyles J at [6] to [26].

2. The Opponent bears the onus of proof in an Opposition Hearing.2F24F[28]  The application will succeed if a nominated ground is established.  The rights of the parties are determined at the date of filing the application, the relevant date is 17 October 2017.  For the s 58 ground any use before this date will be considered.3F25F[29]

   [28] Food Channel Network Pty Ltd v Television Food Network GP (2010) FCAFC 58 [32].

   [29] Trade Marks Act 1995 (Commonwealth), s7.

Application to Amend Grounds

1. Unusually, the Opponent sought to amend the SGP by inserting the s 59 ground of opposition into the written submissions which were filed on 21 February 2020.  I heard oral submissions in relation to this issue at the commencement of the hearing.

2. The Applicant raised r 5.12 of the Regulations, as well as the likely prejudice arising from, and lack of explanation for, the delay in providing notice of the intention to rely on the ground.

3. The Opponent stated that the alleged behavior they sought to rely upon in support of the ground did not arise until October 2019.  No reasons were provided to explain the delay in providing notice to the Applicant in relation to the time which elapsed between October 2019 and the submissions being filed in February 2020.

4. No reasons were forthcoming to explain the interim delay, and it was therefore not possible to avoid the apprehension of serious prejudice to the Opponent.  Further submissions pursuant to the s 59 ground were not permitted.

Grounds of Opposition

Section 58 – Applicant not owner of trade mark

1. Section 58 of the Act provides:

   58 Applicant not owner of trade mark

   The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note: For applicant see section 6.4F26F[30]

[30] Section 6 Definitions: applicant in relation to an application, means the person in whose name the application is for the time being proceeding.

1. To establish a ground of opposition pursuant to s 58, the Opponent must establish:

   ·   the respective trade marks of the Applicant and Opponent are either identical or substantially identical,27F[31]

   ·   the respective goods on which the trade marks have used  are the ‘same kind of thing’ as the Applicant’s goods28F[32]

   ·   the Opponent has the earlier claim to ownership based on authorship29F[33] and use of their trade mark prior to both the filing of the application and any actual use of the Trade Mark by the applicant.30F[34]

   [31] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd (1994) 120 ALR 495; 31 IPR 375.

   [32] Re Hicks’ Trade Mark (1897) 22 VLR 636, 3 ALR 75.

   [33] Authorship in that sense involves the origination or first adoption of the word as and for a trade mark Aston v Harlee Manufacturing Company [1960] HCA 47; (1960) 103 CLR 391 [399].

   [34] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 [413].

2. Neither party has made submissions that the goods on which the Opponent has used a relevant trade mark are not the ‘same kind of thing’ as the Applicant’s goods.

3. Therefore, I am now required to decide if the Opponent has used an identical or substantially identical mark to the Trade Mark. The test for substantially identical is to compare the trade marks:31F[35]

   side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.

   [35] The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1961) 109 CLR 407 per Windeyer J [414].

4. The respective marks to be compared are as follows:

The Trade Mark Opponent’s Claimed Mark

1. The Trade Mark has the term ‘Turbodrum’ in capitalised, right leaning letters. There is a green strike through, and the letters blur or fade to the left almost giving the illusion of motion.  I find the dominant cognitive features are the unique stylisation and the words ‘iPaddock Industries’ with the distinct leaf design.  The Opponent’s claimed trade mark is a reproduction of the Applicant’s except that it includes ‘MANUFACTURED BY PHILLBOURNE’ at the right, inferior part of the design. I am satisfied that the Trade Mark and the Opponent’s trade mark are substantially identical.

2. The evidence has also established that the Applicant engaged graphic designer, James White, to design the Trade Mark in the similar style to other trade marks already in use by the Applicant. This includes the Applicant’s Other Mark, depicted above at paragraph nine.

3. For goods in Class 7, I am satisfied that the terms ‘Turbodrum’ and ’Unstacker’ would be assumed by a reasonable Australian consumer to indicate a functionality of the goods.  The terms are therefore highly descriptive in relation to farm machinery and equipment. 

4. There is an arrow shape in the Applicant’s Other Mark all other details of the marks are shared.  It is therefore possible to find the Applicant’s other marks substantially identical due to the design of the arrow and strike through as well as the superior placement of the distinctive term ‘iPaddockIndustries’ with a leaf design.9F32F[36]  

   [36] PB Foods v Malandra DairyfoodsLtd (1999) 47 IPR 47 (FC).

5. It is now necessary to consider is whether the Opponent has the earlier claim to ownership based on authorship and use of their trade mark prior to the filing of the application or any actual use of the Trade Mark by the Applicant. 33F[37]

   [37] Authorship in that sense involves the origination or first adoption of the word as and for a trade mark Aston v Harlee Manufacturing Company [1960] HCA 47; (1960) 103 CLR 391 [399].

The Opponent’s Prior use of the Trade Mark before filing. 

1. The Trade Mark must be used as a trade mark with actual dealing in the goods to establish local use.12F34F[38]  The Opponent’s Claimed Mark was used in advertising in the Farm Weekly periodical on 22 December 2016.  This predates the priority date of the Trade Mark application.  This use is use of a Trade Mark pursuant to s 7, but is not determinative of ownership.

   [38] Moorgate Tobacco Co. Limited v Phillip Morris Limited and Another (1984) 156 CLR 415 [23].

2. I have found the word ‘Turbodrum’ is a descriptive word, any use of this plain word on social media or invoices does not constitute use of the Trade Mark.  The plain word ‘Turbodrum’ is not substantially identical to the Trade Mark.  The Trade Mark contains the additional iPaddock Industries and leaf design feature, as well as heavily stylised text.  The term ‘Turbodrum’ alone is highly descriptive, describing a drum shaped draper: with the plain word ‘turbo’ often used as a prefix to indicate a powerful version of a thing.

3. The Opponent sought to rely on the reasoning in the James North Aust Pty Ltd v Blundstone Pty Ltd.  I find that decision is distinguished by the factual matrices as the possible market is likely to be far larger for footwear than farm machinery, with vastly different sales channels, and a high levels of discernment by sophisticated buyers when purchasing expensive specialist machinery.35F[39] 

   [39] NSWSC (1978) per Holland J.

Prior use of the Applicant’s Other Marks before filing. 

1. Correspondence between the Applicant and a designer asserts the other two designs for the ‘Unstacker’ and ‘Alphadisc’ marks were created around November 2013.13F36F[40]  The Alphadisc mark is stylised in an identical fashion to the Trade Mark with the same font, strikethrough, proportions and inclusion of the text iPaddock and circle in a leaf device.  On the balance of probabilities, the Alphadisc mark is also substantially identical, varying only in the substitution of another descriptive term.  There is no evidence of use as a trade mark before me for this unregistered mark.  In addition to ‘Unstacker’ and ‘Alphadisc’, the Applicant also asserts ownership of the iPaddock: Yield, Spray and Rain software application marks14F.37F[41]

   [40] White Declaration at [4]-[5]; Fels Declaration – MF 31.

   [41] Trade Marks Act 1995 (Commonwealth), s 51.

1. Much of the evidence before me relates to the functionality of farming machinery as well as correspondence in relation to ideas for intellectual property.  An email dated 3 February 2017 to the Opponent from the Applicant, and its response refer to the Trade Mark and use the term ‘we’ in relation to choosing the mark, and risk associated with the mark.  As well as referring to the mark as ‘our’.15F38F[42]  On the evidence before me I cannot be satisfied that the Opponent used its substantially identical trade mark before the Applicant used the Trade Mark in the course of trade or filed the application for the Trade Mark.

   [42] Fels Declaration – MF-28; The Act, s 7.

2. I am satisfied that the Applicant is the first user of the Trade Mark in Australia. and I find that the s 58 ground of opposition has not been established.

Section 62A – Application made in bad faith

Section 62A of the Act provides:

62A Application made in bad faith

The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

1. This ground is not a catch-all provision for any unscrupulous behavior which may have occurred between the parties.  Only bad faith, fraud, misconduct or deception in relation to the Trade Mark application will be relevant.

2. Section 62A is discussed in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) per Kenny J:3F18F39F[43]

   By September 2004, Mr Fry, a director of Fry Consulting, was well aware of Sports Warehouse’s online retail store and the fact that Sports Warehouse sold goods to Australia through that website.  His visits to that online retail store led him to cause Fry Consulting, in September 2004, to register the business name “Tennis Warehouse”; to register the domain name and to set up an online tennis retail store at that domain name in competition with Sports Warehouse.  Mr Fry adopted the name knowing that it would cause confusion between Fry Consulting’s and Sports Warehouse’s online stores.  Indeed, the potential for such confusion was why he chose the name.  Furthermore, in developing the Fry Consulting website, Mr Fry took images from the Sports Warehouse website.

   [43] [2012] FCA 81 [62].

3. The Opponent has particularised this ground of opposition in the SGP as follows:

   The Applicant has filed a patent application in relation to an alleged invention in relation to which the Applicant intends to use the mark the subject of the Opposed Application.

   The Applicant is not entitled to be the sole owner of a patent in relation to the alleged invention, if that alleged invention is properly the subject of a patent registration of any type (about which the Opponent makes no concession).

   Michael Fels of the Applicant was involved in development of harvesting machinery with the Opponent, although the primary development was conducted by the Opponent and its principal Laurence Phillips.

   The Applicant has filed the Opposed Application as part of a mala fides attempt to misappropriate the entirety of the work of the Opponent and Mr Phillips.

4. A large amount of evidence has been filed by both parties in relation to the functionality and features of different items of farming machinery and software.  Evidence in relation to the novelty of an invention is not relevant for the assessment of a Trade Mark Application.

5. The Applicant provides a story as to how they derived the concept for the name in the Trade Mark.  The Opponent does not provide an assertion for how the Trade Mark name was devised.  The Applicant has submitted that the relationship between the parties is characterised as a contract manufacturing agreement.19F40F[44]  The Opponent has characterised the relationship as a contract marketing agreement.20F41F[45]  A great deal of the promotional literature and internal correspondence refers to the relationship between the parties as a ‘joint venture’, ‘partnership’, and ‘collaboration’.[46] 

   [44] Fels Declaration [35]-[36], [39], [40], [94], [103]; Buttle Declaration [8]-[9]; Crunow Declaration [3]-[4].

   [45] Second Phillips Declaration [18]-[20].

   [46] Fels Declaration, Annexure-28.

6. The perceived expertise of each respective party by the other party at the time of the application is clear, it is not possible on the material before me to determine that the primary intention for the application was not to protect the trademark from misuse by entities or individuals outside the parties to this opposition hearing.  There was clearly an intention to create a business relationship which deteriorated over time, as detailed in the respective chronologies of the parties evidence at paragraphs six and 11 above.

7. For IP rights, assignments must be in writing.  A Deed of Assignment dated 14 November 2019 is in evidence, this does not assist with establishing whether the Trade Mark was validly filed on 17 October 2017.21F42F[47]  The Deed seeks to permit Mygrain Solutions and their employee Michael Fels assign to IP Machinery all trademarks and patents, including wordmark for TURBODRUM filed 13 October 2017, Trade Mark number 1880059.22F43F[48]

   [47] Fels Declaration, Exhibit 4.

   [48] Fels Declaration [8] and Annexure One.

8. I am not satisfied that at the date of application for the Trade Mark the Applicant’s conduct fell short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons.23F44F[49]  

   [49] DC Comics v Cheqout Pty Ltd [2013] FCA 478; 212 FCR 194 [77].

9. I find that the s 62A ground of opposition is not established.

Section 43 – Trade mark likely to deceive or cause confusion

Section 43 of the Act provides:

43 Trade mark likely to deceive or cause confusion

An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

The Opponent has particularised this ground of opposition in the SGP as follows:

The Opposed Application is likely to deceive or cause confusion in the marketplace because it has previously been used in its exact same form, with “MANUFACTURED BY PHILLBOURNES” incorporated into the trade mark.

1. For this ground to be established manner or extent of use, reputation and similarity to other marks are not relevant.  Only the inherent qualities of the Trade Mark are relevant here, any comparison with the reputation of the previous composite mark which included a stylised form of the term ‘Manufactured by Phillbournes’ would only be relevant pursuant to the s 60 ground of opposition.  That ground was abandoned at the commencement of the oral hearing.

2. The evidence does not establish any clear connotation which would cause a real and tangible likelihood of confusion that would displace the presumption of registrability.24F45F[50]

   [50] Dunn’s Trade Mark (1890) 7 RPC 311 [318].

3. I find that the s 43 ground of opposition has not been established.

Decision

1. The Opponent has not established a ground of opposition.  Pursuant to section 55(1), the Trade Mark number 1858413 will proceed to registration not less than one month from the date of this decision.

2. The parties may appeal this decision to the Federal Court in accordance with s 56 of the Act.  If the Registrar has been served with notice of appeal, I direct that the Trade Mark shall not be removed from the Register until the appeal has been decided or discontinued.

Costs

1. Costs ordinarily follow the event for an Opposition Hearing.  No submission has been advanced to displace that proposition. I therefore make a direction under s 221 of the Act for costs against the Opponent in the relevant amounts prescribed by Schedule 8 of the Trade Mark Regulations 1995 (Cth).

Kate Doherty
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
25 June 2020