Re Opposition by Sugarlean (Pty) Ltd to registration of trade mark application 1941198 (30) - Sugarlean in the name of Joseph Seccas
[2020] ATMO 90
•27 May 2020
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
ReOpposition by Sugarlean (Pty) Ltd to registration of trade mark application 1941198 (30) – Sugarlean - in the name of Joseph Seccas
Delegate: Robert Wilson
Representation: Opponent: One IP International Pty Ltd
Applicant: Lake Law
Decision: 2020 ATMO 90
Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 43, 58, 59 and 62A considered – no correctly filed evidence – no grounds established – trade mark may proceed to registration
Background
This decision concerns an opposition brought by Sugarlean (Pty) Ltd (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 to registration of the trade mark the subject of the application detailed below in the name of Joseph Seccas (‘the Applicant’):
Application Number:
1941198
Filing Date:
16 July 2018
Specification:
Class 30: Confectionery including confectionery for decorating Christmas trees; chocolate; beverages in this class including chocolate-based beverages, coffee-based beverages and tea-based beverages; flavourings in this class for beverages; bread, pastries, cakes, biscuits and mixtures for making bread, pastries, cakes and biscuits; edible ices, ice cream and non-medicated confectionery in jelly form
(‘the Applicant’s Goods’)
Trade Mark:
Sugarlean
(‘the Trade Mark’)
Any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) or the Trade Marks Regulations 1995 (Cth), respectively, unless otherwise indicated.
On 30 January 2018, the application’s acceptance for possible registration was advertised in the Australian Official Journal of Trade Marks. The Opponent filed a Notice of Intention to Oppose the registration on 19 February 2019 and a Statement of Grounds and Particulars (‘the SGP’) on 8 March 2019. The SGP nominated grounds of opposition under ss 43, 58, 59 and 62A. The Applicant filed a Notice of Intention to Defend on 8 May 2019 (‘the NID’).
On 10 May 2019, the Trade Marks Office sent correspondence to the Opponent (via its representative, One IP International Pty Ltd), notifying it that the NID had been filed. The correspondence also informed the Opponent that it had three months from the date of the letter to file any Evidence in Support of its opposition (‘EIS’). The due date for the Opponent’s EIS was, therefore, 10 August 2019. On 9 August 2019, the Opponent (via its representative) filed an application for an extension of time of two months to file their EIS (‘EOT Request’).
On 20 August 2019, a notice was sent to the parties which indicated that the time for filing EIS had ended and that the Applicant had three months in which to file its Evidence in Answer (‘EIA’). The due date for the Applicant’s EIA was therefore 20 October 2019.
On 26 September 2019, the Trade Marks Office sent correspondence to the Opponent notifying it that the EOT Request was not accompanied by the appropriate fee and that, ‘An extension is not taken as filed unless the fee is paid’. The correspondence further indicated that s 224—the section under which the request was made—does not apply to extensions of time in trade mark opposition proceedings: the correct provision being reg 5.15. No further correspondence was received from the Opponent in respect of the EOT Request.
On 2 October 2019, the Applicant filed correspondence which indicated that as the Opponent had filed no EIS it did not intend to file any EIA. The parties were notified that the evidence stages had therefore ended and that either party may request to be heard.
On 7 November 2019, the Applicant requested to be heard by way of written submissions only. The Opponent was notified of the request. The Opponent did not request to be heard.
On 18 November 2019, the Opponent filed a declaration made on that day, by Olaf Kretzschmar, the managing director and ‘an IP Consultant’ of One IP International Pty Ltd, with Exhibits OK-1 to OK-3 (‘the Kretzschmar declaration’). The declaration was not accompanied by any cover letter or application for an extension of time. Correspondence subsequently sent to the parties indicated that as the declaration was filed out of time and no application for an extension of time had been received ‘it is highly unlikely that the material will be considered by the Hearing Officer who comes to decide the substantive matter’.
I was, subsequently, appointed as a delegate of the Registrar of Trade Marks to decide the matter.
On 3 March 2020, I sent correspondence to the parties which addressed a number of matters. Firstly, as the Opponent had not requested to be heard the matter would be decided on the material correctly filed. Secondly, I provided a schedule for the filing of submissions. Finally, I stated that:
The Opponent’s late filed evidence was not accompanied by submissions as to why it ought to be considered and nothing has been received in the more than three months since it was filed. Consequently, [the Kretzschmar declaration is not] correctly filed and will not be taken into account in making my decision in the present matter. Submissions from the Opponent as to why those documents ought to be taken into account will NOT be considered at this late stage. Neither will submissions which refer to the late filed evidence.
The parties’ submissions were filed in accordance with the schedule for submissions. The Opponent’s submissions were prepared by One IP International Pty Ltd. The Applicant’s submissions were prepared by Lake Law.
The Opponent’s submissions refer to, and has appended to it, a document referred to in the submissions as ‘Exhibit OP’. The coversheet for the exhibit states, ‘This is EXHIBIT OP the pages 8 to 9 of the Declaration of Olaf Kretzschmar in Sydney, AUSTRALIA on 23 March 2020’. That date is the date of the Opponent’s submissions, which were prepared and signed by Olaf Kretzschmar. No declaration made on that date was filed by the Opponent. In any event, this document is evidence which has not been correctly filed and will not be considered in this matter. For the sake of completeness, I note that the Opponent’s submissions make no reference to the Kretzschmar declaration or why that declaration ought to be considered.
Grounds of Opposition, Onus and Standard of Proof
As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 43, 58, 59 and 62A. The onus of proof rests upon the Opponent.[1] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 16 July 2018, being the filing date of the application.[3]
Discussion
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].
[2] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].
[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2].
Section 43
Section 43 provides:
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.
This ground of opposition is particularised in the SGP as follows:
The Opponent started using the name Sugarlean (1983093) prior to the applicant for trade mark number 1941198. The Applicant's mark is identical to the Opponent's mark. The fact that there is no difference between the Applicant's mark and the Opponents mark means that there would be a prima facie deception and/or confusion that these two identical marks are linked to the same source. It is the fact that these marks are identical that would create the connotation that they are linked to each other. Should the opposed application be allowed registration, The Applicant would benefit from the public being confused/deceived into believing that his products are linked to trade mark number 1983093. No difference between these marks is present, either visually or aurally. This would certainly confuse the public as to the origin of products linked to trade mark no. 1983093 should the registration of trade mark 1941198 be allowed.
Spender J in Winton Shire Council v Lomas stated that:
Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60. [4]
[4] (2002) 56 IPR 72, [19].
In McCorquodale v Masterson the court found:
In an opposition to registration, s 43 of the Act requires an opponent to show that: (1) there is a connotation in the proposed trade mark or in a part of it; and (2) because of this connotation, the use of the proposed mark would be likely to deceive or cause confusion. The connotation must be contained within the mark itself. [5]
[5] (2004) 63 IPR 582, [25].
Similarly in Pfizer Products Inc v Karam Gyles J said:
‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question, rather than, for example, deception by reason of similarity with other marks … Section 43 might well prevent the registration of HERBAGRA for classes of goods with no connection with herbal ingredients. [6]
[6] (2006) 70 IPR 599, [53] (emphasis added).
The particulars in the SGP do not concern a connotation arising out of a secondary meaning implied by the Trade Mark, but are addressed squarely at deception or confusion arising as a result of similarities between the Trade Mark and another trade mark. This is not a matter for s 43. Neither do the Opponent’s submission address connotation of the relevant nature. The Opponent has failed to establish this ground of opposition.
Sections 58, 59 and 62A
The remaining grounds of opposition—those under ss 58, 59 and 62A—all rely on the Opponent being able to establish the existence of certain factual situations through the filing of appropriate evidence. The mere particularisation of the grounds and the filing of submissions will never be enough. As there is no evidence correctly filed in this matter, it follows, that the Opponent has not established these grounds of opposition.
Decision
Section 55 relevantly provides:
55Decision
(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.
Note:For limitations see section 6.
The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Accordingly, application 1941198 may proceed to registration after 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 a court so orders.
Costs
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. As the Opponent has failed to establish a ground of opposition, I award costs against the Opponent under s 221 of in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995 (Cth).
Robert Wilson
Hearing Officer
Trade Mark Oppositions and Hearings
27 May 2020
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