RE8 Health Pty Limited v Biocellular Therapeutics Pty Ltd

[2023] ATMO 9

TRADE MARKS ACT 1995

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

Re:Opposition by RE8 Health Pty Limited to registration of trade mark application number 2175917 (class 5) – RecoveR8 – in the name of Biocellular Therapeutics Pty Ltd

Delegate:

Tracey Berger

Representation:

Opponent: Somerville Legal

Applicant: Self-represented

Decision:

2023 ATMO 9

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 58, 59, 60 and 62A pressed – s 58 established – registration refused

Background

1. This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by RE8 Health Pty Limited (‘Opponent’) to registration of the following mark:

Trade mark number:      2175917

Trade mark:   RecoveR8 (‘Trade Mark’)

Applicant:   Biocellular Therapeutics Pty Ltd (‘Applicant’)

Filing Date:   5 May 2021

Specification:  Class 5: Pharmaceutical and nutritional supplement products containing either vitamins, minerals, proanthocyanidis, amino acids, and enzymes in beverage form adapted for medical purposes for human consumption being goods/services in Class 5 (‘Applicant’s Goods')

[1] Unless otherwise stated, each reference to a regulation below is a reference to a regulation in the Trade Marks Regulations 1995 (Cth) and each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth).

2.     The Trade Mark was examined and accepted for possible registration on 20 July 2021, with acceptance advertised on 6 October 2021.

3.     The Opponent filed a Notice of Intention to Oppose on 8 October 2021, followed by a Statement of Grounds and Particulars (‘SGP’) on 3 November 2021.  A Notice of Intention to Defend the opposition was filed by the Applicant on 24 March 2022.

4.     The Opponent filed Evidence in Support (‘EIS’) of the opposition on 20 May 2022.  The Applicant did not file any evidence.

5.     Following the evidence stages, the parties were given the opportunity to request a hearing.  The Opponent asked for a decision without a hearing and I have been delegated to decide this matter based on the documents and information outlined above.

Grounds of opposition, onus, and relevant date

6.     In the SGP, the Opponent particularised grounds of opposition under ss 58, 59, 60 and 62A.

7.     The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[2]  The standard of proof is the ordinary civil standard of the balance of probabilities.[3]

[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

8.     The date at which the rights of the parties are to be determined is 5 May 2021 (‘Relevant Date’) being both the filing and priority date of the Trade Mark.

Evidence

9.     As noted above, the only evidence filed in the proceedings was the EIS consisting of a declaration of Kevin Williams made on 29 April 2022 with attachments.

10.   Mr Williams attests to his friendship with John Tisdale, a director of Tismor Health & Wellness Pty Limited, which is a company that manufactures pharmaceutical and related products.  In late 2018, Mr Tisdale introduced Mr Williams to a product known as The Edge based on pine bark extract which Mr Tisdale claimed helped athletes with muscle recovery after strenuous exercise (the ‘Product’).

11.   Mr Williams has been a promoter of the Australian Motocross Championships for 20 years and in early 2019, introduced the Product to a number of motocross riders who found the Product assisted in relieving ‘arm pump’, the build up of lactic acid in the forearms which makes it difficult for motocross riders to grip the motorcycle’s handlebars.

12.   In March 2019, Mr Williams incorporated the Opponent, originally named Recover8 Pty Ltd.

13.   Mr Williams declares that Roger Davies and Richard Stevenson are the directors and shareholders of the Applicant.

14.   On 24 April 2019, Mr Williams met with Mr Tisdale, Mr Stevenson and Mr Davies.  Mr Tisdale advised Mr Williams at this meeting that Mr Davies and Mr Stevenson ‘had brought the Product to him’.  The group discussed marketing the Product to professional sportspeople.  As a result of this meeting, the Opponent and Applicant entered into an agreement dated 31 May 2019  (the ‘Agreement’).

15.   After entering into the Agreement, the Opponent promoted and sold the Product under the Trade Mark including at various motocross and supercross teams and events, sponsoring such events and entering into brand ambassador agreements in various sporting fields for the athletes to promote the Recover8 product.  Details of the Opponent’s sales under the Trade Mark are provided.

Discussion

Section 58

16.    Section 58 provides that the registration of a trade mark may be opposed on the ground that the applicant is not the owner of the mark.

17.   Although the term ‘owner’ is not defined in the Act, it is well established that, in the absence of fraud, the owner of a trade mark is the person who first uses it in Australia or first files an application for the mark in Australia, whichever is the earlier.

To succeed in this ground of opposition, the Opponent must establish the following:

1. The Trade Mark is identical, or substantially identical, to an earlier trade mark;
2. The earlier trade mark has been used in respect of good or services that are ‘the same kind of thing’ as the Applicant’s Goods; and
3. Another person has an earlier claim of ownership based on use of the earlier trade mark before the Relevant Date.[4]

[4] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [50] (Greenwood, Jagot and Beach JJ).

18.   In the SGP, the Opponent particularises this ground as follows:

The trademark "Recover8" has been used by RE8 Health Pty Limited, formerly known as Recover8 Pty Limited since March 2019 in relation to pharmaceutical and nutritional supplement products for human consumption. This occurred prior to the priority date of the opposed trademark.

19.   The mark relied on by the Opponent is identical to the Trade Mark and the Opponent’s products are the same or the ‘same kind of thing’ as the Applicant’s Goods.  Accordingly, the only issue is whether the Opponent used the Trade Mark before the Relevant Date on its own behalf as opposed to on behalf of the Applicant.

20.   On my assessment of the evidence, the Opponent is the owner of the Trade Mark in Australia for the Applicant’s Goods.  Although the Opponent sourced the Product from the Applicant, the Applicant uses the mark The Edge for these goods whereas, the Opponent has promoted and sold those goods under the mark it coined being the Trade Mark.  The Agreement between the parties appears to confirm ownership of the parties’ respective marks.  Further, the Opponent’s evidence is unchallenged by the Applicant.

21.   I am satisfied that the Opponent is the owner of the Trade Mark in Australia.  Accordingly, the Opponent has established the s 58 ground of opposition.

Decision

22.   Section 55 relevantly provides:

55  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.

23.   The Opponent has established a ground of opposition under s 58.  Accordingly, I refuse to register trade mark number 2175917.

24.   I direct that the refusal be recorded one month from the date of this decision. Should the Registrar be served with a notice of appeal before then, refusal of the Trade Mark shall not occur until the appeal has been decided or discontinued. In the event of an appeal, any disposition of the application should be in accordance with the court’s orders or direction.

25.   Costs usually follow the event and I see no reason to depart from that principle.  Accordingly, I award costs against the Applicant in the amounts set out in Schedule 8 of the Regulations.

Tracey Berger

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

31 January 2023