Restive Tech Pty Ltd v Angel Oliver - [2024] ATMO 188

TRADE MARKS ACT 1995

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

Re:Opposition by Restive Tech Pty Ltd to registration of trade mark application number 2255308 (classes 9, 35, 41 & 42) - RESTIVE - in the name of Angel Oliver

Delegate:

Tracey Berger

Representation:

Opponent: Melissa McGrath of Counsel, instructed by McLeanDolphin

Applicant: No appearance

Decision:

2024 ATMO 188

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under ss 42(b), 58, 60 and 62A pursued – s 62A ground of opposition established – trade mark refused registration

Background

This decision concerns an opposition by Restive Tech Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth)[1] to registration of the trade mark which is the subject of the application detailed below in the name of Angel Oliver (‘Applicant’):

Trade Mark: RESTIVE (‘Trade Mark’)

Number: 2276310 (‘Application’)

Filing Date: 15 March 2022

Specification[2]: Class 9: Various computer programs, software and computer databases

Class 35: Various advertising and business services
Class 41: Various photography, video and film services; training services
Class 42: Various computer and IT related services; design services
(‘Applicant’s Goods and Services’)
[1] Any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.
[2] The full specification is shown in Annexure A to this decision

Once acceptance of the Application for possible registration had been advertised, the Opponent filed a Notice of Intention to Oppose on 5 October 2022 followed by its Statement of Grounds and Particulars (‘SGP’) on 4 November 2022. The Applicant filed a Notice of Intention to Defend on 27 January 2023.
The parties then had an opportunity to file evidence in accordance with the Regulations. The Opponent’s evidence in support of the opposition was filed on 8 May 2023. The Applicant did not file any evidence in answer.
Following the conclusion of the evidence stage, the parties were able to request a hearing. The Opponent requested an oral hearing and the Applicant did not ask to be heard. I heard this matter as a delegate of the Registrar of Trade Marks on 18 September 2024. Melissa McGrath of Counsel, instructed by Curtis Day of McLean Dolphin, prepared and filed a written summary of submissions on 4 September 2024 and made oral submissions at the hearing on the Opponent’s behalf. I make my decision based on the aforementioned materials and submissions made on behalf of the Opponent.

Grounds, onus and relevant date

In the SGP, the Opponent particularised grounds of opposition under ss 42(b), 58, 60 and 62A.
The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[3] The standard of proof is the ordinary civil standard of the balance of probabilities.[4]
[3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

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.

Continue reading Restive Tech Pty Ltd v Angel Oliver

Details

AGLC: Restive Tech Pty Ltd v Angel Oliver [2024] ATMO 188
Case: [2024] ATMO 188
Decision Date: 1 October 2024

CaseChat Overview and Summary

Restive Tech Pty Ltd opposed the registration of the trade mark application number 2255308, for the mark "RESTIVE", filed by Angel Oliver, across classes 9, 35, 41, and 42. The matter came before Tracey Berger.

The primary legal issue before the court was whether the applicant's trade mark was deceptively similar to the opponent's registered trade mark, and whether the applicant's mark was, by reason of its identity or similarity to the opponent's registered trade mark, likely to deceive or cause confusion. This involved an assessment of the marks themselves, the goods and services for which they were registered and sought to be registered, and the relevant trading public.

The court considered the principles of deceptive similarity, which require an examination of the marks as a whole, taking into account visual, phonetic, and conceptual similarities. It also considered the likelihood of confusion, which involves assessing whether the ordinary consumer, when encountering the marks in the marketplace, would be led to believe that the goods or services offered under the applicant's mark originate from, or are in some way connected with, the proprietor of the registered mark. The court analysed the specific goods and services in each class to determine the degree of potential overlap and the likelihood of consumer confusion.

The court found that the applicant's trade mark was not deceptively similar to the opponent's registered trade mark, and therefore, the opposition failed.

Orders