Rick Keith Marton v The Udder Way IP Pty Ltd

[2024] ATMO 79

TRADE MARKS ACT 1995

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

Re:Opposition by Rick Keith Marton to registration of trade mark application number 2237869 (classes 20, 21, 32 and 39) - the udder way (logo) - and trade mark application number 2237873 (classes 39 and 43) - the udder way (logo) both in the name of The Udder Way IP Pty Ltd

Delegate:

Benjamin Goldsworthy

Representation:

Opponent: Self-represented

Applicant: Cooper IP Pty Ltd

Decision:

2024 ATMO 79

Trade Marks Act 1995 (Cth) – opposition under section 52 – s 58 ground of opposition – no evidence – ground of opposition not established.

Background

1. This decision concerns trade mark application numbers 2237869 and 2237873 (collectively, ‘Trade Marks’)[1] in the name of The Udder Way IP Pty Ltd (‘Applicant’) filed under the Trade Marks Act 1995 (Cth).[2]

   [1] I extract the details of the Trade Marks at Schedule 1 to these written reasons.

   [2] Unless specified otherwise, a reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth).

2. Acceptance of the Trade Marks was advertised on 21 May 2022. The Trade Marks were opposed by Rick Keith Marton (‘Opponent’). On 16 September 2022 the Applicant filed a Notice of Intention to Defend in respect of both oppositions. No evidence was filed by either party. Otherwise, following the usual opposition process the Applicant requested a decision without a hearing.

3. The Opponent asserts a ground of opposition under s 58 in its Statement of Grounds and Particulars (‘SGP’). The onus to prove the s 58 ground of opposition[3] is squarely on the Opponent.

   [3] Section 55; Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, [152]-[156] (Greenwood, Besanko and Katzman JJ).

Consideration

1. Section 58 provides:

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

2. A ground of opposition under s 58 will generally require evidence of some kind to be established. The absence of evidence is fatal to a s 58 ground of opposition.[4]

   [4] Emark Analytics APAC Pty Ltd v Martin Kostic [2023] ATMO 107, [11]-[15] (Hearing Officer K Brown).

3. In respect of the ground of opposition under s 58 the SGP states:

   The proposed trademark was first created by my business in October 2020 as part of a shareholder arrangement in the business in return for services. The agreed shareholding has not been provided, nor has any payment been made toward the full range of marketing materials of which this logo is part. I have approached the situation in good will, and allowed the logo and other assets to be used by the business while legal proceedings take place for the good of the business, however I do not approve of transferring ownership of the asset until the commitment by the applicant has been realised.

4. The Opponent has presented nothing to corroborate any of the vague statements and allegations about ownership made in the SGP. There is nothing before me that could satisfy me on the balance of probabilities that the ground of opposition under s 58 is established.[5]

   [5] Act, s 33.

5. Accordingly, the ground of opposition under s 58 has not been established.

Decision and costs

1. The opposition fails and applications 2237869 and 2237873 should proceed to registration one month from this decision subject to the usual appeal period.

2. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the applications should otherwise be in accordance with the Court’s order or discretion.

3. The Applicant sought its costs. The usual rule is for costs to follow the event. I award costs against the Opponent in accordance with s 221, in the amounts specified in the Trade Marks Regulations 1995 (Cth).

Benjamin Goldsworthy

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

29 April 2024

Schedule 1

Trade mark application number: 2237873

Filing date: 20 December 2021

Trade mark:

Specification:

Class 39: Rental of containers for storage of beverages; Rental of containers for storage of milk; Rental of beverage storage containers; Rental of milk storage containers; Arranging for the filling of beverage containers; Arranging for the refilling of beverage containers; Arranging for the refilling of beverage dispensing containers; Arranging for the refilling of milk dispensing containers; Arranging for the refilling of milk kegs; Transportation of milk kegs; Arranging for the transportation of milk kegs; Arranging for the transportation of milk kegs between dairies for refilling, and hospitality venues such as cafes and restaurants; Arranging for retrieval of empty milk kegs; Transporting empty milk kegs to dairies for refilling

Class 43: Arranging for the provision of drink; Hospitality services (food and drink); Providing food and drink; Provision of food and drink; Cafe services; Rental of drink dispensing machines; Rental of drinking water dispensers; Rental of food service apparatus; Rental of refrigerated drinking water coolers; Restaurant services; Coffee bar and coffee house services (provision of food and drink); Coffee shop services; Rental of milk kegs; Rental of containers for dispensing beverages; Rental of containers for dispensing milk; Rental of containers for dispensing of beverages; Rental of containers for dispensing of milk; Rental of beverage dispensing apparatus to hospitality venues including cafes and restaurants; Rental of milk kegs to hospitality venues including cafes and restaurants; Rental of milk dispensing apparatuses to hospitality venues including cafes and restaurants; Rental of reusable milk kegs to hospitality venues including cafes and restaurants; Providing milk kegs for use at hospitality venues such as cafes and restaurants

Trade mark application number: 2237869

Filing date: 21 February 2022

Trade mark:

Specification:

Class 20: Milk churns (non-metallic); Spears (valves), not of metal for use with kegs; Containers made of thermoplastics materials for the packing of goods; Non-metallic containers for kegging beverages; Non-metallic containers in the form of kegs; Non-metallic carrying containers; Non-metallic closing devices for use on containers; Non-metallic cap closures for containers; Non-metallic closures for containers; Non-metallic containers having devices for discharging the contents without compressed air (other than for household use); Containers made of plastic; Containers made of plastics for packaging; Containers of plastics for packaging purposes; Plastic containers (packaging); Plastic packing containers; Plastic trays (containers) used in food packaging; Plastics closures for containers; Containers in the form of boxes made of plastics material; Boxes of wood or plastic; Nesting boxes; Fixed dispensing containers of non-metallic materials; Stacking boxes of plastic; Containers made of thermoplastics materials for the transportation of goods; Flexible containers of plastics for the storage of liquids; Floating containers, not of metal; Containers, not of metal (storage, transport); Boxes for storage purposes (plastic); Water storage tanks of plastic; Portable boxes (containers) of plastic; Portable water carriers (containers) made of plastics

Class 21: Milk churns (domestic container); Milk pans; Milking pails; Refrigerating boxes (not electric or gas powered); Insulated boxes; Bottle or can carriers for domestic use; Beverage coolers (containers); Beverageware; Canteens (containers for beverages); Containers for beverages; Domestic containers for beverages; Heat insulated containers for beverages; Fitted cases adapted for dispensing drinks; Food storage containers; Portable refrigerating boxes (non-electric); Portable containers for household use; Portable coolers, non-electric; Portable domestic containers; Portable coldboxes, non-electric; Non-electric portable coldboxes; Milk jugs; Jugs; Cream jugs; Bottle coolers (receptacles); Drinking receptacles; Kitchen receptacles; Storage receptacles for household use

Class 32: Ades [non-alcoholic sweetened drinks of diluted fruit juices]; Aerated fruit juices; Aerated juices; Bottled fruit juices; Fresh fruit juices; Frozen fruit juices; Fruit juices; Fruit juice beverages; Non-alcoholic fruit juice beverages; Beverages consisting of a blend of fruit and vegetable juices; Aerated beverages (non-alcoholic); Alcohol-free beverages; Beverages made from fruit concentrates; Fruit beverages; Fruit concentrates for making beverages; Fruit juice extracts (beverages or for making beverages); Non-alcoholic beverages; Non-alcoholic preparations for making beverages

Class 39: Container hire services; Container rental; Rental of containers; Container transport services; Transportation of containers; Arranging of transportation; Cargo transportation; Disposal (transport) of waste; Distribution (transport) of goods; Distribution of goods (transportation); Packing of goods for transportation; Refrigerated transport of cold goods; Refrigerated transport of frozen goods; Services for the arranging of transportation; Transportation of cargo; Transportation of goods; Transport services; Transportation of food; Vehicle transport services; Collection of recyclable goods (transport); Collection of goods; Goods collection services; Container storage; Rental of storage containers; Rental of portable storage containers; Rental of refrigerated storage; Rental of storage crates; Rental of storage cartons; Rental of water storage devices; Food storage services; Frozen food storage services; Refrigerated storage services; Provision of refrigerated storage facilities; Rental of storage units; Storage of food; Transportation logistics; Filling of containers; Filling of gas tanks; Filling of gas bottles; Storage of goods in containers; Storage of goods for transportation; Arrangement of the storage of goods; Arrangement for the storage of goods; Storage of goods; Logistics services (transport, packaging, and storage of goods); Delivery of food and drink prepared for consumption; Storage of goods prior to delivery; Cargo delivery services; Delivery of cargo; Delivery of goods