Roshtech Pty Ltd v Kyl Newton

TRADE MARKS ACT 1995

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

Re:Opposition by Roshtech Pty Ltd to registration of the trade mark the subject of application number 2124112 (classes 9, 16, 35, 37, 41 & 42) - VIPC - in the name of Kyl Newton

Delegate:

Tracey Berger

Representation:

Opponent: Trevor Dredge of Intellepro Patent & Trade Mark Attorneys

Applicant: No appearance

Decision:

2024 ATMO 96

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 44, 58, 62(b) and 62A considered – s 44 successful for some goods and services – no other grounds established – application amended - trade mark may proceed to registration for amended services

Background

1. This is a decision on the opposition by Roshtech Pty Ltd (‘Opponent’) pursuant to s 52 Trade Marks Act 1995 (Cth)[1] to registration of the trade mark the subject of application 2124112 (‘Application’) for VIPC (‘Trade Mark’) filed on 13 October 2020 for a range of retail services and computer related goods and services in classes 9, 16, 35, 37, 41 and 42 as detailed in Annexure A (‘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 Application was accepted for registration with an endorsement that the ‘Provisions of subsection 44(4) and/or Reg 4.15A(5) applied’.  Following the advertisement of acceptance of the Application, the Opponent filed a Notice of Intention to Oppose on 23 December 2021 followed by its Statement of Grounds and Particulars (‘SGP’) on 20 January 2022.  The Applicant filed its Notice of Intention to Defend the opposition on 24 March 2022.

3. The parties then filed evidence in accordance with the Regulations. The Opponent’s evidence in support was filed on 30 June 2022 followed by the Applicant’s evidence in answer on 4 October 2022. The Opponent filed its evidence in reply on 17 March 2023.

4. Once the evidence stage ended, the Opponent requested an oral hearing.  The Applicant did not ask to be heard.  The Opponent filed a written summary of its submissions on 22 March 2024 and then filed additional documents on 4 April 2023.  Some of the documents filed on 4 April 2023 had been filed as evidence and the remaining documents were correspondence between Mr Dredge and this office regarding Mr Dredge’s request under the Freedom of Information Act 1982 (Cth) (‘FOI’) for a copy of the Applicant’s evidence of use filed to secure acceptance of the Application under s 44(4) (‘Prior Use Evidence’).

5. I heard this matter as a delegate of the Registrar of Trade Marks on 5 April 2024. At the hearing, Mr Trevor Dredge of Intellepro Patent & Trade Mark Attorneys made oral submissions on behalf of the Opponent. Most of the submissions were directed to Mr Dredge’s complaint that the Opponent only received a redacted copy of the Prior Use Evidence in response to its FOI…