Sazerac Brands LLC - [2024] ATMO 42

TRADE MARKS ACT 1995

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

Re:Opposition by Sazerac Brands LLC to extension of protection under regulation 17A.33 of the Trade Marks Regulations 1995 (Cth) of trade mark number 1997670 (International Registration number 1457189) (classes 1, 29, 30, 31, 32, 33 and 34) - IGNITE (composite) - in the name of IGNITE INTERNATIONAL LTD.

Delegate:

Benjamin Goldsworthy

Representation:

Opponent: David Larish and Sophie Yates of Counsel instructed by Bill Ladas, Sarah Goddard and Ashley Stocco of King & Wood Mallesons

Holder: Griffith Hack

Decision:

2024 ATMO 42

Trade Marks Regulations 1995 (Cth) – opposition to extension of protection under regulation 17A.33 – grounds of opposition under ss 59 and 60 of the Trade Marks Act 1995 (Cth) considered – no ground established – protection to be extended.

Background

This opposition is made under reg 17A.33 of the Trade Marks Regulations 1995 (Cth) (‘Regulations’)[1] by Sazerac Brands LLC (‘Opponent’) to the extension of protection for an International Registration Designating Australia (‘IRDA’), the details of which I reproduce below:
[1] 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).
Trade mark number: 1997670
Trade mark:
(‘Trade Mark’)
International registration number: 1457189
Holder: IGNITE INTERNATIONAL LTD (‘Holder’)
Filing date: 4 December 2018
Priority date: 20 November 2018 (‘Relevant Date’)
Goods: see Schedule 1 to these written reasons (‘Holder’s Goods’)
Endorsements: The mark consists of a stylized goat skull with horns with the word IGNITE centered over the skull. Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.
The IRDA was examined and its acceptance was advertised on 10 December 2019. On 10 February 2020 the Opponent filed its Notice of Intention to Oppose. On 6 March 2020 the Opponent filed its Statement of Grounds and Particulars (‘SGP’).
On 19 May 2020 the parties filed an application for a cooling-off period. After an extension of the cooling-off period, this period expired on 19 May 2021. On 28 May 2021, the parties requested the suspension of the proceedings. On 4 June 2021 a delegate of the Registrar directed that the opposition be suspended for a period of 6 months under the provisions of reg 17A.34Q. The suspension of proceedings ended on 28 November 2021 and the Holder filed its Notice of Intention to Defend on 6 December 2021.
On 7 March 2022, the Opponent filed its Evidence in Support (‘EIS’) consisting of a declaration of Danny Suich, Global Brand Director (Fireball) with Sazerac Company Inc (the parent company of the Opponent), dated 4 March 2022, with Exhibits DS-01 to DS-29 (‘Suich’).
On 15 June 2022, the Holder filed its Evidence in Answer (‘EIA’) consisting of a declaration of Scott Rohleder, Chief Financial Officer of the Holder, dated 14 June 2022 with Exhibits SR-1 to SR-25 (‘Rohleder’)…

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.

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Details

Case: [2024] ATMO 42
Decision Date: 1 March 2024

CaseChat Overview and Summary

This matter concerned an opposition by Sazerac Brands LLC (the Opponent) to the extension of protection of an international registration application (IRDA) to Australia. The Opponent relied on grounds of opposition under sections 59 and 60 of the *Trade Marks Act 1995* (Cth).

The primary legal issue before the Registrar was whether the Opponent had established any grounds for opposing the extension of protection of the IRDA to Australia.

The Registrar determined that the Opponent had not established any of the grounds of opposition it had raised. Consequently, pursuant to regulation 17A.34N of the *Trade Marks Regulations 1995* (Cth), the Registrar decided to extend protection in respect of the goods or services listed in the IRDA. The Registrar also awarded costs against the Opponent in favour of the Holder, according to the official scale.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

Regulation 17A.34N provides:17A.34N Decision on opposition (1) Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide: (a) to refuse protection in respect of all of the goods or services listed in the IRDA; or (b) to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established. (2) The Registrar must notify the International Bureau of the Registrar’s decision. The Opponent has not established any ground of opposition. Extension of protection to Australia is to follow one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that extension of protection shall not occur until the appeal has been decided or discontinued and the disposition of the IRDA otherwise be in accordance with the Court’s order or direction. The Holder sought its costs, which ordinarily follow the event. I see no reason to depart from this approach. I award costs against the Opponent according to the official scale set out in Schedule 8 of the Regulations.

Ratio Decidendi

Legal Principle Established

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