Sharon Booker v Claire Solomon

[2020] ATMO 161

TRADE MARKS ACT 1995

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

Re:Opposition by Sharon Booker to registration of trade mark application 1933626 (35, 41) – Automation Maven – in the name of Claire Solomon 

Delegate:	Nicholas Smith
Representation:	Opponent: Self-Represented Applicant: Self-Represented
Decision:	2020 ATMO 161 Trade Marks Act 1995 (Cth) - Section 52 opposition: s 60 considered and not established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Sharon Booker (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Claire Solomon (‘Applicant’): 

Application Number:	1933626
Filing Date:	20 June 2018
Services:	Class 35: marketing; marketing consultancy; marketing information; marketing assistance; targeted marketing; marketing studies; consultancy relating to marketing; planning of marketing strategies; promotion (advertising) of business; business consultancy services relating to marketing; marketing advisory services; marketing agency services; sponsorship (promotion and marketing services); business advice relating to marketing; advertising; advice relating to marketing management; direct market advertising; direct marketing; marketing and sales channel management; consultancy relating to business promotion; promotional advertising services; consultancy relating to advertising; preparation of marketing plans; business strategy services; consultancy regarding advertising communications strategies; design of marketing material; business promotion services; business advice relating to advertising; strategic business consultancy; administration relating to marketing; business management consultancy; advertising agencies; business consultation relating to advertising; business consultancy; business management; business management advice; business organization consultancy; business planning consultancy; advertising agency services; business management and organization consultancy; consultancy relating to business management; business strategic planning; strategic business planning; professional business consultancy; business management organisation consultancy; business management for freelance service providers; promotional marketing; advertising analysis; planning services for advertising; advisory services relating to advertising; research services relating to advertising; information services relating to advertising; writing advertising copy; updating of advertising material; dissemination of advertising material; business planning; business information; business advice; business development services; business expertise services; business consultancy to individuals; business assistance; business advisory services relating to the management of businesses; business management assistance; computerised business information services; business consultancy to firms; business project management; business advisory services; business management advisory services; business analysis services; consultancy relating to business planning; business administration; business administration consultancy; advisory services relating to business management; business consultation Class 41: business training services; business training consultancy services; business educational services; providing courses of training; providing courses of instruction; provision of training courses; organisation of training courses; correspondence courses; arranging technical instruction courses; arranging of courses of instruction; conducting instructional courses; conducting of educational courses; provision of education courses; provision of educational courses; provision of courses of instruction; conducting of correspondence courses; provision of correspondence courses; mentoring (education and training); conducting of instructional seminars; practical training (demonstration) (‘Applicant’s Services’)
Trade Mark:	Automation Maven	(‘Trade Mark’)

1. Following the advertisement on 8 November 2018 in the Australian Official Journal of Trade Marks of the Trade Mark’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 7 January 2019 and a Statement of Grounds and Particulars, subsequently rectified (‘SGP’), on 6 February 2019. The SGP raised a ground of opposition under s 60 of the Act. The Applicant filed a Notice of Intention to Defend on 7 May 2019.

   Evidence and Submissions

2. On 4 September 2019 the Opponent filed a document titled ‘Evidence in Support of Opposition’.  It consisted of a copy of the SGP and documents indicating that an (apparently) related entity of the Opponent was the holder of a trade mark for MASTER AUTOMATION MAVEN in the United States, a Facebook page, entitled ‘Sharon Booker – Master Automation Maven, a Whois page indicating that the domain name <masterautomationmaven.com> is owned by a Sharon Brown and a letter from the Applicant’s solicitor. 

3. This evidence was not filed in the form of a declaration and thus was not in the approved form.  Furthermore, there was no statement or other material indicating any connection between the owner of the United States trade mark, the owner of the domain name and the Opponent.  Finally none of this material indicates in any way that the Opponent has used the Trade Mark or MASTER AUTOMOTION MAVEN in Australia.

4. On 21 January 2020, this office contacted the Opponent, drawing her attention to the failure to file the evidence in the form of a declaration and inviting her to refile this evidence in the form of a declaration.  No response was received.  A further letter was sent on 10 February 2020 confirming that as the evidence was not correctly filed it would not be considered as evidence in support in this proceeding.   No response was received to this letter.

5. The Applicant did not file any evidence in answer.  Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  By letter issuing from IP Australia on 22 May 2020 the parties were notified that as neither party had requested a hearing the matter would be given to a delegate of the Registrar for a decision based on the written record.  The letter indicated that the parties had three months from the date of the letter to file any written submissions they wished to reply upon.  Neither party filed any submissions in this matter.

6. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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.  In doing so, I take account of the written record comprised of the materials mentioned in the preceding paragraphs, which in this case is minimal.

   Grounds of Opposition, Onus and Standard of Proof

7. Neither party has provided any evidence that I may consider and, therefore, I am unable to provide any information about either party other than what is set out in the Register of Trade Marks.

8. As indicated above, in the SGP the Opponent nominated a ground of opposition under s 60 of the Act. The onus of proof in an opposition rests upon the Opponent.[1]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 20 June 2018, being the filing date of the application in Australia (except in circumstances, not present here in which a different priority date is provided for in the Act).[3]

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

   [2] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).

9. As the Opponent has filed no evidence and provided no submissions, I have no hesitation deciding that the Opponent has not discharged the onus on it. Consequently, the Opponent has not to any extent established its ground of opposition under s 60 of the Act, which requires proof that the Opponent has a reputation in a particular mark. I note that even if I had considered the material the Opponent filed on 4 September 2019 it would not have made a difference in the outcome, as the material does not show any use by the Opponent of any trade mark in Australia, let alone a reputation.

   Decision

10. The Opponent has failed to establish the ground of opposition it nominated in the SGP.  Trade mark application no. 1933626 may proceed to registration not less than one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

    Costs

11. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under section 221 of the Act in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995 (Cth).

    Nicholas Smith
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    6 October 2020