Shayne Taylor v Kenny Signs P/L

[2022] ATMO 222

TRADE MARKS ACT 1995

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

Re:Opposition by Shayne Taylor to registration of trade mark application number 2106967 (class 42) – HOLESHOT GRAPHICS - in the name of Kenny Signs Pty Ltd

Delegate:

Katrina Brown

Representation:

Opponent: Olaf Kretzschmar, One IP International Pty Ltd

Applicant: Joshua Gladwin, Gladwin Legal Pty Ltd

Decision:

2022 ATMO 222

Trade Marks Act 1995 (Cth) – opposition under section 52 – ground pursued under s 41 – ground not established – trade mark to proceed to registration.

Background

1. This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) by Shayne Taylor (‘Opponent’) to registration of the following trade mark:

Trade mark number:  2106967

Trade mark:  HOLESHOT GRAPHICS (‘Trade Mark’)

Applicant:  Kenny Signs Pty Ltd (‘Applicant’)

Filing date:  3 August 2020

Services:Class 42 - Commercial and graphic art designing; Graphic art services; Graphic design of promotional materials; Graphic design of promotional matter; Graphic design services; Logo design services (graphic design); Creating and designing web pages for others; Design consultancy; Design of packaging; Design of printed matter; Industrial design; Visual design (‘Applicant’s Services’)

1. The application for the Trade Mark was examined as required by s 31 of the Act. Acceptance of the Trade Mark was advertised in the Official Journal of Trade Marks on 4 January 2021.

2. The Opponent filed a Notice of Intention to Oppose, followed by a Statement of Grounds and Particulars (‘SGP’) on 15 March 2021.

3. The Applicant filed a Notice of Intention to Defend on 14 May 2021.

4. The Opponent filed the following declarations as evidence in this matter:

• Declaration of Olaf Kretzschmar (Legal Representative of Opponent) made on 30 August 2021 with Annexures 1 to 4 (‘Kretzschmar 1’); and

• Declaration of Olaf Kretzschmar made on 1 February 2022 (‘Kretzschmar 2’).

1. Much of Kretzschmar 1 and Kretzschmar 2 consist of statements in the nature of submissions, rather than evidence. Such statements will be treated as submissions for the purpose of this decision.

2. The Applicant filed the following declaration as evidence in this matter:

• Declaration of Brett Kenny (Managing Director of Applicant) made on 26 November 2021 with Annexures BK-1 to BK-8.

1. Once the time for filing evidence ended, the parties requested to be heard by way of written submissions. Olaf Kretzschmar of One IP International Pty Ltd filed written submissions on behalf of the Opponent. Joshua Gladwin of Gladwin Legal Pty Ltd filed written submissions on behalf of the Applicant.

2. The matter has been allocated to me, a delegate of the Registrar of Trade Marks, to decide based on the material described in [3] to [8] of this decision.

Grounds of opposition, onus, and relevant date

1. In the SGP, the Opponent particularised a ground of opposition under s 41 of the Act.

2. The Opponent bears the onus of establishing the ground of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2]

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

3. The date at which the rights of the parties are to be determined is 3 August 2020 being the filing date of the Trade Mark.

Section 41

1. Section 41 of the Act relevantly provides:

   (1)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

   …

   (2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

   (3)This subsection applies to a trade mark if:

   (a)    the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)    the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

   (4)This subsection applies to a trade mark if:

   (a)    the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)    the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

   (i)the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

   (ii)the use, or intended use, of the trade mark by the applicant;

   (iii)any other circumstances.

2. The inherent adaptation of a trade mark is assessed:

   [B]y reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[3]

   [3] Clark Equipment Company v Registrar of Trade Marks [1964] HCA 55, [5] (Kitto J).

3. This is a two-step process.[4] The first step is to identify the signification which the words ordinarily possess (ordinary signification). The ordinary signification is the ordinary meaning of the words to any person in Australia concerned with the Applicant’s Services.[5] The second step is to determine whether other traders might legitimately need to use that combination of words, or something so nearly resembling them, for the ordinary signification in respect of their own similar services.

   [4] Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48, [71] (French CJ, Hayne, Crennan and Kiefel JJ).

   [5] Ibid [70].

4. The Opponent submits that the Trade Mark is not capable of distinguishing because the words ‘Holeshot Graphics’ merely describe the nature of the Applicant’s Services. In the Opponent’s words:

   On one hand, “HOLESHOT” is a popular motorsport terminology to describe a rider who has the strongest start to get up to racing speed. On the other hand, the word “GRAPHICS” is the products of the graphic arts, especially commercial design or illustration, and is therefore indicative of services in the nature of designing graphics for motorcycles, or motorsports related graphics and designs. Anyone interested on motorcycles, motorsports, races and motorsports races in general, are familiar with the term “HOLESHOT”. Given that “HOLESHOT GRAPHICS” merely describes the nature and use of the claimed services, it is not capable of distinguishing…’

5. In this matter, the Opponent has not provided any evidence to support its assertion as to the ordinary meaning of the word ‘Holeshot’. Kretzschmar 1 and Kretzschmar 2 contain bald statements similar in nature to the assertion reproduced above at [16] of this decision. Other than these unsupported statements, the Opponent has not provided any objective evidence to establish the ordinary signification of the word ‘Holeshot’.[6]

   [6] I note that ‘holeshot’ or ‘hole shot’ are not dictionary defined words.

6. Notwithstanding, even if I were to accept that the ordinary meaning of ‘Holeshot’ is (as asserted by the Opponent) a rider who has the strongest start to get up to racing speed, I would not be satisfied that other traders would legitimately need to use ‘Holeshot Graphics’ (or something so nearly resembling it) for the ordinary signification in respect of their own similar services. The Opponent’s evidence and submissions do not explain why other traders would honestly desire to use ‘Holeshot Graphics’. Furthermore, I note the following observation in Cantarella Bros Pty Ltd v Modena Trading Pty Limited:

   When the "other traders" test from Du Cros is applied to a word (other than a geographical name or a surname), the test refers to the legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods. The test does not encompass the desire of other traders to use words which in relation to the goods are allusive or metaphorical.[7]

   [7] Cantarella Bros Pty Limited v Modena Trading Pty Limited (n 4) [59] (French CJ, Hayne, Crennan and Kiefel JJ) (emphasis added).

7. Whilst ‘Holeshot Graphics’ may convey some meaning, I do not consider it to convey a meaning that is sufficiently tangible to amount to a direct reference to a character or quality of the Applicant’s Services. Any meaning that ‘Holeshot Graphics’ may convey is somewhat indirect in relation to the Applicant’s Services and is best described as covert or allusive.

8. In an opposition the onus is on the opponent. For the reasons set out above, I am not satisfied that the Opponent has discharged that onus. The ground of opposition under s 41 of the Act has not been established.

Decision

1. Section 55 of the Act relevantly provides:

   (1) Unless subsection (3) applies to the proceedings, 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.

2. The Opponent has not established the ground of opposition. Accordingly, trade mark number 2106967 may proceed to registration.

3. 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 application should otherwise be in accordance with the Court’s order or direction.

Costs

1. The parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle.

2. I award costs against the Opponent in accordance with s 221 of the Act, in the amounts set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth).

Katrina Brown

Hearing Officer

Delegate of the Registrar of Trade Marks

16 December 2022