SJM Developments Pty Ltd v S J M Property Developments Pty Ltd

TRADE MARKS ACT 1995

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

Re:Opposition by SJM Developments Pty Ltd to registration of trade mark application number 2078464 (class 37) - SJM Property Developments (fancy) - in the name of S J M Property Developments Pty Ltd

Delegate:

Benjamin Goldsworthy

Representation:

Opponent: Macpherson Kelley Lawyers

Applicant: Cooper IP Pty Ltd

Decision:

2024 ATMO 82

Trade Marks Act 1995 (Cth) – opposition under s 52 – ss 42(b), 44, 58A, 58, 60 and 62A grounds of opposition – s 58 ground of opposition established in respect of some services – s 44 established for remaining services – trade mark refused.

Background

1. On 27 March 2020 (‘Relevant Date’), an application for a trade mark was filed under the Trade Marks Act 1995 (Cth)[1] in the name of SJM Capital Group Pty Ltd (‘SJM Capital’) with the following details:

   Trade mark number: 2078464

   Trade mark:

   (‘Trade Mark’)

   Services: Class 37: Building of houses; Building construction; Building of commercial properties; Excavating; Construction; Concrete pumping services (‘Applicant’s Services’)

   Endorsement: Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.

   [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).

2. On 23 August 2021, this office received a request for full assignment of the application for the Trade Mark to S J M Property Developments Pty Ltd (‘Applicant’), which this office processed on 25 August 2021.

3. The acceptance of the Trade Mark was advertised on 15 December 2021. On 15 February 2022, SJM Developments Pty Ltd (‘Opponent’) filed a Notice of Intention to Oppose. On 10 March 2022, the Opponent filed its Statement of Grounds and Particulars (‘SGP’). The Applicant filed its Notice of Intention to Defend on 9 May 2022.

4. On 15 August 2022, the Opponent filed its Evidence in Support (‘EIS’) consisting of a statutory declaration of Simon Peter Madden, Director and Secretary of the Opponent, dated 15 August 2022, with Exhibits SM-1 to SM-25 (‘Madden-1’).

5. On 17 November 2022, the Applicant filed its Evidence in Answer (‘EIA’) consisting of a declaration of Samuel John Morse, Director of the Applicant, dated 16 November 2022, with Annexures A to C (‘Morse-1’).[2]

   [2] Whilst Morse-1 is titled as a statutory declaration, it does not meet the formal requirements for these documents. Nevertheless, Morse-1 does comply with the requirements for a declaration made under the Act.

6. On 23 January 2023, the Opponent filed its Evidence in Reply (‘EIR’) consisting of a statutory declaration of Simon Peter Madden, dated 18 January 2023 with Exhibits SM-1 and SM-2 (‘Madden-2’).

7. On 23 February 2023, the Applicant requested to be heard by way of written submissions. On 1 March 2023, the Opponent also requested to be heard by way of written submissions.

8. On 6 July 2023, the Opponent filed an additional statutory declaration of…