Slap N Tickle Pty Ltd v Noble Wines Pty Ltd

[2011] ATMO 59

TRADE MARKS ACT 1995

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

Re:Opposition by Slap N Tickle Pty Ltd to registration of trade mark application 1289089(32, 33) - SLAP N TICKLE - filed in the name of Noble Wines Pty Ltd.

Delegate:	Iain Thompson
Representation:	Opponent:  Melissa Marcus of Counsel instructed by MacMillan Trade Marks Applicant:  Megan Ryder of Madderns by teleconference
Decision:	2011 ATMO 59 s52 opposition: opponent has not established use of trade mark earlier than priority date, ss58 60 and 42 not established. Applicant intends to use trade mark, s59 not established. Costs awarded against opponent

Background

1. In this matter Noble Wines Pty Ltd (‘the applicant’) of Norwood, South Australia, has applied under the Trade Marks Act 1995 (‘the Act’) to register the trade mark current details of which appear below:

   Application No:         1289089
   Priority Date:             19 March 2009

   Goods:Class 32:  Alcohol free wine; de-alcoholised wines; low alcohol wine containing not more than 1.15% (by volume) of alcohol

   Class 33:  Beverages containing wine (alcohol content 1.15% or more by volume); beverages containing wine (wine predominating); blended wine; dessert wine; drinks containing wine (wine predominating); dry fortified wine; dry red wine; dry sparkling wines; dry white wine; dry wine; fortified wines; ginger wine; mulled wines; non-sparkling wines; red wine; sparkling fruit wines; sparkling wines; still wines; sweet fortified wine; sweet red wine; sweet sparkling wine; sweet white wine; sweet wine; vintage wines; white wine; wine

   Trade Mark:               SLAP N TICKLE

   (‘the opposed trade mark’)

2. The application was examined[1] and advertised[2] as accepted for possible registration in the Australian Official Journal of Trade Marks on 16 July 2011.

   [1] Section 31

   [2] Section 33

3. On 1 September 2009, Slap N Tickle Pty Ltd of Benowa, Queensland, filed Notice of Opposition[3] (‘the Notice’) to the registration of the trade mark. The Notice cites most of the available grounds of opposition including those under sections 58, 59, 60 and 42 which were argued at the hearing of the matter. For the sake of completeness, I find that the grounds enlisted in the Notice other than those argued before me at the hearing are not established.

   [3] Section 52

4. I heard the matter as a delegate of the Registrar of Trade Marks in Canberra on 23 May 2011.  Melissa Marcus of Counsel instructed by MacMillan Trade Marks represented the opponent.  Megan Ryder of Madderns, Patent and Trade Mark Attorneys who represented the applicant, made teleconference submissions.

   Onus

5. After reviewing the precedents in Pfizer Products Inc v Karam [2006] FCA 1663, in particular whether such matters should be decided in summary manner only on clear proof, Gyles J said of the onus in trade mark oppositions:

   I am faced with the clear words of the statute, on one hand, and the opinions of various judges, on the other. There is no binding Full Court authority. I cannot find any instance where a single judge has actually applied the higher standard. In my opinion, in this case, comity does not demand that I depart from my view as to the meaning of the statute. ‘The fundamental responsibility of a court when it interprets a statute is to give effect to the legislative intention as it is expressed in the statute’ per Mason J in Babaniaris v Lutony Fashions Pty Ltd [1987] HCA 19; (1987) 163 CLR 1; cited with approval by Mason CJ, Wilson, Dawson, Toohey and Gaudron JJ in John v Federal Commissioner of Taxation [1989] HCA 5; (1989) 166 CLR 417 at 439. I will, therefore, approach the matter on the basis that the opponent has to establish a ground of opposition, although not clearly establish such a ground, whether in a summary fashion or otherwise.

6. The opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.  See also Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 at [22] to [26].

   Evidence

7. The opponent served and filed two statutory declarations in support of the opposition, the first by Adam Laurie Daniel (‘Daniel 1’) dated 7 December 2009, and the second by Thomas Rinder patent and trade mark attorney, dated 14 December 2009.

8. The applicant served and filed two statutory declarations in answer to the opponent’s evidence in support: the statutory declaration of Scott McKenzie Curtis dated 16 June 2010 and that of Nicholas James McLeod dated 17 June 2010.

9. The opponent also served and filed a statutory declaration in reply signed by Adam Laurie Daniel and dated 14 October 2010 (‘Daniel 2’).

   Section 58

10. Section 58 of the Act relevantly provides:

    58Applicant not owner of trade mark

    The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

    Note:For applicant see section 6.

11. Ownership in Australia of a trade mark is established by either use of that trade mark in trade in Australia in relation to goods or services or by the filing of an application to register that trade mark in Australia in relation to goods or services of like kind (or ‘the same kind of thing’) whichever is the earlier.  In Hick’s Trade Mark, (1897) 22 VLR 63 6 (at 640) Holroyd J stated:

    In order to substantiate his application to be placed on the Register for this word, he must have claimed to be the proprietor, and the word “proprietor” must be taken to mean the person entitled to the exclusive use of that name. If there is anyone else who would be interfered with by the registration ... in the exercise of a right which such person has already acquired to use the same word in application to the same kind of thing, then Hicks ought not to have been put on the Register for that trade mark.

12. In the case of Carnival Cruise Lines Inc. v Sitmar Cruises Limited [1994] FCA 936; (1994) AIPC 91-049; (1994) 120 ALR 495, Gummow J, referring to The Shell Company of Australia Limited v Rohm and Haas Company [1948] HCA 27; (1949) 78 CLR 601, said:

    ... it does not supply any general authority for the proposition that in the case of disputed claims to proprietorship under the present statute anything less than substantial identity between the two marks will suffice.

13. The applicant has not started use of its trade mark on wines and the opponent alleges that it has used its trade mark on goods in both Classes 32 and 33.

14. In this matter, the goods (wines and non-alcoholic wines) of the parties are those which are ‘the same kind of thing’ and the trade marks are identical.  The issue is whether the applicant’s statutory claim to ownership on 19 March 2009, the priority date of the opposed trade mark in respect of the goods enlisted in the opposed application are displaced by the opponent’s claims to have used that trade mark in trade in respect of those same goods (or goods which are ‘the same kind of thing’) before the priority date.

15. The use of the trade mark relied upon by the opponent must be a use in the course of trade – that is, it is incumbent upon the opponent to demonstrate to my satisfaction on the balance of probabilities that it has sold the relevant goods bearing the trade mark or had effectively placed them onto the market for purchase before the priority date.  Slight use will suffice but if use is slight it should be accompanied with “if not conclusive proof, at any rate overwhelmingly convincing proof.” [4]

    [4] ‘Nodoz’ Trade Mark [1962] RPC 1 (Ch D).

16. The opponent has filed application 1293882 SLAP N TICKLE which is now registered for, inter alia, the same goods as those of this opposed application. Daniel 1 is identical to a statutory declaration filed in support of the opponent’s application 1293883 SLAP N TICKLE which includes the goods of this opposed application and which was subsequently accepted for registration under the provisions of subsection 44(4) of the Act, claiming prior use by the opponent (and hence ownership) of the opposed trade mark. It follows that, if the opponent’s evidence does not support the opposition under section 58, then 1293883 ought not to have been registered.

17. It is difficult to build a picture of the exact nature of the opponent’s business from the evidence before me.  Two Internet websites (which I will discuss later) appear to be integral to the business.  The opponent’s evidence shows that the home page has semi-naked young women on it who are identified as being SnT girls.  There is an exhortation for other young women to become SnT girls.  There is an area on the home page for members to log in to the website.  There is another area on the home page which refers to merchandise and presumably provides a hyperlink to another area of the website.

18. It is convenient for me to start by discussing certain of the opponent’s evidence which must be viewed as being of dubious provenance and suspect authenticity.  This evidence does, I consider, colour the whole of the balance of the opponent’s evidence.

19. Mr Daniel in his statutory declaration states at paragraph “c)”:

    Attached to this declaration and marked as “Exhibit ALD-006” is a copy of the Mark used.

20. One of the images at Exhibit ALD-006 is of soft drink containers:

21. The image is somewhat indistinct as the photograph is not an original.  However, the expression “… G + B VITAMINS + G …” can be read on the ‘neck’ of the energy drink container on the right.

22. The McLeod declaration is a forensic critique of the opponent’s evidence.  Mr Nicholas James McLeod is a trainee patent and trade mark attorney and works for Madderns Patent and Trade Mark Attorneys who act for the applicant.  In his declaration he exhibits a photograph of a Monster®[5] energy drink can.  The expression on the neck of the Monster® drink can is identical to the expression on the opponent’s picture of its energy drink can and the expression is rendered in an identical font.  One of photographs in Mr McLeod’s evidence shows that the expression on the neck of the opponent’s container is coincident with the last letter of the word GINSENG and the symbol ‘+’ and the beginning of the expression B VITAMINS as is shown on the Monster® can below:

    [5] I note that the trade mark MONSTER is registered in Australia in Class 32 by Hansen Beverage Company of California.

23. Mr Daniel avers, “Attached to this declaration and marked as “Exhibit ALD-008” are examples of the Mark in use in the Australian marketplace.”  Typical of the pictures at Exhibit ALD-008 is that below:

24. I observe that the soft drink container appearing on the left in the above picture bears the identical expression “+ GINSENG …” that appears on the Monster® energy drink container pictured at paragraph 20 above. 

25. In Daniel 2 the declarant responds to the McLeod evidence involving the Monster® soft drink container and states “the [opponent] will look into this matter further in relation to discover if Monster Energy Drink cans are infringing on the rights of the [opponent], based on the prior use and getup of the [opponent’s] products.”

26. Curiously, an unsigned typed letter from a third party exhibited to Daniel 1 and marked ‘Private and Confidential’ on Monster Energy Drink letterhead purports to confirm that the writer of the letter was involved with “Slap N Tickle beverages” from March 2008 to March 2009.  The person claims to have marketed “Slap N Tickle beverages” through Motocross events in Victoria, New South Wales and South Australia.  The person does not state what Slap N Tickle beverages were sold at these events or expressly confirm that the goods bore the SLAP N TICKLE trade mark of the opponent.

27. Mr McLeod in his declaration observes:

    The exhibit appears to comprise copies of photographs of various beverages displaying the Slap N Tickle trade mark, however there is no evidence provided demonstrating the date when the photographs were taken.

    None of the photographs comprising part of the exhibit visibly display a description of the product or any of the mandatory labelling requirements for beverages. Now shown to me and marked “Exhibit NJM2” are extracts from the Australia New Zealand Food Standards Code which illustrate examples of food and beverage labelling requirements in Australia.

28. I note that Australia New Zealand Food Standards Code (‘ANZFSC’) referred to by Mr McLeod mandates that the name of the food, Lot identification, and name and address of the supplier must be included on the label on a food in order to identify the food in question.

29. Standard 2.7.1 of the ANZFSC at Clause 2 states:

    2 Declaration of alcohol by volume

    (1) The label on a package of food listed in column 1 of the Table to this subclause must include a statement of the alcohol content in the corresponding form specified in column 2.

30. The table provides that on alcoholic beverage alcohol content must be expressed on mL/100 g or in its percentage by volume.

31. The ANZFSC also mandates that the packaging of alcohol must include a statement of the approximate number of standard drinks in the package.

32. None of the beverages pictured in the opponent’s photographic evidence comply with the ANZFSC or state the nature of the beverages within the containers.

33. I am lead to wonder if the opponent’s beverages in the pictures at paragraphs 17 and 20, above, have either not been “in use in the Australian marketplace” contrary to Mr Daniel’s claim, or that if they have been in use in the Australian marketplace their presence there was in breach of the ANZFSC.  Further, Monster® energy drinks were not marketed in Australia until on or about 1 July 2009.[6]  This places the possible provenance of the pictures on which the opponent relies after that date.  This is after the priority date of the opposed application, 19 March 2009, and displaces the opponent’s claims on this basis to have used its trade mark before the date. 

    [6] >

    It appears, moreover, in the light of the evidence of the Monster® energy drink container, that a plausible explanation for the presence of the opponent’s trade mark on the beverage containers shown above is that a person has affixed them to containers which had their original labels removed and the opponent’s trade mark affixed in order to dummy up some examples of what the opponent’s trade mark would look like if it were to be affixed to such goods.

34. In my consideration, the photographic exhibits to Daniel 1 viewed in the light of Mr McLeod’s evidence dictate that the import of the whole of the opponent’s evidence must be viewed with some skepticism.

35. This inclination is strengthened by material within Daniel 2.  In this declaration Mr Daniel attests to a course of negotiation with an organisation called Wine Point for the supply of some wine with the label (and another similar) which appears below:

36. This course of negotiation culminated in an order by the opponent on 22 November 2008 for wines bearing the above-mentioned labels.  These labels stand in contrast to those pictured at paragraphs 17 and 20, above, which Mr Daniel previously stated were used in relation to the goods.  There is no objective evidence or any form of independent corroboration that these wines from Wine Point bearing the trade mark SLAP N TICKLE were either delivered to the opponent or sold by it before the priority date.  There is no explanation by Mr Daniel in Daniel 2 as to why, if the labels at paragraph 35 of this decision were in use on wines before the priority date, the opponent had previously relied on the photographs in Daniel 1 which are obviously problematic.

37. The quantities of wine in the order from Wine Point (24 bottles) on 22 November 2008 are suggestive of promotional items more than they are of goods in trade particularly when the presence of up to 600 people is asserted at the events at which the wine is claimed to have been sold.

38. In Daniel 1, Mr Daniel states that he is the owner and sole director of the opponent which was incorporated on 21 January 2008.  He refers to the trade mark SLAP N TICKLE and avers:

    The [opponent] has used the trade mark in relation to a large variety of goods (hereafter referred to as “the Goods”) in Australia including:

    Non alcoholic beverages included in class 32 of the Nice classification; beer; waters, including aerated waters; syrups; fruit juices; powders and preparations for making beverages in this class

    Alcoholic beverages (except beer); spirits; distilled beverages

    The trade mark was first used by the [opponent] on 26 January 2008.

    Use of the trade mark has been continuous since its first use and in each State of Australia.

39. Mr Daniel also declares at paragraph 12 of his declaration that the opponent’s trade mark “has been advertised and marketed and products sold thoughout [sic] a number of events, including the following”:

    a)      26th January 2008 > Cabana Blvd, Benowa Waters Qld

    b)      10th May 2008 > Expansion Street, Molendinar Qld

    c)      12th July 2008 > Bondi Beach, NSW

    d)     27th September 2008 > Surfers Paradise Beach, Qld

    e)      18th October 2008 > River Crescent, Broadbeach Waters Qld

    f)      20th December 2008 > Coogee Beach, NSW

    g)      26th January 2009 > Fullerton Street, Benowa Qld

    h)      4th April 2009 > Peak Street, Bateau Bay NSW

    i)       18th July 2009 > Byron Bay, NSW

40. Mr Daniel does not specify which products were advertised and marketed at the above ‘events’ and, moreover, it is not a list of ‘events’, just of dates and place names.  However, a letter from Troy Lee of Biella Pty Ltd (‘Biella’) of 99 Cabana Blvd, Benowa Waters, exhibited to Daniel 1 states that Biella held private functions for the opponent on Australia Day 2008 and 2009 at its address and that “during this event Slap N Tickle alcoholic and non-alcoholic beverages were sold.”  Mr Lee does not expressly state that goods bearing the SLAP N TICKLE trade mark of the opponent were sold at these events.  It could be that Mr Lee is stating that beverages bearing some other trade mark and supplied by the opponent were sold at this event, or events.  Strangely, in his above-quoted account he refers to one event rather than two on consecutive Australia Days.  There is no objective evidence that these events took place or that the opponent’s goods bearing its trade mark were sold there.

41. Mr McLeod’s evidence shows Biela’s address to be a private residence.

42. Mr McLeod in his declaration refers to Mr Lee’s statement and states as follows:

    0n 7 June 2010, I telephoned the Queensland Government Office of Liquor, Gaming and Racing and spoke to a person who identified herself as Julie Simpson. I made enquiries with Ms Simpson as to the type of permit or license required under the laws of Queensland to sell alcohol on a private premise for a once off occasion such as a party. I was informed that the only permit available would be a ‘Community Liquor Permit’. Now shown to me and marked “Exhibit NJM8” is an extract from Part 4A of the Liquor Act 1992 (Qld) which defines what a Community Liquor Permit is and the requirements necessary to obtain one.

    During my conversation with Ms Simpson, I enquired whether there was any record of a permit being issued to allow the sale of liquor at 99 Cabana Boulevard, Benowa Waters in the State of Queensland on either 26 January 2008 or 26 January 2009. Following a search of the database maintained by the Queensland Government Office of Liquor, Gaming and Racing, Ms Simpson stated that she could not find any such record of a permit being issued in respect of the premises located at 99 Cabana Boulevard, Benowa Waters.

43. It would appear, however, that a permit is required only where the function is a public event.  These include those which:

    • are open to the public or casual attendance

    • are not restricted by personal invitation of the host of the function

    • involve the payment of a fee for admission to the function, or for entertainment or services provided at the function

    • are publicly advertised.

44. I also note that Mr Daniel has stated that the events at which the beverages were sold were advertised (presumably publicly) and that these were ‘community events’ but also states in Daniel 2 that there is no permit required to sell energy drinks and water at community events.  This might appear to be confirmation that alcoholic beverages were not sold at the events referred to by Mr Daniel and Mr Lee or that if alcoholic beverages were sold at these community events that their sale was not one under a required permit.

1. Mr Daniel also declares:

   Use of the trade mark since 2008 has included:

   As a company name.  Attached to this declaration and marked as “Exhibit ALD-002” is a copy of the ASIC register for the Company.

   On stationery.  Attached to this declaration and marked as “Exhibit ALD-003” are examples of letterheads used by the Company since inception of the Company.

   Attached to this declaration and marked as “Exhibit ALD-004” are examples of business cards used by the Company since inception of the Company.

   Attached to this declaration and marked as “Exhibit ALD-005” are examples of slips used by the Company since inception of the Company.

2. Registration or use of a business name or company name is not use of a trade mark: see, for example, Lone Star Steakhouse & Saloon Inc v Zurcas [2000] FCA 29. Registration of business names and company names merely meets obligations and gains benefits under legislation other than the Act. Letterheads, business cards, with compliments slips and the ilk are business ephemera which do not establish use of a trade mark in the course of trade in relation to goods or services.

3. Mr Daniel states:

   As identified the Mark has been in use in Australia by the Company since January 2008. Attached to this declaration and marked as “Exhibit ALD-007” is an extract from the Company website outlining the launch of the Mark for use on the Goods in the Australian marketplace.

   […]

   The company has over 120 registered domain names worldwide associated with the name “SLAP N TICKLE”. Examples of domain names of the Company are and to this declaration and marked as “Exhibit ALD-010” are notices outlining registration of on behalf of the Company from 17 February 2007 to date.

   Attached to this declaration and marked as “Exhibit ALD-011” are notices outlining registration of on behalf of the Company, which the company acquired in March 2008.

4. The purported extract from the opponent’s website refers to the launch of beverages under the opponent’s trade mark in January 2008.  However, the images of these beverages which appear on the page are similar to those in the opponent’s photographic evidence which I have discussed, above.  Viewed through the prism of the opponent’s photographic evidence, these pages also appear to be problematic.  “Exhibit ALD-007” appears to be two web pages printed one below the other on an A4 sheet.  The grayscale appearing as the background uniformly borders the whole of the two web pages on the sheet and suggests that the two pages are in fact one continuous design or a record of two designs.  In view of the applicant’s evidence as to the non-use of the opponent’s websites, below, I am left to wonder if these pages may have been mocked up or designed for the opponent’s website but might not have actually appeared on it.

5. Registration or use of a domain name in Australia or elsewhere per se does not constitute use of a trade mark.  Additionally, without at least the offer for sale or actual sale of goods or services from a website specifically to Australians there is no use of the trade mark in the course of trade in Australia.  There is no offer for sale of the relevant goods from the purported screen extracts of web pages in the opponent’s evidence.  See also Ward Group Pty Ltd v Brodie & Stone Plc [2005] FCA 471. At best, therefore, if the opponent is to rely on this evidence it could only be viewed as being corroborative of some other of the opponent’s evidence.

6. The McLeod declaration is critical of the opponent’s evidence concerning alleged use of the opponent’s trade mark on the Internet.  Mr McLeod states:

   On 18 May 2010, I visited the websites maintained at and Both websites were found to consist of just one page with the words ‘COMING SOON!’ prominently displayed. Now shown to me and marked “Exhibit NJM9” are screen dumps from the websites maintained at and 18 May 2010, I visited a website known as the Internet Archive Wayback Machine at web/ web.php. This website stores archived copies of web pages at various points in time and has been collecting data since 1996. I conducted searches to determine whether there were any archived copies of the websites maintained at and No history of activity by SNT was found in relation to these domain names. Now shown to me and marked “Exhibit NJM10” are printouts of the relevant search results.

7. In Daniel 2, Mr Daniel states, in response to the above:

   The website “slapntickle.com” was certainly active since March 2008 promoting the Slap N Tickle branded beverages for community events. The website was protected by username and passwords for the exclusive use by members of the Australian marketplace.

   Attached to this declaration and marked as “Exhibit ALD-003” is an invoice from C Squared Design for the development of the “slapntickle.com” site.

   The website went down due to my ill health and inability to manage the [applicant] in around October 2008. A new website was designed between October 2008 and February 2009. A new homepage was uploaded to mark the pending arrival of the website.

   Attached to this declaration and marked as “Exhibit ALD-004” is a copy of the current “slapntickle.com” website.

8. I note Mr Daniel states that the website went down and the opponent’s new website was designed by February 2009 and Mr McLeod’s evidence shows that it had not appeared before 18 May 2010.  On this evidence the opponent’s website appears to have been inactive for at least 15 months.

9. Mr Daniel goes on to observe that Internet Archive Wayback Machine at web/ web.php contains a notice stating that it does not record all Internet websites.  However, this rather misses the point that there is no onus on the applicant to establish its case in this matter – the onus is on the opponent to establish its opposition – at least on the balance of probabilities.

10. The purported screen extracts or copies of Internet web pages in the opponent’s evidence are not dated and it is impossible to ascertain the veracity of the opponent’s claim that they predate the priority date of the opposed application.  It is for the opponent to establish its opposition and this evidence is of low weight in doing so.  As I have previously observed, the evidence of the opponent’s website does not in any event establish use of the trade mark in relation to the goods which appear on it as it does not constitute an offer of the goods for sale to Australians – there is no apparent means to purchase the relevant goods available on the website.  The web pages in evidence do not contain such an offer and could only be viewed as being corroborative evidence.

11. Further, if the website is integral to the opponent’s business, what happens to Mr Daniel’s claim that the opponent used the trade mark continuously since before the priority date if he also says that “The website went down due to my ill health and inability to manage the Company in around October 2008.  A new website was designed between October 2008 and February 2009” and that website had not appeared before 18 May 2010?

12. Further corroborative evidence in Daniel 1 is claimed in Mr Daniel’s statement that:

    The Goods used by the [opponent] are manufactured via the [opponent’s] strategic partner “Mojo Marketing”.

    Attached to this declaration and marked as “Exhibit ALD-001” is a declaration from Mojo Marketing outlining the use of the Mark in Australia.

    Use of the Mark has been vast, wide reaching and taken a variety of forms since first use.

13. The declaration from Mojo Marketing is signed by the same Mr Daniel, in his capacity as Managing Director of Mojo Marketing, and states that that “Mojo Marketing has been involved with Slap N Tickle beverages since January 2008.  Events that we have been responsible for marketing at their community events are ...” then lists the series of events referred to at paragraph 39 of these reasons.

14. Mr McLeod states in his declaration:

    The Mojo Marketing Declaration is signed by Adam Daniel in his capacity as Managing Director. ASIC records for Mojo Marketing (as evidenced by Exhibit NJM1 referred to in paragraph 3 above) do not record Adam Daniel as being or having been a director of Mojo Marketing as at 29 October 2009 or at any time.

    The Mojo Marketing Declaration states that “Mojo Marketing has been involved with Slap N Tickle beverages since January 2008”. The nature of that involvement is not clarified in the Mojo Marketing Declaration.

    The Mojo Marketing Declaration further states: “Events that we have been responsible for marketing at their community events are ...” and nine dates and addresses are listed. The Mojo Marketing Declaration does not state that beverages were offered for sale or sold by SNT by reference to the Slap N Tickle trade mark at those events. It is also not clear from the Mojo Marketing Declaration why these events have been described as “community events”.

15. In evidence in reply, Mr Daniel’s response to this is that:

    Due to an omission by the Company accountants there was an oversight with regard to my capacity in Mojo Marketing.

    Attached to this declaration and marked as “Exhibit ALD-001” are documents outlining the circumstances surrounding the error including relevant supporting documentation signed by Skye Daniel.

    I confirm that this error has been remedied and I am now the sole director of Mojo Marketing.

16. Some other of the opponent’s evidence refers to purported use of its trade mark on energy drinks and on bottled water.  This is not relevant to the matter before me because neither bottled water nor energy drinks are the same kind of thing as the goods in respect of which the opposed application is made.

    Summary – Section 58

17. The opponent’s evidence is vague, contains unsubstantiated generalisations as to use of its trade mark, mistaken assumptions as to what constitutes use of its trade mark, unreliable assertions of use of its trade mark, mistakes as to fact, is ambiguous, potentially misleading and accordingly of low weight.  Whether this is by accident or design is not of interest here.  However, the opponent’s evidence clearly does not establish use of its trade mark SLAP N TICKLE on wines (or their low/no alcohol equivalents) or goods which are the same kind of thing in the course of trade before the priority date of this application.

18. The opponent has not established its opposition in terms of section 58 of the Act.

19. It logically also follows that the opponent’s application 1293883 SLAP N TICKLE which includes the goods of this opposed application and was accepted under the provisions of subsection 44(4) ought not to have been accepted in respect of the goods which are of interest here.

    Sections 60 and 42

20. Section 60 of the Act provides:

    60Trade mark similar to trade mark that has acquired a reputation in Australia

    The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

    (a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

    (b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

    Note:For priority date see section 12.

21. As the opponent has not established use of its trade mark before the priority date, it follows that its trade mark could not have had a reputation at the priority date.

22. The ground under section 60 is not established.

23. It follows that the opponent’s ground under section 42 which is based on section 52 of the Trade Practices Act 1974 also cannot be established.

    Section 59

24. Section 59 of the Act provides:

    59Applicant not intending to use trade mark

    The registration of a trade mark may be opposed on the ground that the applicant does not intend:

    (a)to use, or authorise the use of, the trade mark in Australia; or

    (b)to assign the trade mark to a body corporate for use by the body corporate in Australia;

    in relation to the goods and/or services specified in the application.

    Note:For applicant see section 6.

25. Ms Marcus’s submissions relevant to this ground are based on the applicant’s stated intention to refrain from use of the opposed trade mark until these proceedings are decided.  I do not think that this intention shows that the applicant has resiled from the use of the trade mark but has engaged in normal commercial caution.

26. The opponent has not established this ground of opposition.

    Decision

27. Section 55 of the Act relevantly provides:

    Decision

    55. Unless the proceedings are discontinued or dismissed, 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.

    Note:  For limitations see section 6.

28. The opponent has not established a ground of opposition

29. The trade mark application may proceed to registration 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 the appeal has been decided or discontinued and that the disposition of the application be in accordance with the Court’s order or direction.

    Costs

30. Having been successful in this matter, the applicant is entitled to its costs at the official scale.

    Iain Thompson
    Hearing Officer
    Trade Marks Hearings
    4 July 2011