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Snap Franchising Limited v IceColdNow, Inc

Snap Franchising Limited v IceColdNow, Inc

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Case Copied 16 September 2024 38 min read

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TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Snap Franchising Limited to extension of protection under regulation 17A.33 of the Trade Marks Regulations 1995 of trade mark number 2362758 (International Registration number 1734341) (classes 30 and 40) – S SNAPCHILL device - in the name of IceColdNow, Inc.

Delegate:

Anne Makrigiorgos

Representation:

Opponent: Francom Legal Pty Ltd

Holder: Michael Buck IP

Decision:

2024 ATMO 172

Trade Marks Act 1995 (Cth) – opposition to extension of protection under reg 17A.33 – grounds of opposition pressed under reg 4.15A and ss 42(b), 43, 44, 58A, 59, 60 and 62A of the Trade Marks Act 1995 (Cth) – none established – protection may be extended to Australia

Background
1. This is a decision in respect of an opposition by Snap Franchising Limited (‘Opponent’) under reg 17A.33 of the Trade Marks Regulations 1995 (Cth)[1] to the extension of protection of the following International Registration Designating Australia (‘IRDA’):
[1] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth) and each reference to a regulation is a reference to a regulation in the Trade Marks Regulations 1995 (Cth).
International Registration number:         1734341 (‘IR’)
Australian trade mark number: 2362758 (‘Application’)
Trade mark:   (‘Trade Mark’)
Holder:  IceColdNow, Inc (‘Holder’)
Filing Date:  10 May 2023 (‘Relevant Date’)
Specification:       Class 30: Coffee beverages.
Class 40: Processing services for others, namely, brewing, chilling and packaging coffee beverages in cans or other containers
(Holder’s Goods and Services).

2.     The Trade Mark was examined and advertised as accepted for possible protection on 11 October 2023.
3.     On 9 November 2023, the Opponent filed a Notice of Intention to Oppose the IRDA. On 27 November 2023, the Opponent filed its Statement of Grounds and Particulars (‘SGP’). The Holder filed a Notice of Intention to Defend the opposition on 21 December 2023.
4.     The Opponent filed Evidence in Support (‘EIS’) on 3 April 2024. The Holder did not file Evidence in Answer.
5.     The parties were given the opportunity to request a hearing or for a decision to issue without a hearing. The Opponent requested a decision without a hearing. I make this decision as a delegate of the Registrar of Trade Marks based on the particulars set out in the SGP and the EIS.
Grounds and Onus
6.     The SGP nominates grounds of opposition under ss 42(b), 43, 44, 58A, 59, 60 and 62A.
7.     The Opponent carries the burden of establishing one or more of the grounds of opposition[2] on the balance of probabilities.[3] The rights of the parties are assessed as at the Relevant Date,[4] being the filing date and the priority date of the IRDA.
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
[4] Southern…

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 172
Decision Date: 16 September 2024

CaseChat Overview and Summary

Snap Franchising Limited (the Opponent) opposed the extension of protection to Australia of an international trade mark registration held by IceColdNow, Inc (the Holder). The trade mark, registered internationally under number 1734341 and designated for Australia as application number 2362758, comprised the device "S SNAPCHILL". The specification of goods and services included coffee beverages in Class 30, and processing services for coffee beverages, namely brewing, chilling, and packaging, in Class 40. The opposition was heard by a delegate of the Registrar of Trade Marks.

The Opponent advanced several grounds of opposition under the *Trade Marks Act 1995* (Cth), including sections 42(b), 43, 44, 58A, 59, 60, and 62A. The primary legal issue was whether the Opponent had discharged its onus of proving, on the balance of probabilities, that any of these grounds of opposition were established as at the relevant date, which was the filing date of the international registration. The Opponent's evidence focused on its own extensive use and promotion of various "SNAP" trade marks in Australia across a broad range of goods and services, and on claims that the Holder had not used the opposed trade mark in Australia.

The delegate considered the ground of opposition under section 44, which requires the applicant's trade mark to be substantially identical with or deceptively similar to a registered trade mark for similar or closely related goods or services, where the registered trade mark has an earlier priority date. The Opponent relied on its own registered trade marks for this ground. However, the delegate found that the Opponent's evidence did not establish that its registered trade marks were for goods or services that were similar or closely related to the Holder's specified goods and services (coffee beverages and processing thereof). The delegate also noted that the Opponent had not provided evidence to establish the other grounds of opposition.

Consequently, the delegate concluded that the Opponent had failed to establish any of the grounds of opposition. The delegate therefore ordered that the opposition be dismissed and that protection of the international registration be extended to Australia.

Orders