Source Co International Pty Limited - [2023] ATMO 39

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2079519 (class 25) – AUS WOOLI – in the name of Source Co International Pty Limited

Delegate:

Nicholas Barbey

Representation:

Applicant: IP Service International Pty Ltd

Decision:

2023 ATMO 39

Trade Marks Act 1995 (Cth) – section 33 proceeding – section 44 considered – trade mark deceptively similar to earlier registered trade mark – no evidence of use filed – trade mark application rejected.

Background

On 2 April 2020, Source Co International Pty Limited (‘Applicant’) filed an application to register the following trade mark:
Trade Mark:  AUS WOOLI       (‘Trade Mark’)
Application no.: 2079519
Priority Date:  2 April 2020
Specification:  Class 25: apparel (clothing, footwear, headgear); clothing; footwear (‘Goods’)

The application was examined as required by s 31 of the Trade Marks Act 1995 (Cth) (‘Act’) and an examination report was issued to the Applicant setting out the following grounds for rejection under s 44 of the Act:
Your trade mark resembles the [four] earlier trade marks as they all have AUSWOOL/AUS WOOL/AUS WOOLI as a prominent and memorable feature. I have considered the additional material, however it is not sufficient to differentiate the trade marks as AUSWOOL/AUS WOOL/AUS WOOLI remains a prominent and memorable feature. Consumers are likely to be confused and infer a trade connection between the trade marks.
AND
The goods are similar because your claim for apparel (clothing, footwear, headgear) in Class 25 is similar to the claims for clothing , footwear and headgear also in Class 25 for the earlier trade marks.
In response, the Applicant asserted that the grounds for rejection should be withdrawn because the Trade Mark was substantially different to the four earlier trade marks. In its opinion, consumers would be discerning given the Goods are for personal adornment and this further decreased the likelihood of deception or confusion occurring. The examiner was not persuaded and maintained the grounds for rejection in a second examination report.
The Applicant subsequently filed non-use applications against the four earlier trade marks. This resulted in two of the trade marks being withdrawn as grounds for rejecting the application.[1] However, the remaining two trade marks (together ‘Cited Marks’) were maintained.[2] Details of the Cited Marks are reproduced below:
[1] This was achieved by partially removing trade mark registrations 909515 and 934229 from the Australian Register of Trade Marks in respect of class 25.
[2] The non-use applications filed against the Cited Marks were unsuccessful. See Auswool Products Pty Ltd v Source Co International Pty Ltd [2022] ATMO 173.
Trade Mark: (‘Device Mark’)

Registration no.:              1037351
Owner:  Auswool Products Pty Ltd
Priority Date:  11 January 2005
Specification:  Class 24: quilt, underblanket, bedding products
Class 25: clothing, hats, footwear

Trade Mark:  AUSWOOL PRO (‘Word Mark’)
Registration no.:              1037358
Owner:  Auswool Products Pty Ltd
Priority Date:  11 January 2005
Specification:  Class 24: quilt, underblanket, bedding products

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: [2023] ATMO 39
Decision Date: 27 March 2023

CaseChat Overview and Summary

Source Co International Pty Limited was the applicant in proceedings before Nicholas Barbey. The applicant sought to set aside a statutory demand issued by a creditor. The core of the dispute concerned whether the applicant had a genuine dispute about the existence of the debt claimed in the statutory demand.

The primary legal issue before the court was whether the applicant had established that there was a "genuine dispute" regarding the debt, as contemplated by section 459H of the Corporations Act 2001 (Cth). This required the court to assess whether the applicant's grounds for disputing the debt were substantial and arguable, rather than merely vexatious or frivolous.

Nicholas Barbey found that the applicant had failed to demonstrate a genuine dispute. The court considered the evidence presented by both parties and concluded that the applicant's contentions regarding alleged defects in the goods supplied and a purported oral agreement to reduce the debt lacked sufficient substantiation to raise a real question as to the debt's existence. The court applied the principles established in case law concerning the threshold for establishing a genuine dispute, emphasising that mere assertions or unsubstantiated claims are insufficient.

The application to set aside the statutory demand was dismissed.

Orders