Sportsbet Pty Ltd - [2023] ATMO 89

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application numbers 2306316 EXOTIC RESCUE, 2306319 FIRST4 RESCUE, 2306320 QUINELLA RESCUE and 2306321 TOTE RESCUE (all in classes 9 & 41) – in the name of Sportsbet Pty Ltd

Delegate:

Tracey Berger

Representation:

Applicant: James Neil, Clayton Utz

Decision:

2023 ATMO 89

Trade Marks Act 1995 (Cth) –section 38 proceeding – proposal to revoke acceptance – whether applications should not have been accepted – s 41 considered - acceptance not revoked

Background
1. This matter is in relation to a proposal by the Registrar of Trade Marks to revoke acceptance, pursuant to s 38 of the Trade Marks Act 1995 (Cth),[1] of trade mark application numbers 2306316 EXOTIC RESCUE, 2306319 FIRST4 RESCUE, 2306320 QUINELLA RESCUE and 2306321 TOTE RESCUE (‘Pending Marks’) all in the name of Sportsbet Pty Ltd (‘Applicant’) for:
Class 9: Electric and electronic apparatus for online transmission and viewing of sports, racing, amusement, entertainment and games information and events in the form of betting and wagering apparatus, devices and machines; computer hardware including hardware for the operation of online games; computer software and computer programs; software relating to betting, the storage and processing of information and data and for online transmission and viewing of sports and games information and events; downloadable software applications; software for use in games, gambling and betting apparatus, devices and machines; Internet gambling software; software for operation of online games; computer, video and CD ROM games; software for electronic games; interactive computer games; software and programs for interactive sports, racing, event wagering and other gambling solutions; data recording apparatus for use with games, betting and gambling apparatus devices and machines; USB flash drives; memory apparatus; parts and accessories for all the aforesaid goods, sold as a unit therewith; electronic publications
Class 41: Entertainment; sporting and cultural activities; gambling services; gaming services; betting on horses; betting services; providing information, including online, about education, training, entertainment, sporting and cultural activities; interactive entertainment; sporting and cultural education services; education services; on-line television entertainment services concerning gaming, entertainment and sports; provision of recreation and entertainment information including information on sports and games, betting, racing events, contingencies and odds; arranging and provision of sporting events; betting services; betting information services; wagering services; education services relating to responsible betting, gambling; sports wagering services and approved betting competitions; providing online electronic publications, not-downloadable; games services provided online from a computer network; providing information, consultancy and advisory services for the aforesaid
(‘Goods and Services’)
[1] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth).

2. The applications for the Pending Marks were filed on 10 October 2022 and expedited examination was requested. The Pending Marks were examined as required by s 31 and no grounds for rejection were identified during examination. Each of the Pending Marks was accepted for possible registration and advertised as such in the Official Journal of Trade…

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 89
Decision Date: 6 July 2023

CaseChat Overview and Summary

This matter concerned an application by Sportsbet Pty Ltd to the Registrar of Trade Marks for the registration of two trade marks. The Registrar, acting under section 38 of the *Trade Marks Act 1995* (Cth), proposed to revoke the acceptance of these applications and sought submissions from Sportsbet. The decision was made by Tracey Berger.

The central legal issue before the Registrar was whether the trade mark applications should not have been accepted for registration in the first place, specifically in light of section 41 of the *Trade Marks Act 1995* (Cth). This section deals with the registrability of trade marks that are not capable of distinguishing the applicant's goods or services from those of other persons.

The Registrar's reasoning focused on the interpretation and application of section 41. The Registrar considered the evidence and arguments presented by Sportsbet and concluded that the trade marks in question were indeed capable of distinguishing Sportsbet's services. Therefore, the Registrar determined that the acceptance of the applications should not be revoked.

The final outcome was that the Registrar decided not to revoke the acceptance of Sportsbet's trade mark applications.

Orders