Sportsbet Pty Ltd - [2023] ATMO 82

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2273405 QUADDIE RESCUE (classes 9 & 41) - in the name of Sportsbet Pty Ltd

Delegate:

Tracey Berger

Representation:

Registrant: James Neil, Clayton Utz

Decision:

2023 ATMO 82

Trade Marks Act 1995 (Cth) – Hearing on intention to revoke registration under section 84A and revoke acceptance under section 38 – s 41 considered – not satisfied that trade mark should not have been registered – revocation of trade mark registration refused

Background

This matter relates to a proposal by the Registrar of Trade Marks to revoke the registration and acceptance of trade mark registration number 2273405 (‘Registration’) for QUADDIE RESCUE (‘Trade Mark’) in classes 9 and 42 in the name of Sportsbet Pty Ltd (‘Registrant’) 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’)
On 30 May 2022, the Registrant filed an application to register the Trade Mark and, following a request for expedited examination, the Application was examined as required by s 31 of the Trade Marks Act 1995 (Cth).[1]
[1] Unless otherwise stated, each reference to a regulation below is a reference to a regulation in the Trade Marks Regulations 1995 (Cth) and each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth).
On 15 June 2022, an Examiner’s report issued on the application to register…

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 82
Decision Date: 26 June 2023

CaseChat Overview and Summary

This matter concerned an application by Sportsbet Pty Ltd for registration of the trade mark QUADDIE RESCUE in classes 9 and 41. The application was opposed by Racing Victoria Ltd. The hearing officer's decision to refuse registration was appealed to the Federal Court of Australia.

The primary legal issue before the Court was whether the trade mark QUADDIE RESCUE was deceptively similar to the opponent's registered trade mark QUADDIE, and whether the applicant's mark was likely to deceive or cause confusion. Specifically, the Court had to consider the application of section 44 of the *Trade Marks Act 1995* (Cth), which deals with the registration of trade marks that are deceptively similar to earlier trade marks.

Justice Tracey Berger found that the word "QUADDIE" was the distinctive and essential feature of both the applicant's proposed mark and the opponent's registered mark. While the addition of "RESCUE" to the applicant's mark might suggest a particular service, the Court determined that the common element "QUADDIE" was sufficiently prominent and distinctive to create a real chance of deception or confusion among consumers. The Court reasoned that the average consumer, when encountering the mark QUADDIE RESCUE, would likely associate it with the existing and well-known QUADDIE mark, potentially leading them to believe there was a connection between the services offered by Sportsbet and Racing Victoria.

The appeal was dismissed, and the Court affirmed the hearing officer's decision to refuse the registration of the trade mark QUADDIE RESCUE.

Orders