Steven Kelly v Pattor Pty Ltd

[2019] ATMO 39

TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Steven Kelly to registration of trade mark application 1685457 (43) - Frappé (Figurative) - in the name of Pattor Pty Ltd.

Delegate:	Iain Campbell Thompson
Representation:	Opponent: Self-represented Applicant: Craft Legal – written submissions
Decision:	2019 ATMO 39 Trade Marks Act 1995 Section 52 opposition to registration - subsection 44(2) - application of subsection 44(4). Opposition to registration not established.

Background

1. In these proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) Pattor Pty Ltd (‘the Applicant’) has applied for the registration of the trade mark which appears below:

Application No:         1685457

Priority Date:             2 Apr 2015

Services:Class 43: Provision of food and drink; coffee bar, coffee shop and coffee house services (provision of food and drink); cafes; cafe services; restaurant services; bar services; cocktail lounge services; cafeterias; canteens; bakery services; catering services; snack bars; taverns; take away food services; club services for the provision of food and drink; arranging for the provision of food and drink; food cooking services; preparation of food and drink; ice cream parlours; Internet cafe services; restaurant reservation services; cafe reservation services; charitable services, namely providing food and drink catering; consultancy, advisory and information services (including online) in relation to the provision of food and drink; accommodation services; accommodation finding services; accommodation reservation services; reservation of accommodation; information relating to accommodation; advisory services relating to cafes; day care services; child care services; child minding services; rental of furniture, chairs, tables, table linen, crockery, cutlery, glassware; rental of cooking apparatus and equipment; rental of food service apparatus; rental of rooms for functions

Trade Mark:               
  (‘the Trade Mark’)

Endorsements:           Evidence and/or other circumstances provided under subsection 41(4).

Provisions of subsection s44(4) and/or Reg 4.15A(5) applied.[1]

[1] The endorsements reflect grounds for rejection cited by the examiner in terms of sections 41 and 44 of the Act and evidence of use of the Trade Mark filed by the Applicant.

1. Following examination, and subject to the abovementioned endorsements, the Trade Mark was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 5 January 2017.

2. On 13 February 2017, Steven Kelly (‘the Opponent’) filed a Notice of Intention to Oppose the registration of the Trade Mark followed, on 12 March 2017, by a Statement of Grounds and Particulars detailing a ground under section 44 of the Act relying on Australian trade mark registrations 1663055 and 1662893.

3. The Opponent filed no Evidence in Support and the Applicant filed its Evidence in Answer (‘the EIA’) on 14 November 2017.  The EIA consists of the declaration of Chris Tziomakis, the Director of the Opponent, (‘the Declarant’) made on 14 November 2017, with annexures CT-1 to CT-5.

4. Both parties have been advised of their right to be heard or to make written submissions.  Neither party requested to be heard and the Applicant has filed written submissions by its legal representatives Craft Legal.

Onus and Relevant Date

1. The Opponent bears the onus of establishing a ground of opposition which is detailed in the Statement of Grounds and Particulars on the balance of probabilities.[2]

   [2] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132] to [133].

2. The relevant date (‘the Relevant Date’) at which the grounds must be considered is the filing date[3] of the opposed application and I note that where section 44 specifies the “priority date” that is here the same as the filing date.

Evidence

[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592.

The Applicant

1. The Declarant states:

   The Opposed Trade Mark was designed by my father, Con Tziomakis, a former director of the Applicant. My father designed the Opposed Trade Mark in approximately late 2010.

   I have been informed by my father and verily believe that he was not aware of the Kelly Trade Marks at the time that my father designed the Opposed Trade Mark in late 2010.

2. Concerning the use of the Trade Mark the Declarant states:

   The [..] Trade Mark has been continuously used in Australia by the Applicant in respect of restaurant/cate bar services from as early as May 2011, when the Applicant opened its first restaurant/cafe bar under the name FRAPPE CAFE BAR in Earlwood, New South Wales, to the date of this Declaration.

   Since May 2011, the Applicant has expanded its use of the […] Trade Mark in respect of restaurant/cafe bar services, after further restaurants/cafe bars were opened under the name FRAPPE CAFE BAR at Crows Nest, New South Wales and Concord, New South Wales.

   The Applicant's Crows Nest restaurant/cafe bar traded continuously from its opening date of June 2014 to the date it was closed down in April 2016. The […] Trade Mark was continuously used in this time period at the Crows Nest restaurant/cafe bar on items such as signage, uniforms and menus.

   The Applicant's Concord restaurant/cafe bar has traded continuously from its opening date of December 2014 to the date of this Declaration. The […] Trade Mark has been continuously used in this time period at the Concord restaurant/cafe bar on items such as signage, uniforms and menus.

3. I note now that the Declarant’s claims as to continuous use of the Trade Mark May 2011 are well-supported by the annexures to the declaration and that the Trade Mark is used in the two forms which appear below:

(‘the Frappé Logo’)

(‘the Café Bar Logo’)

1. The use of the Frappé Logo and the Café Bar Logo are uses of the Trade Mark without additions or alterations which substantially affect its identity in terms of subsection 7(1) of the Act.[4]

   [4] See Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380; (2010) 275 ALR 526; (2010) 89 IPR 457 per Yates J at [256] and Southern Cross  Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592 at [12].

2. Although the Applicant asserts a high income from services provided under the Trade Mark, the quantum of these figures is not germane to my decision – what is pertinent is that the services were provided continuously under the Trade Mark from May 2011 through to the Relevant Date.

Section 44

Statement of Grounds and Particulars

1. In its Statement of Grounds and Particulars the Opponent relies on the registrations detailed below:

Registration No:         1663055

Priority Date:             8 Dec 2014

Services:Class 43: Cafe services; Cafes; Cafeteria services; Cafeterias; Internet cafe services (provision of food and drink prepared for consumption); Self-service cafeteria services

[‘the Relevant Services’]

Trade Mark:               

Registration No:         1662893

Priority Date:             7 Dec 2014

Services:Class 43: Cafe services; Cafes; Cafeteria services; Cafeterias; Internet cafe services (provision of food and drink prepared for consumption); Self-service cafeteria services

Trade Mark:               

Section 44 - Framework

1. Relevant to these proceedings, section 44 of the Act provides:

   44Identical etc. trade marks

   […]

   (2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

   (a)it is substantially identical with, or deceptively similar to:

   (i)a trade mark registered by another person in respect of similar services or closely related goods; or

   (ii)a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

   (b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

   Note 1:For deceptively similar see section 10.

   Note 2:For similar services see subsection 14(2).

   Note 3:For priority date see section 12.

   Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

   […]

   (4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

   (a)beginning before the priority date for the registration of the other trade mark in respect of:

   (i)the similar goods or closely related services; or

   (ii)the similar services or closely related goods; and

   (b)ending on the priority date for the registration of the applicant’s trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

2. The Applicant has submitted that the Opponent cannot establish its ground under subsection 44(2) as it has not filed evidence. However, the Registrar of Trade Marks is of the view that in most cases the establishment of grounds under subsections 44(1) and 44(2) require no evidence and nomination of the prior right is all that is required to be detailed in a Statement of Grounds and Particulars where an opponent relies on those subsections of the Act.

3. However, the Applicant implicitly concedes that, if evidence is not required to found the ground under subsection 44(2), the ground is established as the trade marks are at least deceptively similar and the services include the Relevant Services.  The Applicant relies on the provisions of subsection 44(4) to establish its entitlement to registration.

Section 44 - Discussion

1. The Applicant submits:

   • the Applicant’s Evidence in Answer shows that the date that the Applicant commenced use of the Opposed Trade Mark was as early as May 2011;

   • May 2011 was before the priority dates of trade marks Nos. 1662893 and 1663055, being 7 December 2014 and 8 December 2014 respectively; and

   • use of the Opposed Trade Mark by the Applicant was continuous at least until the 2 April 2015 priority date of the Opposed Application.

   In the circumstances, the Applicant has proved prior continuous use of the Opposed Trade Mark.

2. I agree.  The Applicant has established that, in the light of its prior continuous use of the Trade Mark in relation to the Relevant Services until the Relevant Date, the provisions of subsection 44(4) must apply.

Decision

1. Section 55 of the Act relevantly provides:

   55Decision

   (1)Unless subsection (3) applies to the proceedings, 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.

2. The opposition under section 44 of the Act has not been established because the Applicant has shown its entitlement to registration via the provisions of subsection 44(4).

3. The trade mark application may then 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 should be in accordance with the court’s order or direction.

Costs

1. The Applicant sought its costs in the event that it was successful in these proceedings. I therefore, in terms of section 221 of the Act, award costs against the Opponent at the official scale set out in Schedule 8 to the Trade Mark Regulations 1995.

Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
19 March 2019