Sunswipe, Inc v Topero Nominees Pty Ltd

[2000] ATMO 8

TRADE MARKS ACT 1995

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

Re:Opposition by SUNSWIPE, INC to registration of trade mark application 733839(3) - SUN WIPES logo - filed in the name of NUC-ONE ENTERPRISES PTY LTD.

Application 733839 was filed in the name of Nuc-One Enterprises Pty Ltd on 6 May 1997. The applicant, a Victorian company, sought registration of  the trade mark reproduced below:

This trade mark was proposed to be registered in respect of Sunscreen wipes and self tan wipes, in Class 3, and was duly advertised accepted for registration on 25 September 1997.

Registration was opposed by Sunswipe Inc, an American company. Evidence in support and evidence in answer were filed by the respective parties.  The opponent filed no evidence in reply and neither party requested a hearing.  The application has now come to me, as a delegate of the registrar, for decision.

The evidence

The evidence in support consists of two statutory declarations.  The first is by Israel Fellig, currently corporate secretary of the opponent.  The second is by Menachem Fellig, a former employee of Felco Brothers, a predecessor in business of the opponent.  Exhibits A to D accompany the second declaration. 

Evidence in answer consists of a statutory declaration by Lesley Crampton, a director of the applicant company.  My decision does not turn on this evidence, as it shows no use prior to filing.

Grounds of Opposition

Various grounds of opposition are listed, but only one is addressed in the evidence.  So far as it is relevant, this ground reads as follows: 

The applicant is not the owner of the trade mark in respect of the goods…for which registration is sought.

This ground is based on section 58 of the Trade Marks Act 1995, which reads:

Applicant not owner of trade mark

58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note:  For applicant see section 6.

Discussion

The claim to ownership of application 733839 is made by the owner's act of filing a trade mark application.  It may be displaced by another party if that party can show that it used a substantially identical trade mark in respect of  the same kind of thing, before the filing date of 6 May 1997.

The evidence filed by the opponent shows that in February 1997 there were preparations for sale in Australia of  individually wrapped sunscreen impregnated towelettes under the trade mark SUNSWIPE (also represented in the form SUN SWIPE).  There is no evidence that these preparations led to any actual sale nor to any offer to trade. As use is not established by mere preparations,  the ground of opposition fails on this basis.

For the sake of completeness, however, I will record my findings on the other two legs of section 58.

I am satisfied that the opponent's individually wrapped sunscreen impregnated towelettes are the same kind of thing as the applicant's  sunscreen wipes and self tan wipes.  However, I am not satisfied that the trade marks are substantially identical.  Had use been established prior to the application date, the opposition would also have failed for this reason.

Decision

The opponent has not established any of the grounds of opposition. I therefore dismiss the opposition.

Subject to any appeal from this decision,  I direct that application 733839 should now proceed to registration.

Arminel Ryan
Senior Examiner

24 January 2000