TackX International Pty Ltd v Limited Edition Surf Hardware Pty Ltd

[2023] ATMO 170

TRADE MARKS ACT 1995

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

Re:Opposition by TackX International Pty Ltd to registration of trade mark application number 2201524 (classes 25 and 28) - NOMAD (stylised) - in the name of Limited Edition Surf Hardware Pty Ltd

Delegate:

Benjamin Goldsworthy

Representation:

Opponent: Kellie Stonier of Griffith Hack

Applicant: Mark Britten and Shane Britten

Decision:

2023 ATMO 170

Trade Marks Act 1995 (Cth) – opposition under section 52 – ground pursued under s 62(b)– s 62(b) not established – trade mark to proceed to registration.

Background

1. On 11 August 2021 (‘Relevant Date’) Limited Edition Surf Hardware Pty Ltd (‘Applicant’) filed an application for a trade mark under the Trade Marks Act 1995 (Cth) (‘Act’)[1] with the following details:

   [1] Unless specified otherwise, a reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth).

   Trade mark:

   (‘Trade Mark’)

   Goods:  Class 25: Snowboard boots; Snowboard shoes; Clothing for surfing; Surf shorts; Surfing shorts; Wetsuits for surfing; Apparel (clothing, footwear, headgear)

   Class 28: Bodyboards; Snowboards; Surf boards; Surfing apparatus; Body board leashes; Leashes (surfboard); Surfboard leashes; Surfboard leg ropes (leashes)

   (‘Applicant’s Goods’)

2. The Trade Mark was examined under s 31 and on 27 October 2021 a delegate of the Registrar of Trade Marks (‘Registrar’), issued a report (‘Examination Report’) setting out a s 44 ground for rejection. The Applicant provided a response on 28 October 2021, and the Trade Mark was accepted the following day. That acceptance was not advertised until 12 January 2022.

3. On 10 March 2022, TackX International Pty Ltd (‘Opponent’) filed a Notice of Intention to Oppose the registration of the Trade Mark. On 8 April 2022, the Opponent filed its Statement of Grounds and Particulars (‘SGP’). On 2 June 2022, the Applicant filed its Notice of Intention to Defend.

4. On 2 September 2022, the Opponent filed its Evidence in Support (‘EIS’) consisting of a declaration of Damon Olsen, director at the Opponent, dated 26 August 2022 (‘Olsen-1’). On 18 November 2022, the Applicant filed its Evidence in Answer (‘EIA’) consisting of a declaration of Mark Britten, director of the Applicant, with Exhibits LE-01 to LE-11, dated 16 November 2022 (‘Britten’). The Opponent did not file any Evidence in Reply.

5. The period for filing evidence ended and both parties requested to be heard. The Applicant proposed that there be a joint hearing with an opposition matter concerning trade mark 2018884. After taking submissions on the point from the parties, I decided that the oppositions should be heard together. I heard the matter by teleconference on 1 August 2023. Kellie Stonier from Grifith Hack appeared behalf of the Opponent. Also present was Mitch Bruce from Grifith Hack. Mark Britten and Shane Britten appeared on behalf of the Applicant. I have decided the matter as a delegate of the Registrar.

6. It is also useful to summarise some related events and proceedings that have occurred since acceptance of the Trade Mark was advertised. On 2 September 2021 the Opponent filed a pair of removal applications with this office concerning registered trade marks 923592 (in the name of the Brittens) and 1192461 (in the name of the Applicant) (collectively, ‘Applicant’s Earlier Trade Marks’). I was the delegate in those matters and have since decided the opposition (‘First Decision’) to the applications for removal.[2] Relevant to the issues in dispute in the present proceeding, I found that the Applicant had established use of registered trade mark 923592 in relation to t-shirts and hooded jumpers, though it had not established use of that trade mark for any of the other goods, to the standard required in such proceedings, in the period 2 August 2018 to 2 August 2021 (‘Non-use Period’). In relation to registered trade mark 1192461 the Opponent alleged that it had not been used in respect of clothing (other than hooded jumpers and t-shirts), footwear and headgear (other than caps) (‘Pressed Goods’). I found that use of that trade mark had not been established for the Pressed Goods.

   [2] Limited Edition Surf Hardware Pty Ltd v TackX International Pty Ltd [2023] ATMO 150 (Hearing Officer Goldsworthy)

Onus and ground

1. The Opponent has the onus of establishing the nominated ground of opposition.[3] The standard of proof is the ordinary civil standard of the balance of probabilities.[4]

   [3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [4] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

2. The Opponent relies only on s 62(b) as a ground of opposition.

Evidence

1. I reproduce the Applicant’s Earlier Trade Marks as they appeared at the time of acceptance of the Trade Mark, below:

   Trade mark number:     923592

   Trade mark:  

   (‘Trade Mark 923592’)

   Owners:  Mark Britten and Shane Britten

   Filing date:  15 August 2002

   Goods:  Class 25: Surf wear and accessories being caps, beanies and belts

   Trade mark number:     1192461

   Trade mark:   Nomad (‘Trade Mark 1192461’)

   Owner:Limited Edition Surf Hardware Pty Ltd

   Filing date:  10 August 2007

   Goods:  Class 25: Clothing, footwear, headgear

   Class 28: Gymnastics and sporting articles in relation to surfing; none of the above games and playthings being computer based games or other electronic devices

EIS

1. Olsen-1 describes the examination process for the Trade Mark. I now summarise the annexures to Olsen-1. Annexure DO-1 is the Examination Report, dated 27 October 2021. This raises a ground of rejection under s 44 in relation to six earlier trade marks. Those were Trade Mark 923592, registered trade mark 1480187, and trade mark application numbers 2018884, 2108350, 2193300, 2197697 (I refer below to all of these except for Trade Mark 923592 as the ‘Cited Trade Marks’).

2. Annexure DO-2 is a letter on the Applicant’s letterhead signed by Mark Britten and Shane Britten, dated 28 October 2021. It states that Mark Britten and Shane Britten are directors of the Applicant. It also encloses a letter of consent, permitting the Applicant to ‘use and register’ the Trade Mark in the face of Trade Mark 923592 (‘Letter of Consent’). The Letter of Consent having effectively dispensed with the ground for rejection in relation to Trade Mark 923592, the letter then states the following:

   Regarding the other cited trademarks 1480187, 2018884, 2108350, 2193300, 2197697 - Mark Britten and Shane Britten together with Limited Edition Surf Hardware Pty. Ltd., already have registered trademarks 923592 and 1192461. These trademarks are substantially the same trademark, for similar goods being registered in trademark 2201524. The trademarks 923592 and 1192461 also have priority dates which are far earlier than the conflicting trade mark’s [sic]. Trademarks 923592 and 1192461 have also been used continuously used on their registered goods by Limited Edition Surf Hardware Pty. Ltd. (‘Statement’)

3. Annexures DO-3, DO-4 and DO-5 effectively import all of the evidence filed during the oppositions to removal applications for the Applicant’s Earlier Trade Marks (‘First Proceeding’). Included in these annexures is a declaration of Kellie Stonier, trade marks attorney for the Opponent dated 17 June 2022 (‘Stonier’), and another declaration of Damon Olsen dated 17 June 2022 (‘Olsen-2’). Annexures DO-3, DO-4 and DO-5 also show the Applicant’s use of various trade marks which contain the word ‘nomad’ in relation to goods such as hooded jumpers, singlets, t-shirts, caps and rash vests. I need not further summarise Olsen-1 and its annexures and I refer to it where relevant in these reasons.

EIA   

1. The EIA shows use by the Applicant of various trade marks containing the word ‘nomad’ (‘Nomad Trade Marks’). The EIS and EIA relevantly show only t-shirts, hooded jumpers, rash vests, board shorts, singlets, beanies and caps. The annexures to Britten in summary consist of various examples of use of trade marks which contain the word ‘nomad’ by the Applicant in relation to most relevantly t-shirts, hooded jumpers, caps, rash vests, board shorts, singlets. This material consists of magazines, printed catalogues, extracts of the Applicant’s website (‘Applicant’s Website’), invoices from the Applicant to shops and individual consumers, newspaper articles and extracts of social media posts on Facebook and Instagram. There are also letters from 3 shops which state that they are supplied ‘Nomad Trademarked goods’ and two letters from suppliers to the Applicant for garments and caps. Much of the material is not dated and is illegible. I need not further summarise this material and refer to it where relevant in these reasons.

Section 62(b)

1. Section 62(b) relevantly provides that:

   62  Application etc. defective etc.

   The registration of a trade mark may be opposed on any of the following grounds:

   …

   (b)  that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars

2. Section 62(b) requires that representations were false in material particulars and that there was a causal connection between those false representations and the acceptance of the application for the Trade Mark by the delegate of the Registrar. A representation must be false at the time that it was made in order to be relevant.[5] I note that s 62(b) can encompass all manner of falsehoods, be they deliberate or innocent.[6] Section 62(b) does not of itself raise a basis for revisiting grounds of opposition under s 44.[7] It is not enough that a statement relied upon by a delegate during examination is imprecise or vague.[8] There are decisions of this office where reliance on inaccuracies about an applicant’s use, including as it relates to s 44, has resulted in s 62(b) being established.[9] However, the earlier decided cases I have reviewed going to this issue have involved verifiably false statements about specific events or dates. Sections 44(3) and/or (4) offer the circumstances in which an application for a trade mark may be registered in the face of another trade mark that has been raised as the basis for a ground of rejection under s 44.[10] The Trade Mark was accepted applying s 44(3)(b). Relevantly, the Registrar’s practice is that her delegates might consider there to be ‘other circumstances’ such that s 44(3)(b) is applicable where:

   …an applicant already has a registered trade mark, that is substantially the same trade mark, for similar goods and/or services. Such a registration may have a priority date which is earlier or later than the conflicting trade mark’s priority date.  In such cases, however, other factors will need to be considered i.e. how long the trade mark has been on the Register and the Registrar should confirm that the trade mark has been used continuously on those similar goods/services (The Design Hunter Pty Ltd v Indesign Publishing Pty Ltd [2016] ATMO 111). A written declaration by the applicant will be sufficient for the Registrar to confirm continuous use of the trade mark. The provision of evidence or a statutory declaration will usually not be required.[11]

   [5] Levi Strauss & Co v Bon Levi (1999) 44 IPR 431, 434 (Hearing Officer Thompson).

   [6] Analyses Conseils Informations ACI v Iguassu (No 16) Pty Ltd & Al Gray Nominees Pty Ltd [2001] ATMO 4 (Hearing Officer Nancarrow); Laboratoires La Prairie v Wendy Stockden-Brock [2005] ATMO 80 (Hearing Officer Nancarrow) (‘Laboratoires’).

   [7] Medvisit Pty Ltd v MedVisit LLC [2017] ATMO 140, [72] (Hearing Officer Condon).

   [8] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2003] FCA 1502, [61]-[62] (Wilcox J); Inventions Marketing Pty Ltd v Aqualoc Pty Ltd (2002) 55 IPR 600, 615 (Hearing Officer Thompson); and GAP (ITM) Inc v General Pants Co Pty [2004] ATMO 12, [45]-[52] (Hearing Officer McDonagh).

   [9] Arbormasters Pty Ltd v Arbormaster Training Inc [2007] ATMO 7 (Hearing Officer Thompson); Laboratoires (n 6); Link Recruitment Pty Ltd v Link Employment and Training Inc [2006] ATMO 39 (Hearing Officer Nancarrow).

   [10] Section 44.

   [11] Trade Marks Manual of Practice and Procedure, Part 28.4 (emphasis added).

3. The Opponent submits that the delegate of the Registrar in applying s 44(3)(b) and accepting the Trade Mark relied on: (1) the fact of the Applicant’s Earlier Trade Marks; (2) the Letter of Consent; and (3) the Statement. It then submits that the Applicant’s use of the Applicant’s Earlier Trade Marks had not in fact been ‘continuous’ from a time before the priority dates of the Cited Trade Marks until the Relevant Date so the Statement was false. It also submits that Statement was material to the decision of the delegate to accept the Trade Mark.

Was the Statement false in material particulars?

1. The Opponent appears to accept it has the onus to show the Statement, as a representation or evidence, is false.[12] However, the Opponent’s evidence and submissions rely on an absence of evidence from the Applicant showing its own use. The Opponent emphasises especially an apparent lack of specific examples of use of any trade mark shown by the Applicant between the years 2009 and 2018. The Opponent also submits I should consider the finding made in the First Decision, regarding the evidence, as here having a bearing for s 62(b). It submits that it has made a prima facie case such that the evidentiary onus has shifted to the Applicant.[13]

   [12] Opponent’s Submissions, [11]-[12].

   [13] Opponent’s Submissions, [13]; Television Food Network, GP v Food Channel Network Pty Ltd (No 2) [2009] FCA 271, [37] (Collier J).

2. The Opponent relies on the evidence from the First Proceeding to support the submission that the Statement is false.[14] It also relies on Stonier which states that, ‘during the [Non-use Period], I periodically inspected the [Applicant’s Website])  [during the Non-use Period] and did not identify any use of Trade Mark 923592’.[15] Stonier also states that on 15 October 2021 the Opponent’s trade marks attorney inspected the Applicant’s Website and caused a search of the Applicant’s website in the Non-use Period. Stonier states, ‘the inspection did not identify any use of [Trade Mark 923592] in respect of apparel, headwear or footwear during the [Non-use period].’ Olsen-2 states that, ‘[the Opponent’s] Sales Manager regularly travels to all of [the Opponent’s] retailers throughout Australia and has never encountered any goods being offered for sale under [Trade Mark 1192461] by these retailers’.[16] However, it also concedes that the Opponent and the Applicant ‘offers goods through different channels’.[17] As such this says more about the Opponent’s business than use of any trade mark by the Applicant. There is otherwise no evidence offered about whether the Applicant has not continuously used the Trade Mark, including outside of  the Non-use Period. Past decisions where similar allegations have been raised have, for example, involved some positive evidence to put the task to a party to show that there has been use, such as a declaration from a person in the field for that party’s goods which declares unawareness of a trade mark[18] or the results of more through investigations than checking a website from time to time.

   [14] Olsen-1, [16]. See also Opponent’s Submissions.

   [15] Stonier, [6].

   [16] Olsen-2, [7]

   [17] Ibid.

   [18] Estex Clothing Manufacturers Pty Ltd v Ellis and Goldstein Ltd [1967] HCA 51, [14]-[15] (Windeyer J). See also ‘Nodoz’ Trade Mark [1962] RPC 1, 5 (Wilberforce J).

3. Section 92(4)(b), which was the ground of removal that was alleged by the Opponent in the First Proceeding, could have been rebutted by the Applicant by showing use of the Applicant’s Earlier Trade Marks at some point between 1 August 2018 to 1 August 2021 in relation to any or all of the registered goods (though there are other ways to directly rebut that allegation[19] and a discretionary basis for the Registrar to decide not to remove a trade mark[20]). Crucially, the Applicant (in its role there as the removal opponent) was not required to provide evidence of ‘continuous use’ of the Applicant’s Earlier Trade Marks or use of those outside of the Non-use Period. The success or failure of an opposition to removal for non-use does not necessitate a conclusion on the accuracy of the Statement. The relevant periods and the facts required to be established, for each type of matter, are too different to permit me to draw the conclusion the Opponent suggests.

   [19] See s 100(3).

   [20] Section 101(3).

4. Concluding that the evidence from the First Proceeding by itself requires that the Applicant now separately offer proof the Statement is true, would amount to an improper shifting of the burden which remains squarely on the Opponent. Had s 44 been a ground of opposition, then it would have been for the Opponent to show the requirements of s 44(1) or 44(2) are met. If met, the Applicant would then be required show that ss 44(3) and/or 44(4) were indeed applicable, had it sought to rely on them. However, all that has been pressed in this matter is s 62(b). The EIS does not impugn the Statement such that the Applicant must now show that the Statement was true. The onus remains with the Opponent, which it has not discharged. After assessment of the evidence, I am not satisfied that the Statement is false in material particulars.

5. Accordingly, the Opponent has not established the ground of opposition under s 62(b).

Decision

1. Section 55 relevantly provides:

   55  Decision

   (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.

2. The Opponent has not established the ground of opposition. Accordingly, the opposition has not been made out. The Trade Mark may proceed to registration after the appeal period expires.

Costs

1. Normally the party that prevails is entitled to its costs. The Applicant has prevailed. I award costs against the Opponent under s 221 of the Act in accordance with schedule 8 of the Regulations.

Benjamin Goldsworthy

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

30 October 2023