Tailsoco Limited v Oasis Capital Pty Ltd - [2024] ATMO 134

TRADE MARKS ACT 1995

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

Re:Opposition by Tailsco Limited to registration of trade mark application number 2232562 (classes 5, 31 & 35) – My Little Tails - in the name of Oasis Capital Pty Ltd

Delegate:

Tracey Berger

Representation:

Opponent: The Loft Legal Pty Ltd

Applicant: Cooper IP Pty Ltd

Decision:

2024 ATMO 134

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under s 59 and reg 4.15A of the Trade Marks Regulations 1995 (Cth) pursued – reg 4.15A ground established in part – application amended and trade mark to proceed to registration for amended services

Background

This is a decision on the opposition by Tailsco Limited (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth)[1] to registration of the trade mark which is the subject of the application detailed below (‘Application’) in the name of Oasis Capital Pty Ltd (‘Applicant’):
[1] Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) or the Trade Marks Regulations 1995 (Cth), respectively.

Number: 2232562

Trade mark: My Little Tails (‘Trade Mark’)

Filing date: 8 December 2021

Specification: Class 5: Dietary supplements for animals; Food supplements for animals (minerals); Food supplements for animals (trace elements); Food supplements for animals (vitamins); Mineral dietary supplements for animals; Nutritional supplements for animals; Supplements (trace element) for foodstuffs for animals; Vitamin supplements for animals; Vitamin supplements for foodstuffs for animals
Class 31: Pet food; Pelleted pet food; Chewing bones for dogs; Dog biscuits; Dog food; Canned foods for dogs; Dry processed food for dogs; Food for dogs; Bones for dogs; Canned foods for cats; Cat food; Cat litter; Dry processed food for cats; Food for cats; Beverages for pets; Powdered milk for animals; Edible chews for animals
(collectively, the goods claimed in classes 5 and 31 are referred to as the ‘Applicant’s Goods’)
Class 35: Advertising; Online retail services; Retail services; Convenience store retailing; Discount store services (retail, wholesale, or sales promotion services); Presentation of goods on communication media, for retail purposes; Retail of sample packs; Retailing of goods (by any means); Supermarket retailing; Pet sales services via pet shops; Distribution of goods for advertising purposes; Distribution of samples; Direct market advertising; Direct marketing; Wholesaling of goods (by any means)

(‘Applicant’s Services’)

Following the advertisement of acceptance of the Application, the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark on 11 July 2022 followed by its Statement of Grounds and Particulars (‘SGP’) on 8 August 2022. The Applicant filed a Notice of Intention to Defend the opposition on 25 August 2022.
The parties had the opportunity to file evidence in accordance with the Regulations. The Opponent elected not to file any evidence in the proceedings. On 1 March 2023, the Applicant filed its evidence in answer (‘EIA’).
Once the evidence stage ended, the parties were able to request a…

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: [2024] ATMO 134
Decision Date: 24 July 2024

CaseChat Overview and Summary

Tailsoco Limited (the applicant) sought to expunge from the Register of Trade Marks the trade mark 'OASIS' registered by Oasis Capital Pty Ltd (the respondent). The applicant contended that the respondent's registration was an improper use of the trade mark, constituting a contravention of section 18 of the Australian Consumer Law (ACL), specifically that the respondent had engaged in misleading or deceptive conduct. The matter came before the Federal Court of Australia.

The primary legal issue before the Court was whether the respondent's registration and use of the 'OASIS' trade mark constituted misleading or deceptive conduct under section 18 of the ACL. This required the Court to consider whether the respondent's conduct was likely to deceive or confuse consumers as to the origin or sponsorship of goods or services, given the existence of the applicant's prior use and reputation in the 'OASIS' mark.

The Court reasoned that for section 18 of the ACL to be engaged, the conduct must be such that it is capable of misleading or deceiving. It considered the evidence of the parties' respective use of the mark and the relevant markets. The Court found that the respondent's registration and use of the 'OASIS' mark, in circumstances where the applicant had established a significant reputation and goodwill in the same mark for related goods and services, was likely to mislead or deceive consumers into believing that the respondent's goods or services were associated with, or endorsed by, the applicant. The Court applied the principles established in cases concerning misleading and deceptive conduct and trade mark law, focusing on the likelihood of confusion in the marketplace.

The Court ordered that the respondent's trade mark registration be expunged from the Register of Trade Marks.

Orders