The Design Hunter Pty Ltd v Indesign Publishing Pty Ltd - [2016] ATMO 111

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by The Design Hunter Pty Ltd to registration of trade mark application no. 1637467 (41) - Design Hunter - in the name of Indesign Publishing Pty Ltd

Delegate:

Debrett G. Lyons

Representation:

Opponent: Sue Chrysanthou of Counsel, instructed by IP Solved (ANZ) Pty. Ltd.

Applicant: Chris Round of G & L Gates, Lawyers

Decision:

2016 ATMO 111

Opposition under section 52 of the Trade Marks Act 1995: section 44 considered and established; section 44(3)(b) not established; opposition successful – registration refused.

Background

On 18 February 2015 The Design Hunter Pty Ltd (“the Opponent”) filed an opposition pursuant to section 52 of the Trade Marks Act 1995 (“the Act”) to registration of a trade mark in the name of Indesign Publishing Pty Ltd (“the Applicant”).
Current details of the trade mark application are set out below:
Application No: 1637467
Priority Date: 29 July 2014
Services:Class 41: Arranging and conducting of seminars; Conducting seminars
(“the Services”)
Trade Mark: Design Hunter (“the Trade Mark”)
On 3 March 2015 the Opponent filed a Statement of Grounds and Particulars (“SGP”).
On 8 April 2015, the Applicant filed a Notice of Intention to Defend the opposition.
The parties filed evidence as later described, after which a hearing was requested and took place in Canberra on 19 August, 2016. I heard the matter as a delegate of the Registrar of Trade Marks, taking submissions via videoconference facilities. Sue Chrysanthou of Counsel, instructed by IP Solved (ANZ) Pty Ltd, appeared for the Opponent. The Applicant was represented by Chris Round of K & L Gates, Lawyers. Both representatives provided me with outline written submissions prior to the hearing and in accordance with directions I gave.
The parties are known to each other, having met in an opposition before this Office in connection with the same Trade Mark filed in class 35 in connection with services described as: “Organising an experiential consumer event that brings together commercial and residential design retailers”.[1]
[1] Trade Mark Application No. 1505993.
The resulting decision (“the Earlier Decision”)[2] was to refuse registration of the Trade Mark after the Opponent had established a ground of opposition under section 58 of the Act.
[2] The Design Hunter Pty Ltd v Indesign Publishing Pty Ltd [2014] ATMO 93.
Grounds of Opposition
The SGP listed grounds corresponding with sections 42(b), 43, 58, 60 and 62A of the Act. At the hearing and in its written submissions the Opponent did not press the section 43 ground and I treat it as abandoned.
To succeed in its opposition the Opponent bears the onus of establishing at least one of the four grounds pressed. The relevant standard of proof required is the ordinary civil standard based on the balance of probabilities.[3] The relevant date at which the rights of the parties are to be determined is 29 July 2014 (the Priority Date). In essence the grounds pressed are that:
· Use…

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: [2016] ATMO 111
Decision Date: 2 December 2016

CaseChat Overview and Summary

The Design Hunter Pty Ltd (the Applicant) sought to register a trade mark, application number 1637467. Indesign Publishing Pty Ltd (the Opponent) opposed this application. The dispute concerned whether the Applicant's proposed trade mark was substantially identical or deceptively similar to the Opponent's registered trade mark, registration no. 1526158, for similar services. The matter was heard by Debrett Lyons, a Hearing Officer.

The primary legal issue before the Hearing Officer was whether the Applicant's trade mark application should be rejected under section 44(2) of the relevant Act. This section requires rejection if the applicant's trade mark is substantially identical or deceptively similar to a registered trade mark for similar services, and the applicant's priority date is not earlier than the registered trade mark's priority date. The Hearing Officer also considered whether any exceptions under section 44(3) applied, specifically concerning continuous use of the applicant's trade mark.

The Hearing Officer found that the Opponent's registered trade mark had a priority date of 22 November 2012, which was earlier than the priority date of the Applicant's opposed trade mark. Relying on a previous decision by Hearing Officer Kirov, which found the marks to be substantially identical, and independently concluding that the marks were deceptively similar for the purposes of section 44(2), the Hearing Officer determined that the opposition was successful on the ground raised under section 44 of the Act. The Hearing Officer declined to apply section 44(3) due to insufficient evidence of continuous use by the Applicant in relation to the services in question.

Consequently, the Hearing Officer refused to register the Applicant's trade mark application number 1637467. As the Opponent was the successful party, it was awarded costs against the Applicant in accordance with Schedule 8 of the Trade Mark Regulations 1995.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

For their evidence the parties rely on the following statutory declarations:Evidence in supportMelissa Joye Bonney made on 2 June 2015 with Exhibits MJB-1 to MJB-7 (“Bonney 4”).Evidence in answerKavita Nandan made on 28 September 2015 (“Nandan”)Evidence in replyChristopher John Lee made on 15 December 2015 with Exhibit CJL-1 (“Lee”). The Applicant also seeks to reply on the statutory declarations of:Melissa Joye Bonney made on 11 September 2013 with Exhibit MB-1 (“Bonney 2”), being a declaration made by Ms Bonney on 8 February 2013 with Exhibits MJB-1 to MJB-6 (“Bonney 1”); andMelissa Joye Bonney made on 20 November 2013 together with Exhibits MJB-1 to MJB-9 (“Bonney 3”). The Opponent has objected to the Applicant’s attempt to rely on Bonney 1, 2 and 3. Bonney 2 and 3 were filed as evidence in the Earlier Decision. Bonney 1 was originally filed in support of the Opponent’s then application (now registration) no. 1526158 in classes 35 and 42. None of Bonney 1, 2 or 3 was exhibited to Bonney 4 and the Applicant submits that evidence has not been filed in these proceedings in accordance with the Trade Mark Regulations 1995 (“the Regulations”). It is not necessary for me to consider that argument in detail. If the issue is ultimately one of procedural fairness then that material has already been seen by the Applicant in the past and there is nothing to take it by surprise.[4] As it happens, I am able to reach my findings based on the Act, the uncontested facts and the Earlier Decision (which considered much of the same evidence) and so the status of Bonney 1, 2, and 3 in these proceedings is not critical.[4] Notwithstanding its claim that certain pages/exhibits were omitted from the papers it received previously.Discussion I am able to determine this opposition on the basis of the ground of opposition based on section 44 of the Act. Section 44(2) provides:(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. For the purposes of section 44(2) the Opponent relies on its registration no. 1526158 for the trade mark shown below (“the Opponent’s Trade Mark”): The Opponent’s Trade Mark has a priority date of 22 November 2012, earlier than the Priority Date of the (opposed) Trade Mark. As noted already, the Earlier Decision involved a comparison of the same trade marks. Hearing Officer Kirov found that the marks are substantially identical.[5] I understand that he was following the direction given by the High Court in recent times.[6] I have no reason to depart from Hearing Officer Kirov’s finding and only add that there is, in any event, no doubt that the trade marks are deceptively similar for the purposes of section 44(2).[5] See footnote 2, [37].[6] See E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; (2010) 86 IPR 224.

Decision

Reasons for decision

Nothing before me indicates a different state of affairs before the Priority Date and I have no reason to invoke section 44(3)(b). The Applicant’s earlier registrations are limited to publishing. The “continuous use” referred to is in connection with publishing. The evidence of “curated panel discussions” (whether or not that activity might fall within the meaning of a “seminar”) is not compelling. I consider that the absence of evidence of confusion is bound up by those observations. There is nothing which makes me think that it is proper to accept the Trade Mark subject to section 44(3)(a) and I decline to do so.Decision Section 55(1) of the Act relevantly provides that, unless the proceedings are discontinued or dismissed:…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) inrespect of the goods and/or services then specified in the application;having regard to the extent (if any) to which any ground on which theapplication was opposed has been established.Note: For limitations see section 6. I have found the opposition to be successful on the ground raised pursuant to section 44 of the Act. I accordingly refuse to register trade mark application number 1637467. Costs Each party requested an award of costs in its favour. As the successful party, the Opponent is entitled to its costs and I accordingly award costs against the Applicant as per Schedule 8 of the Regulations.Debrett LyonsHearing OfficerTrade Marks HearingsDecember 2, 2016

Ratio Decidendi

Legal Principle Established

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