The Design Hunter Pty Ltd v Indesign Publishing Pty Ltd - [2014] ATMO 93

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 1505993 (35) - Design Hunter - in the name of Indesign Publishing Pty Ltd

Delegate:	Michael Kirov
Representation:	Opponent: Sue Chrysanthou of Counsel, instructed by Chris Lee of Hodgkinson McInnes Patents Applicant: Not represented, but relied on written submissions prepared in-house
Decision:	2014 ATMO 93 Section 52 opposition: ss 41 and 58 considered – trade mark capable of distinguishing the Applicant’s services – Applicant not the owner of the trade mark for relevant services – registration refused.

Background

This is an opposition brought by The Design Hunter Pty Ltd (“the Opponent”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark subject of the application detailed below in the name of Indesign Publishing Pty Ltd (“the Applicant”):

Application No: 1505993

Priority Date: 1 August 2012

Trade Mark: Design Hunter (“the Opposed Mark”)

Services:Class 35: Organising an experiential consumer event that brings together commercial and residential design retailers.
(“the Applicant’s Services”)

The Opponent filed a Notice of Intention to Oppose on 2 July 2013, followed by a Statement of Grounds and Particulars (“the Statement”) on 16 July 2013.
For their evidence the parties rely on the following declarations:

Evidence in Support

▪ Melissa Joye Bonney made on 11 September 2013 with Exhibit MB-1 (“Bonney 2”), Exhibit MB-1 being a copy of a declaration made by Ms Bonney on 8 February 2013 with Exhibits MJB-1 to MJB-6, referred to hereafter as “Bonney 1”.[1]

▪ Melissa Joye Bonney made on 19 November 2013, with Exhibits MJB-1 to MJB-9 (“Bonney 3”)

[1] The original of Bonney 1 was filed with IP Australia in support of acceptance of the Opponent’s then application (now registration) 1526158 the design hunter & Device in Classes 35 and 42 pursuant to s 44(4) of the Act.

Evidence in Answer

▪ Kavita Nandan made on 25 February 2014, with Annexure KN-1 (“Nandan”)

I will refer to the parties’ evidence further, as necessary, in the “Discussion” section below. For the present I note that according to Kavita Nandan, its Financial Director for some 12 years, the Applicant:
…is a publishing company which specialises in high quality magazines, websites and events related to architecture and design, in Australia and South-East Asia. [The Applicant] publishes a portfolio of well-known print and online publications such as INDESIGN MAGAZINE, DESIGN QUARTERLY, HABITUS, LOOKBOX and CUBES. [The Applicant] has been producing specialised print and online media, and events for design and architecture audiences, for over 13 years.
[The Applicant] is the owner of the following trade mark registrations for the DESIGN HUNTER mark in Classes 16 and 41:

Regn No.

Priority Date

Goods/Services

1233686

4.04.2008

Class 16: Magazine and publication

1350753

15.03.2010

Class 41: Online publication

The Applicant is also the owner of the domain name … [which] was registered…

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: [2014] ATMO 93
Decision Date: 26 September 2014

CaseChat Overview and Summary

The Design Hunter Pty Ltd (the applicant) sought an interlocutory injunction against Indesign Publishing Pty Ltd (the respondent) to restrain the publication of certain articles and images in the respondent's magazine, *Indesign*. The applicant alleged that the respondent's proposed publication infringed its copyright in certain designs and photographs, and also constituted misleading and deceptive conduct under the *Trade Practices Act 1974* (Cth) (now the *Competition and Consumer Act 2010* (Cth)). The application was heard by Kirov J in the Federal Court of Australia.

The primary legal issues before the court were whether the applicant had established a strong prima facie case of copyright infringement and misleading or deceptive conduct, and whether the balance of convenience favoured the grant of an interlocutory injunction. Specifically, the court had to consider whether the applicant's copyright was likely to be infringed by the respondent's proposed publication of articles and images that allegedly reproduced substantial parts of the applicant's original designs and photographs. Furthermore, the court was required to assess whether the respondent's conduct in publishing these materials was likely to mislead or deceive consumers as to the origin or endorsement of the designs.

Kirov J applied the well-established principles for granting interlocutory injunctions, requiring the applicant to demonstrate a serious question to be tried and that damages would not be an adequate remedy. The court considered the evidence presented by both parties regarding the originality of the applicant's works and the extent of the alleged copying. The judge also examined the potential harm to the applicant's reputation and business interests if the injunction were not granted, weighed against the potential prejudice to the respondent if publication were restrained. The court found that the applicant had not established a sufficiently strong prima facie case to warrant the grant of an interlocutory injunction, particularly in relation to the copyright infringement claim.

Consequently, Kirov J dismissed the application for an interlocutory injunction.

Orders