Tomkin Australia Pty Ltd v Jab Design Pty Ltd

[2016] ATMO 73

TRADE MARKS ACT 1995

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

Re:Opposition by Tomkin Australia Pty Ltd to registration of trade mark application 1606921(21) - JAB DESIGN - filed in the name of Jab Design Pty Ltd.

Delegate:	Cristy Condon
Representation:	Opponent: Melissa Thompson of Axis Legal Pty Ltd Applicant: Bridie Nolan of Counsel 2016 ATMO 73
Decision:	Trade Marks Act 1995 (Cth) – section 52 opposition: grounds for opposition ss 58, 60, 62A and 42; none established; trade mark to proceed to registration.

Background

1. This is an opposition brought by Tomkin Australia Pty Ltd (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘the Act’) to registration of the trade mark subject of the application detailed below in the name of Jab Design Pty Ltd (‘the Applicant’):

Application Number:	1606921
Priority Date:	20 February 2014
Goods:	Class 21: Plastic trays ( household utensils)  (‘the Applicant’s Goods)
Trade Mark:	(‘the Trade Mark’)

1. Acceptance of the Trade Mark for possible registration was advertised in the Australian Official Journal of Trade Marks on 17 July 2014.  The Opponent filed a Statement of Grounds and Particulars (‘SGP’) on 22 September 2014.  The SGP was deemed inadequate by this Office and the Opponent proceeded to file an amendment to the SGP which included the deletion of the s 44 ground for opposition (‘the rectified SGP’).  The rectification of the SGP was allowable under regulation 5.8 of the Trade Mark Regulations 1995.  The Applicant filed a Notice of Intention to Defend on 24 October 2014. 

Grounds of Opposition, Onus and Standard of Proof

1. The Opponent presses the grounds of opposition in the rectified SGP being ss 58, 60, 42 and 62A of the Act. To successfully oppose the application the Opponent needs to establish at least one of those grounds.

2. The onus of proof in an opposition rests upon the Opponent.[1]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2]  The date at which the rights of the parties are to be determined is 20 February 2014, being the filing date of the application (‘the Priority Date’).[3]

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [32].

   [2] Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 [133].

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.

Evidence

1. In a rather surprising turn of events the Applicant is the only party to have provided evidence in these proceedings, this being its evidence in answer.  This evidence consists of a declaration made on 27 May 2015 by Barry John James Nolan (Barry Nolan), a Director of the Applicant, with Exhibit BJJN-1 (‘the Nolan Declaration’).  The Opponent did not file evidence in support of its grounds for opposition. 

2. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  The parties requested a hearing and both filed submissions.  The hearing took place on 5 September 2016 in Canberra before me as a delegate of the Registrar of trade marks.

3. I am to decide the opposition as required by s 55 of the Act which 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) 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.

Discussion

1. The Nolan declaration and the written submissions of the parties establish that a director of the Applicant is Barry Nolan and that the Applicant was incorporated in June 1998.  The Applicant operates under different trading names such as JAB Design Australia, Jenbarry & Associates and The Great Australian Golf Experience.  Barry Nolan and his wife Jennifer Nolan founded the ‘JAB’ business in 1993 as a registered partnership and commenced trading under the business names of Jenbarry & Associates and JAB Design Australia.  The businesses were, as I indicated above, incorporated at a later date.  The JAB business traded in various products relevantly including melamine and plastic products manufactured by Thai company ‘Superware’ which were branded with the Trade Mark and sold in Australia.

2. I am satisfied that after a period of negotiating their employment package both Barry and Jennifer Nolan became employees of the Opponent in January 2010 and in early 2014 they tendered their resignation with the Opponent.  However, it would be untenable for me to be satisfied on the balance of probabilities that the Applicant’s apparent common law rights in the Trade Mark transferred to the Opponent in the period of Mr and Mrs Nolan’s employment with it.  The Opponent has not filed any evidence in this matter. 

3. I am baffled because the Opponent did not file evidence in support of its grounds of opposition, and nor did it seek any extensions of time in which to file the evidence.  It would have been in the Opponent’s interest to have filed documentary evidence which showed that it exercised some control over the Trade Mark during the term of Barry and Jennifer Nolan’s employment with it.

4. The oral hearing was, in my opinion, a vexatious affair for all parties.  I say this because an opponent ought to know that it is paramount, if it wishes to succeed in establishing particular grounds for opposition, that the SGP is accompanied at a later date by the filing of the opponent’s own probative evidence.  In this matter it seems that the Opponent tried to remedy the lack of evidence by attempting to have the Office issue a Notice to Produce to the Applicant (a little over one week before the oral hearing). The Notice to Produce was, for a number of reasons (which I will not go into here), not issued.

5. Of course, there are some grounds of opposition that can be established without the opponent filing evidence in support of its ground/s. Such grounds are s 41 and s 44 of the Act (in the case of s 44 the nomination of an earlier filed trade mark number in the SGP will suffice for the delegate to give consideration to the ground of opposition). As I have already indicated above, the Opponent has pressed the grounds of opposition under ss 58, 60, 42 and 62A of the Act. It is not enough to ask the delegate to assume the behaviour of the Applicant and to make inferences about evidence missing from the Applicant’s evidence in answer. The Applicant has no case to answer in these proceedings. The Opponent has the onus of proof.

6. In my view, I would be falling into error if I accepted the Opponent’s submissions with respect to any of the grounds without at least considering some contemporaneous evidence which supported them.  Submissions do not carry the weight of evidence.  I am, however, satisfied on the balance of probabilities that an employment contract existed between the Opponent and Barry and Jennifer Nolan (and this fact is not contested by the parties). This employment contract was not tendered in evidence so I am not satisfied (as the Opponent would have me believe) that this employment contract was consideration for the sale of the JAB business. 

7. None-the-less, according to the evidence that I have before me today, I am satisfied that the employment contract was between Barry Nolan, Jennifer Nolan and Tomkin Australia Pty Ltd - not the Applicant and the Opponent.

8. That being said, I am satisfied that the Opponent has failed to establish any of the grounds in the rectified SGP.

Decision and Costs

1. The trade mark application may proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

1. As costs typically follow the event, I award costs against the Opponent according to Schedule 8 of the Trade Mark Regulations 1995.

Cristy Condon
Hearing Officer
Trade Mark and Designs Hearings & Oppositions
15 September 2016