Twins Special LLC v Mink Pink Fashion Group Pty Ltd

[2024] ATMO 222

TRADE MARKS ACT 1995

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

Re:Opposition by Twins Special LLC to registration of trade mark application number 2121930 (class 25) - Twiin - in the name of Mink Pink Fashion Group Pty Ltd

Delegate:

Tracey Berger

Representation:

Opponent: AJ Park

Applicant: CMI Legal

Decision:

2024 ATMO 222

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b) and 60 considered – no grounds established – trade mark to proceed to registration

Background

1. This decision concerns an opposition by Twins Special LLC ( ‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth)[1] to registration of the following trade mark filed in the name of Mink Pink Fashion Group 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) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

Number:  2121930 (‘Application’)

Trade Mark:  Twiin (‘Trade Mark’)

Filing Date:  21 September 2020 (‘Relevant Date’)

Goods:

Class 25: Apparel (clothing, headgear); Articles of clothing for theatrical use; Articles of clothing made from wool; Articles of clothing made of fur; Articles of clothing made of leather; Articles of clothing made of plush; Articles of water-resistant clothing; Articles of waterproof clothing; Beach clothing; Belts (clothing); Braces for clothing (suspenders); Casual clothing; Clothing for surfing; Clothing for swimming; Combinations (clothing); Girl's clothing; Gloves (clothing); Headbands (clothing); Jackets (clothing); Jerseys (clothing); Jump suits (clothing); Knitted clothing; Ladies clothing; Leather belts (clothing); Linen articles of clothing; Men's clothing; Pants (clothing); Plush clothing; Ready-to-wear clothing; Silk clothing; Sports clothing (other than golf gloves); Women's clothing; Wristbands (clothing); Wristlets (clothing); None of the foregoing being footwear

(‘Applicant’s Goods’)

Endorsement:                 Provisions of subsection 44(4) and/or Reg 4.15A applied.[2]

[2] The mark cited and subsequently overcome in the examination process is not owned by the Opponent nor relied on by the Opponent in this proceeding.

1. The Application was examined as required by s 31 and advertised for possible registration on 29 April 2022.

2. The Opponent filed a Notice of Intention to Oppose on 29 June 2022 followed by a Statement of Grounds and Particulars (‘SGP’) on 29 July 2022.  The Applicant filed a Notice of Intention to Defend on 29 August 2022.

3. After a cooling off period, the parties had the opportunity to file evidence in accordance with the Regulations. The Opponent did not file any evidence in support of the opposition. The Applicant filed its evidence in answer on 13 December 2023 consisting of a declaration of Elaine Qili Wang, Director of the Applicant, made on 7 December 2023 with Annexures A-F (‘Wang’). No evidence in reply was filed.

4. Once the time for filing evidence ended, the parties were able to request a hearing.  The Applicant requested a hearing by written submissions and filed those submissions on 24 October 2024.  The Opponent did not ask to be heard.  This matter has been allocated to me to determine as a delegate of the Registrar of Trade Marks and I do so based on the aforementioned materials.

Grounds, onus and relevant date

1. In its SGP, the Opponent nominated grounds of opposition under ss 42(b) and 60. 

2. The onus of proof in an opposition rests upon the Opponent.[3]   The relevant standard of proof is the ordinary civil standard based on 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).

3. The date at which the rights of the parties are to be determined is 21 September 2020, being both the filing date and priority date of the Application (‘Relevant Date’).[5]

   [5] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592, 595 (Kitto J).

The Opponent

1. The Opponent has not filed any evidence and as such I have no information about it other than what is set out in the SGP.  A summary of the information provided in the SGP is set out below.

2. The Opponent is a sports apparel and equipment company which sells sports apparel, boxing gloves and wraps, boxing bags, protective wear, bags, accessories and similar goods under the marks TWINS, TWINS SPECIAL and  (collectively ‘Opponent’s Marks’).  The Opponent claims to have used the Opponent’s Marks internationally and in Australia since 1993.

The Applicant

1. Wang declares that the Applicant has used the Trade Mark since 2016 in relation to the Applicant’s Goods.  Annexed to Wang are copies of invoices; evidence that the Applicant has held the domain name since 2017; catalogues featuring the Applicant’s Goods from 2016, 2020 and 2021 and a profit and loss summary relating to the Applicant’s Goods from financial years 2016-2021.

Discussion

1. As noted above at [6], the Opponent has nominated grounds of opposition under ss 42(b) and 60.  Both grounds require the Opponent to establish by way of evidence that it had a reputation in one or more of the Opponent’s Marks at the Relevant Date in Australia.  The Opponent has not filed any evidence or submissions to substantiate the claims in its SGP that it has a reputation in the Opponent’s Marks or has used those marks in Australia.  In the absence of evidence or submissions, the Opponent has not discharged its onus and the grounds of opposition are unsuccessful.

Decision

1. The Opponent has failed to establish a ground of opposition.  Accordingly, the Trade Mark may proceed to registration under application number 2121930 not less than one month from the date of this decision.  If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

Tracey Berger

Hearing Officer

Delegate of the Registrar of Trade Marks

18 November 2024