Unilever PLC v Damien Amos - [2020] ATMO 39

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Unilever PLC to registration of trade mark application number 1828548 (class 30) – LOVE TEA (fancy) – filed in the name of Damien Amos

Delegate: M. Cooper

Representation: Opponent: Ross McLean, Baker & McKenzie
Applicant: Craig Smith of counsel instructed by King & Wood Mallesons

Decision: 2020 ATMO 39
Trade Marks Act 1995 (Cth) – opposition under section 52 – section 41 and section 58 grounds pressed – section 58 grounds established – registration refused
Background

This matter concerns an opposition by Unilever PLC (‘the Opponent’), under s 52 of the Trade Marks Act 1995 (Cth) (‘the Act’), to registration of the trade mark detailed below in the name of Damien Amos (‘the Applicant’):
Application Number: 1828548
Trade Mark: (‘the Trade Mark’)
Filing Date: 14 March 2017
Specification:
Class 30:
Apple flavoured tea; Aromatic teas (other than for medicinal use); Artificial tea (other than for medicinal use); Beverages made of tea; Beverages with tea base; Chai tea; Flowers or leaves for use as tea substitutes; Fruit flavoured tea (other than medicinal); Fruit tea (other than for medical purposes); Herb tea not for medical purposes; Herb tea-based beverages not for medical purposes; Herbal tea (other than for medicinal use); Iced tea; Instant tea (other than for medicinal purposes); Jasmine tea, other than for medicinal purposes; Mate (tea); Milk chocolate teacakes; Non-medicated tea bags; Non-medicated tea based beverages; Non-medicated tea beverages; Non-medicated tea extracts; Non-medicated tea products; Orange flavoured tea (other than for medicinal use); Packaged tea (other than for medicinal use); Preparations for making beverages (tea based); Preparations with a tea base; Rooibos tea (not medicinal); Tea (not medicinal); Tea cakes; Tea essence; Tea-based beverages; Tisanes made of tea
(‘the Goods’)
The Trade Mark was examined and advertised as accepted for possible registration on 28 June 2018 in the Australian Official Journal of Trade Marks.
On 28 August 2018, the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark. On 28 September 2018, a Statement of Grounds and Particulars (‘SGP’) was filed which cited opposition grounds under sections 41 and 58 of the Act. The Applicant filed a Notice of Intention to Defend on 25 October 2018. The parties then filed their evidence as detailed further below.
On 19 August 2019 the Applicant requested a hearing. I heard the matter in Canberra on 6 December 2019 as a delegate of the Registrar of Trade Marks (‘the Registrar’). Ross McLean of Baker & McKenzie appeared for the Opponent. The Applicant was represented by Craig Smith of Counsel, instructed by King & Wood Mallesons.
Evidence
Evidence in Support (‘EIS’) was filed by the Opponent on 31 January 2019. It comprised the declaration of Esmeralda Baron, dated 30 January 2019, with Annexures EB-1 to EB-11 (‘Baron declaration’).
The Applicant’s Evidence…

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: [2020] ATMO 39
Decision Date: 13 March 2020

CaseChat Overview and Summary

This matter concerned an opposition by Unilever PLC (the Opponent) to the registration of a trade mark by Damien Amos (the Applicant). The dispute arose from the Opponent's objection to evidence filed by the Applicant in reply to the opposition. The Applicant contended that this evidence introduced a new argument under section 58 of the relevant Act, which had not been pleaded or particularised in the initial opposition and had not been addressed in the Opponent's evidence in support. The Applicant argued that allowing this material would result in grave injustice and be inconsistent with natural justice.

The court was required to determine whether the Opponent should be precluded from relying on the evidence filed in reply, given that it allegedly introduced a new argument not previously raised. The court also had to consider the implications of this evidence in light of the grounds on which the application for trade mark registration was opposed. The overarching legal issue was whether the admission of this evidence would offend the principles of natural justice and prejudice the Applicant's case.

The court, acting as a delegate of the Registrar, determined the objection at the hearing. The court noted that section 55 of the Act mandates the Registrar to decide whether to refuse or register a trade mark, having regard to the grounds on which the opposition was established. In this instance, the court found that the Opponent had established a ground of opposition. Consequently, the court refused to register the trade mark application.

Orders

Orders of the court

Full text does not contain this section.

Background

Background to the litigation

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Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

Section 55 of the Act relevantly provides:Decision(1) Unless subsection (3) applies to the proceedings, 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.Note: For limitations see section 6. Subsection (3) does not apply to these proceedings. As the Opponent has established a ground of opposition, I refuse to register trade mark application 1894891.

Ratio Decidendi

Legal Principle Established

The Opponent’s Evidence in Reply (‘EIR’) was filed on 16 July 2019 and comprised the declarations of Gillian Mei Ching Woon dated 16 July 2019 with Annexures GW-1 to GW-11 (‘Woon declaration’); Judith Deborah King dated 16 July 2019 with Annexures JDK-1 to JDK-8 (‘King declaration’); Paul Connell dated 11 July 2019 (‘Connell declaration’). On 30 July 2019 the Applicant’s legal representatives wrote to this office objecting to the Opponent’s EIR and claiming that allowing this material into evidence ‘would result in grave injustice to the Applicant.’ A delegate of the Registrar responded to the parties on 29 August 2019 noting that, as the evidence stages were closed and a hearing had been requested, the matter would be determined by the delegate hearing the opposition. These issues are discussed further below. In accordance with directions, the Opponent and Applicant filed written submissions on 15 and 22 November 2019 respectively. The Baron declaration includes several annexures purportedly illustrating the use of the Trade Mark by other entities since 2005. The Applicant outlines the history of the Trade Mark in his declaration and attaches exhibits purporting to demonstrate his use of it. In his declaration Andrew Kinnear states that he has purchased the Goods under the Trade Mark? since 2009 and based on his knowledge the Trade Mark is ‘widely and favourably known in Australia among purchasers of tea…’. Rhys Gorgol states he is the creative director of his company and has worked with Love Tea designing its packaging since July 2015. He similarly states that that based on his knowledge the Goods are ‘widely and favourably known in Australia…’ The Woon declaration describes and attaches documents produced following the Opponent’s Freedom of Information (‘FOI’) requests in respect of the Trade Mark and Australian trade marks 1245083 and 1296943, as well as a series of articles concerning Emma Watson (the Applicant’s partner), the Applicant and the development of Love Tea. The King declaration describes the deponent’s online purchase of tea from the Love Tea website and the associated documents including the receipt invoice, an extract for the domain name and associated ABN details for the owner; ASIC register details for Tea Elle Sea Pty Ltd and the ABN Register entry for the Trustee for the Amos Family Trust. The Connell declaration outlines Nielsen data regarding the total tea sales in Australia for the period 2016 to 2018. Threshold issues As noted above, following the filing of the Opponent’s EIR, the Applicant wrote to IP Australia contending that the EIR raised ‘a different argument under section 58, and one that is not pleaded or particularised in its SGP and that was not addressed in the Opponent’s evidence in support.’ In the absence of a request to amend its SGP, the Applicant submitted that the Opponent should be precluded from relying on this information and sought a direction to that effect, stating that it would be inconsistent with natural justice to allow it. As noted above, I determined this objection at the hearing.

Delegate:	M. Cooper
Representation:	Opponent: Ross McLean, Baker & McKenzie Applicant: Craig Smith of counsel instructed by King & Wood Mallesons
Decision:	2020 ATMO 39 Trade Marks Act 1995 (Cth) – opposition under section 52 – section 41 and section 58 grounds pressed – section 58 grounds established – registration refused