Universal International Music BV v Island Company LLC
[2014] ATMO 18
•28 February 2014
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Universal International Music BV to registration of trade mark application 1164126(25) - ISLAND COMPANY - filed in the name of Island Company, LLC.
Delegate: Iain Campbell Thompson Representation: Opponent:
Applicant: written submissions – Spruson & FergusonDecision: 2014 ATMO 18
S52 opposition – no evidence served and filed – onus on Opponent – onus not discharged – opposition not establishedBackground
In this matter Island Company, LLC (‘the Applicant’) has filed an application under the Trade Marks Act 1995 (‘the Act’) to register the trade mark which appears below:
Application No: 1164126
Priority Date: 28 February 2007Goods:Class 25: Clothing; tropical apparel, including, beachwear, swimwear, pants, shorts, skirts, sarongs, wraps, T-shirts, shirts, pullovers, tops, blouses, dresses, sweaters, jackets; hats, caps and footwear
Trade Mark: ISLAND COMPANY
The Application was accepted for possible registration and advertised as such in the Australian Official Journal of Trade Marks on 5 July 2007.
On 3 October 2007 Universal International Music BV (‘the Opponent’) filed Notice of Opposition (‘the Notice’) to the registration of the trade mark. The Notice cites the following grounds of opposition:
1. The applicant is not the owner of the Trade Mark within the meaning of s.27(1)(a).
2. The applicant does not intend to use or authorise use of the Trade Mark within the meaning of s.27(1 )(b).
3. The Trade Mark is not capable of distinguishing within the meaning of s.41.
4. Use of the Trade Mark would be contrary to law within the meaning of s.42(b).
5. Use of the Trade Mark offends the provision of s.43.
6. The registration of the Trade Mark is prevented by the operation of s.60 in relation to either all or part of the goods and/or services specified.
Neither of the parties has filed evidence in relation to these proceedings.
Both parties were informed of their right to be heard – the Applicant requested a hearing, filed a summary of submissions prior to the hearing and paid the requisite fee. The Opponent did not request a hearing – nor did it put in a written summary of submissions.
As a delegate of the Registrar of Trade Marks I attended a hearing of this matter in Sydney. The Applicant opted not to appear and to rely on its written submissions.
Onus & Relevant Date
The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[1]
[1] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051; (2011) 198 FCR 435; (2011) 283 ALR 743 per Greenwood J at [16] to 32]; Allergan, Inc v Di Giacomo [2011] FCA 1540; (2011) 199 FCR 126; 94 IPR 541 per Stone J at [11] to [12]; Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 per McKerracher J at [9] to [10] and Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81; ( 2012 ) 94 IPR 551 per Dodds-Streeton J at [13] . and, most recently, DC Comics v Cheqout Pty Limited [2013] FCA 478 (22 May 2013) per Bennett J at [13].
The relevant date at which the grounds must be considered is the filing date of the opposed application: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; The Seven Up Company v O.T. Limited [1947] 75 CLR 203 at 211; Rael Marcus v Sabra International Pty Ltd (1995) 30 IPR 261 at 266.
Discussion
The onus in this matter is such that if no evidence is filed by the Opponent which goes to a ground of opposition then that ground cannot be established. It follows from this that none of the grounds of opposition has been established: see Quiksilver International Pty Ltd v s.Oliver Bernd GmbH & Co. KG [2008] ATMO 14 and the cases there discussed.
Decision
At the relevant date subsection 55(1) of the Act provided:
55Decision
(1)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.
Note:For limitations see section 6.
The opposition has not been established.
The trade mark application may then 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 and that the disposition of the application should be in accordance with the Court’s order or direction.
Costs
Having been successful in this matter the Applicant is entitled to its costs at the official scale.
Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
28 February 2014
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