Varinder Toor v Vikas Sharma
[2024] ATMO 158
•30 August 2024
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Varinder Toor to registration of trade mark application number 2259509 (class 41) – VICKY DRIVING SCHOOL - in the name of Vikas Sharma
Delegate: | Timothy Brown |
Representation: | Opponent: Y Intellectual Property Applicant: Morcom Pernat Patent and Trade Mark Attorneys |
Decision: | 2024 ATMO 158 Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 44, 58A, 58, 60, 42 and 62A nominated – s 58 established – trade mark refused registration. |
Background
This decision concerns an opposition brought under section 52 of the Trade Marks Act 1995 (Cth)[1] by Varinder Toor (‘Opponent’) to the registration of the following trade mark:
[1] Each reference to a section in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’). Each reference to a regulation in these reasons is a reference to a section of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).
| Trade Mark Number | 2259509 |
| Trade Mark | VICKY DRIVING SCHOOL (‘Trade Mark’) |
| Owner | Vikas Sharma (‘Applicant’) |
| Filing Date | 30 March 2022 |
| Services | Driving schools (‘Applicant’s Services’) |
| Endorsement | Provisions of subsection 44(4) and/or Reg 4.15A(5) applied |
Following examination under s 33, the Trade Mark was accepted and advertised for opposition on 31 August 2022.
On 31 October 2022, the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark, followed by a Statement of Grounds and Particulars (‘SGP’) on 30 November 2022. The Applicant filed a Notice of Intention to Defend the opposition on 16 January 2023.
The Opponent filed Evidence in Support of the opposition on 18 April 2023. The Applicant filed Evidence in Answer on 24 July 2023. No Evidence in Reply was filed.
Following the end of the evidence stages the Applicant requested to be heard by way of written submissions, and on 29 May 2024 filed written submissions prepared by Norman Morcom of Morcom Pernat Patent and Trade Mark Attorneys. No written submissions were filed by the Opponent. The matter was subsequently allocated to me, a delegate of the Registrar of Trade Marks, to decide.
Grounds, Onus and Relevant Date
The grounds of opposition nominated in the SGP are ss 42, 44, 58, 58A, 60, and 62A.
The Opponent bears the onus of establishing one or more of the grounds of opposition.[2] The required standard of proof is on the balance of probabilities.[3] The date at which the rights of the parties will be determined is 30 March 2022 (‘Relevant Date’), being the filing date of the Trade Mark and the priority date of the Trade Mark for the purposes of ss 44 and 60.
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[3] Pfizer Products Inc v Karam (2006) FCA 1663, [6]-[26] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
Evidence
The following evidence was filed:
| Evidence in Support |
| Declaration of Varinder Toor, the Opponent, made on 17 March 2023 with Annexures VT-1 to VT-11 (‘Toor Declaration’). |
| Evidence in Answer |
| Declaration of Vikas Sharma, the Applicant, made on 24 July 2023 with Exhibits VS-01 to VS-14 (‘Sharma Declaration’). |
Opponent
The Opponent is the owner of a driving school academy operating in and around North-Western suburbs of Melbourne, Victoria. According to the Opponent, its business has been in operation since 2012, at which time the Opponent declares that it began using the trade mark ‘VICKY DRIVING SCHOOL’ (‘Opponent’s Mark’).
The Opponent is the owner of the following trade mark registrations:
| Trade Mark No. | Trade Mark | Filing Date | Services |
| 2057692 | (‘692’ Mark’) | 19 December 2019 | Class 41: Driving schools |
| 2059418 | VICKY DRIVING SCHOOL | 3 January 2020 |
The Opponent declares that it has promoted its services under the Opponent’s Mark since 2015 via the website (‘Opponent’s Website’) and the Opponent’s Facebook page. Annexed to the Toor Declaration are screenshots of the Opponent’s Website taken from the Wayback Machine Internet Archive that show use of the Opponent’s Mark on 26 October 2016 and 25 February 2018, and use of the 692 Mark on 27 February 2020.[4] Also annexed to the Toor Declaration are screenshots of the Opponent’s Facebook page showing use of the Opponent’s Marks from various dates between 19 February 2016 and 14 December 2021.[5]
[4] Toor Declaration Annexure VT-1.
[5] Ibid.
Applicant
The Applicant is also the owner of a driving school operating in Melbourne, Victoria. Mr Sharma declares that he adopted the Trade Mark in early 2018 and registered the business name ‘Vicky Driving School’ on 24 March 2018. Mr Sharma explains that ‘Vicky’ was adopted because it is the Australianised name he is known by in his community.
In 2020, Mr Sharma formed the company VDS Melbourne Pty Ltd (‘VDS’) which operates the Vicky Driving School business, as well as Mr Sharma’s other business, Vikas Driving School. According to the Sharma Declaration, ownership of the business name ‘Vicky Driving School’ was transferred to VDS on 15 December 2020 while Mr Sharma retains ownership of the Trade Mark. [6]
[6] Shamra Declaration [8].
The Applicant operates the website (‘Applicant’s Website’). The domain name was registered ‘some time prior to 12 February 2019’[7]. Screenshots from the Applicant’s Website featuring use of the Trade Mark relation to driving education services are exhibited to the Sharma Declaration.[8]
Discussion and Reasons
[7] Ibid [12].
[8] Ibid Exhibits VS-05 to VS-12.
Section 58
Section 58 provides:
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Ownership of a trade mark can be established through authorship and use of a trade mark,[9] or, in the absence of use, a combination of authorship, the filing of an application or an intention to use the trade mark.[10] To succeed in this ground of opposition, the Opponent must establish the following:
· The Trade Mark is identical, or substantially identical, to an earlier trade mark;
· The earlier trade mark has been used in respect of services that are ‘the same kind of thing’ as the Applicant’s Services.
· Another person has an earlier claim of ownership based on use of the earlier trade mark in Australia before the Relevant Date.[11]
[9] Moorgate Tobacco Co Ltd v Philip Morris Ltd (no 2) 156 CLR 414 (Deane J); Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [49] and [55] (Keane CJ, Stone and Jagot JJ).
[10] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [50] (Greenwood, Jagot and Beach JJ) (‘Pham’); The Shell Co of Australia Ltd v Rohm and Haas Co (1948) 78 CLR 601, 627 (Dixon J).
[11] Pham (n 10) [50] (Greenwood, Jagot and Beach JJ).
In its SGP the Opponent claims it is the owner of the Trade Mark, having consistently used the Opponent’s Mark in connection with driving school services since 2012. In support, the Toor Declaration includes the following evidence:
· Screenshots from the Opponent’s Website, sourced from the Wayback Machine Internet Archive, which demonstrates use of the Opponent’s Mark dated 26 October 2016, 25 February 2018, 25 February 2021 and 3 March 2022;[12]
· Screenshot from the Opponent’s Facebook Page with posts featuring ‘VICKY DRIVING SCHOOL’ dated 19 February 2016, 21 March 2017, 17 June 2018, 23 October 2019 and 14 December 2021. [13]
[12] Toor Declaration Annexure VT-1.
[13] Ibid Annexure VT-2.
Whether two trade marks are substantially identical is determined by a side-by-side comparison having regard to the essential features of the trade marks and the total impression of resemblance or dissimilarity that emerges from that comparison.[14] In this case, the Opponent’s Mark, being comprised of the plain words ‘VICKY DRIVING SCHOOL’, is identical to the Trade Mark.
[14] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [12] (Windeyer J).
I am also satisfied that the Opponent’s Mark was used in relation to services of the same kind as the Applicant’s Services. The Opponent’s Mark has been used in relation to driving school lessons and driving education services, which are the same services as the Applicant’s driving school services.
The remaining question is whether the Opponent has a prior claim of ownership based on its use of the Opponent’s Mark. The screenshots from the Opponent’s Website and the extracts from the Opponent’s Facebook page included in the Toor Declaration demonstrate use of the Opponent’s Mark from various dates between 19 February 2016 and the Relevant Date. I note that some of use of the Opponent’s Mark is in proximity to other trade marks, namely the 692 mark, and the following logo:
In my view, the use of these other trade marks by the Opponent does not detract from the Opponent’s claim of ownership. There is sufficient use of the Opponent’s Mark in its plain word form or otherwise separate from these trade marks to demonstrate that the Opponent had used the Opponent’s Mark continuously from 19 February 2016 to the Relevant Date.
I am satisfied that the Opponent’s evidence demonstrates use of the Opponent’s Mark prior to any use of the Trade Mark by the Applicant. The earliest purported use of the Trade Mark by the Applicant was the registration of the business name ‘VICKY DRIVING SCHOOL’ on 24 March 2018. The Trade Mark was also used on the Applicant’s Website on 12 February 2019. In relation to the registered business name, the Applicant submits that the Opponent has incorrectly identified itself as the owner of the business name ‘VICKY DRIVING SCHOOL’. I acknowledge that the Australian Securities and Investment Commission business name registration, included in the Toor Declaration, indicates that the Opponent is the owner of the business name ‘VICKY DRIVING SCHOOL MELBOURNE’ rather than ‘VICKY DRIVING SCHOOL’, and that the Opponent’s business name was registered on 28 June 2018. However, this has no bearing on the issue of ownership of a trade mark. The registration of a business name does not demonstrate that the name has been used as a trade mark. There is a distinction between a business name, which serves an administrative function, and use of a trade mark in respect of goods or services.[15] In any event, the registration of both business names, and the use of the Trade Mark on the Applicant’s Website occurred well after the first demonstrated use of the Opponent’s Mark.
[15] Shahin Enterprises Pty Ltd v Exxonmobile Oil Corporation [2005] FCA 1278, [73] (Lander J).
For these reasons I am satisfied that the Applicant is not the owner of the Trade Mark and that the Opponent has a prior claim of ownership based on its use of the Opponent’s Mark in Australia. Accordingly, the section 58 ground of opposition has been established.
Decision
Section 55 relevantly provides:
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.
The Opponent has established the s 58 ground of opposition. Accordingly, I refuse to register trade mark application number 2259509.
Costs
Both parties sought an award of costs. As the Opponent was successful in the opposition, I award costs against the Applicant under s 221 of the Act in accordance with the amounts detailed in Schedule 8 of the Regulations.
Timothy Brown
Hearing Officer
Delegate of the Registrar of Trade Marks
30 August 2024
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