Veida Pty Ltd v Vayda, Inc - [2024] ATMO 139

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Veida Pty Ltd to registration of trade mark application 2209886 (9, 35, 42, 44) – VAYDA – in the name of Vayda, Inc.

Delegate:

Nicholas Smith

Representation:

Opponent: K&L Gates

Applicant: Ashurst Australia

Decision:

2024 ATMO 139

Trade Marks Act 1995 (Cth) - section 52 opposition: ss 42(b), 58, 59 and 60 considered – none established – trade mark to proceed to registration

Background

This decision concerns an opposition brought by Veida Pty Ltd (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of Vayda, Inc. (‘Applicant’):

Application Number:

2209886

Filing Date[1]:

10 September 2021

Priority Date (Convention):

18 March 2021

Goods and Services:

Class 9: Computer software
Class 35: Business consulting services in the field of agriculture, regenerative agriculture, soil health, farming, gardening, environmental stewardship, drought, water scarcity, water security, human health; Promoting public awareness of the need for organic farming, sustainability, regenerative agriculture and responsible ingredient sourcing by means of public advocacy; Providing consumer information in the field of organic and regenerative agriculture; business consultancy services relating to supply chain management services
Class 42: Online provision of web-based software (non-downloadable)
Class 44: Agricultural advice relating to regenerative farming practices; information regarding plant seed, and microbe collections provided via an online computer database; information on conservation of environmental resources through agricultural processes provided via on online computer database; agronomic consulting services in the nature of creating and providing agronomic technology workflows for meeting sustainability business objectives in the field of agriculture; Farming services; Agricultural services, namely, development of regenerative agriculture and agroforestry farming methods and practices for others

(‘Applicant’s Goods and Services’)

Trade Mark:

VAYDA

(‘Trade Mark’)

[1] Also known in this decision as the ‘relevant date’.

2. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.
3. Following the advertisement of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose the registration on 30 May 2022 followed by a Statement of Grounds and Particulars (‘SGP’) on 29 June 2022. The SGP raised grounds of opposition under ss 42(b), 58, 59 and 60. Following a cooling off period, the Applicant filed a Notice of Intention to Defend on 10 February 2023.
Evidence

Neither party filed any evidence in this matter.
5. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing. On 6 October 2023 the Applicant requested a hearing by written submissions. The matter was set down for a hearing by submissions on 17 April 2024 and the matter was…

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: [2024] ATMO 139
Decision Date: 1 August 2024

CaseChat Overview and Summary

In the matter of Veida Pty Ltd v Vayda, Inc, the Opponent, Veida Pty Ltd, lodged an opposition to the registration of trade mark application number 2209886 by the Applicant, Vayda, Inc. The opposition was brought under various sections of the *Trade Marks Act 1995* (Cth), including sections 42(b), 58, 59, and 60.

The primary legal issues before the Hearing Officer were whether the grounds of opposition, particularly under section 59 concerning the applicant's intention to use the trade mark, had been established. The court was required to determine if the Opponent had discharged its onus in proving that the Applicant lacked the requisite intention to use the trade mark at the relevant date.

The Hearing Officer found that the Opponent had failed to establish a prima facie case for any of the nominated grounds of opposition. Specifically, regarding the section 59 ground, the onus remained with the Opponent to demonstrate that the Applicant lacked the requisite intention. In the absence of evidence from the Opponent to support this claim, the Hearing Officer concluded that the section 59 ground was not established, referencing established legal principles regarding the burden of proof in such matters.

Consequently, the Hearing Officer ordered that trade mark application number 2209886 may proceed to registration, subject to a one-month waiting period unless a notice of appeal is filed. The Applicant was awarded costs against the Opponent, following the general rule that costs follow the event.

Orders

Orders of the court

See [12]-[13]

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

With respect to the s 59 ground, the onus of establishing the ground of opposition pursuant to s 59 remains with the Opponent until it has established a prima facie case that on the relevant date the Applicant lacked the requisite intention. If the Opponent establishes a prima facie case the onus then shifts to the Applicant for rebuttal.[5] In the absence of evidence from the Opponent I find the s 59 ground is not established.[5] Health World Ltd v Shin-Sun Australia Pty Ltd [2008] 75 IPR 478, [160] (Jacobsen J) and Aston v Harlee Manufacturing Co (1960) 103 CLR 391, 401 (Fullagar J).Decision and Costs The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Trade mark application number 2209886 may proceed to registration 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. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.Nicholas SmithHearing OfficerDelegate of the Registrar of Trade Marks1 August 2024

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.

Application Number:	2209886
Filing Date[1]:	10 September 2021
Priority Date (Convention):	18 March 2021
Goods and Services:	Class 9: Computer software Class 35: Business consulting services in the field of agriculture, regenerative agriculture, soil health, farming, gardening, environmental stewardship, drought, water scarcity, water security, human health; Promoting public awareness of the need for organic farming, sustainability, regenerative agriculture and responsible ingredient sourcing by means of public advocacy; Providing consumer information in the field of organic and regenerative agriculture; business consultancy services relating to supply chain management services Class 42: Online provision of web-based software (non-downloadable) Class 44: Agricultural advice relating to regenerative farming practices; information regarding plant seed, and microbe collections provided via an online computer database; information on conservation of environmental resources through agricultural processes provided via on online computer database; agronomic consulting services in the nature of creating and providing agronomic technology workflows for meeting sustainability business objectives in the field of agriculture; Farming services; Agricultural services, namely, development of regenerative agriculture and agroforestry farming methods and practices for others (‘Applicant’s Goods and Services’)
Trade Mark:	VAYDA	(‘Trade Mark’)