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

1. 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

1. 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 allocated to me.  In line with usual practice, a notice was sent to the parties on 21 February 2024 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Applicant filed written submissions on 9 April 2024.  The Opponent did not file any submissions.

2. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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. 

   In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.

   The Parties

3. Neither party has provided evidence in the matter and hence I have no evidence about them other than (for the Applicant) what is on the Register.    

   Grounds of Opposition, Onus and Standard of Proof

4. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 58, 59 and 60.  To successfully oppose the application the Opponent needs to establish one of the nominated grounds.  

   9. The onus of proof in an opposition rests upon the Opponent.[2]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3]  The date at which the rights of the parties are to be determined is the relevant date, which is also the priority date for the purposes of s 60.[4]

   10. As the Opponent has filed no evidence and provided no submissions, I have no hesitation deciding that the Opponent has not discharged the onus on it with respect to the grounds of opposition under ss 42(b) 58 and 60 of the Act since these grounds are particularised by reference to the Opponent’s use of and reputation in the unregistered mark VEIDA and the Opponent has not provided any evidence to support these particulars.

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [3] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J), see also s 29(1) Trade Marks Act 1995 (Cth).

5. 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

6. 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.

7. 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 Smith

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   1 August 2024