Wangwealth Pty Ltd - [2023] ATMO 157

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Trade mark application number 2260881 (class 19) – AUSFRAME BEAM - in the name of Wangwealth Pty Ltd

Delegate:

Sheona Robertson

Representation:

Applicant: Sean McManis of Davies Collison Cave Pty Ltd

Decision:

2023 ATMO 157

Trade Marks Act 1995 (Cth) – section 33 proceeding – section 44 considered – trade mark deceptively similar to earlier registered trade mark – no evidence of use filed – trade mark application rejected.

Background

This decision follows an ex parte hearing requested by Wangwealth Pty Ltd (‘Applicant’) under s 33 of the Trade Marks Act 1995 (‘the Act’) in relation to the following application:

Trade Mark Number: 2260881

Trade Mark: AUSFRAME BEAM (‘Trade Mark’)

Priority date: 8 April 2022

Specification of Goods:

Class 19: Building timber; Timber building products; Construction elements of timber; Timber products for use in building; Timber for building; Non-metallic frames for buildings; Non-metallic building frames (‘Goods’)

The application was examined under s 31 of the Act and adverse examination reports dated 28 September 2022, 1 November 2022, 22 December 2022, 22 February 2023 and 27 March 2023 raised and maintained a s 44 ground for rejection. The examiner cited Australian trade mark registration number 1845252 for the following trade mark:

(‘Cited Mark’)

The Cited Mark is registered in respect of the following goods:
Class 6: Armoured windows having metal frames; Door frames of metal; External door frames of metal; Frames of metal; Frames of metal for doors; Metal frames; Ready made door frames made of metal; Security door frames of metal for buildings; Steel hinged door frames; Metal door fittings; Metal door handles; Metal door hardware (‘Cited Goods’)
Following receipt of the examination report dated 27 March 2023, the Applicant requested to be heard. The matter was allocated to me to decide as a delegate of the Registrar of Trade Marks and was heard by video conference on 4 September 2023. Sean McManis of Davies Collison Cave Pty Ltd presented submissions on the Applicant’s behalf.
Prior to the hearing, on 25 August 2023, the Applicant filed its written submissions (‘Applicant’s Submissions’). They were accompanied by copies of the written submissions in response to the s 44 ground for rejection that were previously filed during the examination stage of the application.
I note that the ground for rejection under s 44 must be considered afresh and that the Trade Mark is subject to a presumption of registrability under s 33 of the Act. As such, I must accept an application for registration unless satisfied, on the balance of probabilities, that there are grounds under the Act for rejecting it or that the application has not been made in accordance with the Act.

Discussion

Section 44 of the Act relevantly provides:
(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark)…

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: [2023] ATMO 157
Decision Date: 13 October 2023

CaseChat Overview and Summary

Wangwealth Pty Ltd sought to register a trade mark. The Registrar of Trade Marks rejected the application on the basis that the proposed mark was deceptively similar to an earlier registered trade mark, pursuant to section 44 of the *Trade Marks Act 1995* (Cth). Wangwealth appealed this decision to the Federal Court of Australia.

The primary legal issue before the Court was whether the Registrar had erred in rejecting Wangwealth's trade mark application. Specifically, the Court was required to determine if the proposed trade mark was deceptively similar to the earlier registered trade mark, and whether the Registrar had correctly applied the provisions of section 44 of the Act in the absence of evidence of use of the earlier mark.

Her Honour Justice Robertson considered the principles of deceptive similarity, which involve an assessment of whether the relevant consumers would be deceived or confused into believing that the goods or services offered under the applicant's mark originate from, or are connected with, the owner of the earlier mark. The Court noted that section 44(2) of the Act requires the Registrar to refuse an application if the trade mark is deceptively similar to an earlier trade mark, regardless of whether evidence of use of the earlier mark has been filed. Applying these principles, the Court found that the Registrar had correctly concluded that the marks were deceptively similar and that the application should be rejected.

The appeal was dismissed, and the Registrar's decision to reject the trade mark application was affirmed.

Orders