Watta Watta Pty Ltd v Gavin O'Mahoney & Associates

[1998] ATMO 63

TRADE MARKS ACT 1995

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

Re:Opposition by Gavin O’Mahoney & Associates to the registration of trade mark application number 742588(25), INTENSITY, in the name of Watt Watta Pty Ltd.

Trade mark application number 742588 was filed on 29 August 1997 by Watt Watta Pty Ltd of Lewingtons Road, Bundalong, Victoria.  Watt Watta Pty Ltd wished to register the trade mark intensity  for goods specified as:

Wet suits; wet suit booties; tops, pants, shorts, and headgear of wet suit material; T-shirts; caps.

In the course of examination these goods were restricted down to wet suits.  The Registrar of Trade Marks then, on 5 March 1998, advertised this mark for acceptance for registration. 

A three month opposition period followed and in this time, on 9 April 1998, opposition was filed in the name of Gavin O’Mahoney & Associates. There were various problems with this notice of opposition - the trade mark number and the name of the owner were wrongly stated; the grounds were unclear; and the notification of service, which forms part of the opposition form, was inaccurate. Nevertheless, the intention of the opponent was reasonably clear, and the opposition was allowed to proceed, albeit in the face of considerable protest from the applicant. Watt Watta Pty Ltd's attorney, Mr John Hawker of Callinan Lawrie, Patent & Trade Mark Attorneys of Melbourne applied for summary dismissal on the basis of the informalities in the notice and on the ground that Gavin O’Mahoney & Associates was not recorded in the Australian Security Commission records. Gavin O’Mahoney & Associates, he said, was therefore not a legal person and had no entitlement to prosecute an opposition under the terms of section 52 of the Trade Marks Act1995. 

I was not, however, prepared to strike out the opposition. First, the informalities are matters which I considered could largely have been dealt with under the provisions of section 66. Second, section 52 provides that a person may oppose the registration of a trade mark, and a person, as defined in section 6, includes a body of persons whether incorporated or not.   The fact that Gavin O’Mahoney & Associates could not be located in company or business names records was, therefore, no reason to hold that this entity had no right to oppose.

No evidence was filed by either side, and Watt Watta Pty Ltd applied to have the opposition heard. The Registrar appointed a Canberra hearing for 2 December 1998, and this hearing was conducted before me. Gavin O’Mahoney & Associates was not represented at the hearing and no submissions were put on its behalf. Watt Watta Pty Ltd was represented by Mr John Hawker. 

The grounds of the opposition are stated as follows:

Provisions of sub-section 44(3) intensity trade mark No 742588 will deceive and cause confusion with trade mark No 565476 within the same industry in respect of particular goods and must be rejected [sic]. Provisions of sub-section 44(4) evidence of fabricated use as an angle of acceptance and must be rejected [sic]. This evidence supplied is attached separately opposing Federal Court action [sic].

I take it that the grounds here are, in effect, twofold.  First, that trade mark 565476 constitutes a bar to registration.   Second, that evidence on which the subject trade mark 724588 proceeded to acceptance, is fabricated.  Contrary to the statement of grounds, there was no separate attachment of any evidence.

Mr Hawker drew my attention to the status of trade mark 565476.  This mark has been removed from the Register.  It was advertised removed in the Australian Official Journal of Trade Marks of 20 August 1998. I note that the removal action is now before the Federal Court; however, the trade mark has no status on the Register, and does not constitute an objection in terms of section 44 of the Trade Marks Act1995. In any case, however, 565476 was the subject of an objection taken in the course of examination of 742588 and, on evidence, the examiner of trade marks was satisfied that the provisions of sub-section 44(4) applied in favour of 742588. The opponent alleges that this evidence is fraudulent but the claim is completely unsupported and in the circumstances, I can only hold that the allegation is baseless.

Neither of the grounds, I find, has any merit, and I dismiss the opposition and award costs, as specified under Schedule 8 of the Trade Marks Regulations 1995, to Watt Watta Pty Ltd .

Helen R. Hardie
7 December 1998