Whiston Management Pty Ltd v Mathew Willian Stanton & Lynette Fay Jenkins

[2022] ATMO 186

TRADE MARKS ACT 1995

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

Re:Opposition by Whiston Management Pty Ltd to registration of trade mark application number 2072506 – Boss Brain (Class 41) – in the names of Mathew William Stanton & Lynette Fay Jenkins

Delegate:

Debrett Lyons

Representation:

Opponent: no representation

Applicant:  Foundry Intellectual Property Pty Ltd

Decision:

2022 ATMO 186

Trade Marks Act 1995 (Cth) – opposition under section 52 – ground of opposition under s 58 considered and found not established – application to proceed to registration.

Background

1. This is a decision on the opposition by Whiston Management Pty Ltd (‘Opponent’) to the registration of trade mark application number 2072506, filed under the Act[1] by Mathew William Stanton & Lynette Fay Jenkins (‘Applicants’) on 28 February 2020 for Boss Brain (‘Trade Mark’) in respect of the following class 41 services (‘Services’):

   Provision and facilitation of education and training including without limitation, conducting workshops, psychological treatment programs, programs including psychological biofeedback devices, classes, information sessions, exhibitions, seminars, teachings, consultancy and guidance with all of the foregoing relating to clinical and general psychology and all other psychiatric or psychological ailments

   [1]Each reference to a section or regulation in these reasons is a reference to the Trade Marks Act 1995 (Cth) or Trade Marks Regulations 1995 (Cth).

2. The application was examined, accepted for possible registration, and advertised for opposition. The Opponent filed a notice of its intention to oppose the application and a statement of grounds and particular (‘SGP’).  The Applicants filed a notice of their intention to defend the application from opposition.

3. The SGP nominates a ground of opposition under s 58 which requires that the Opponent establish that the Applicants are not the proprietors of the Trade Mark.  To establish this ground, the Opponent must show use in Australia by some person other than the Applicants of a trade mark that is substantially identical to the Trade Mark[2], with such use being in relation to goods or services that are identical or the ‘same kind of thing’ as the Services.[3]  The use of the trade mark relied on by the Opponent must have occurred before 28 February 2020, or before the date of first use of the Trade Mark in Australia by the Applicants, whichever is earlier.

   [2] Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495, 513 (Gummow J).

   [3] Re Hicks’s Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).

   Discussion

4. The Opponent carries the burden of establishing the s58 ground on the balance of probabilities.[4]  The rights of the parties are assessed as at the filing date, 28 February 2020.[5]

   [4] Pfizer Products Inc v Karam [2006] FCA 1663, [22] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

5. The SGP states:

   We had first use before the application priority date of 28 February 2020.

   -Used Boss Lady Brain since March 2018 for the purpose of business coaching, workshops, retreats, marketing and training

   -Used Boss Man Brain since July 2019 for the purpose of business coaching, workshops, retreats, marketing and training

   -Used Boss Brain since August 2019 for the purpose of business coaching, workshops, retreats, marketing, training, bookkeeping, web design and administration

   -Registered Boss Brain business name 30/01/20

6. The parties were given the opportunity to file evidence in accordance with the timetable set out in reg 5.14.  The Opponent did not file evidence in support of its opposition. The Applicants wrote to this Office, as follows:

   Dear Registrar

   We refer to Evidence in Support Overdue Notice dated 20 July 2022.

   The Opponent has not filed any evidence, even though it was provided an opportunity to do so over three months. The Applicant’s reasonable conclusion is that there is no evidence for the Opponent’s assertions provided in the Statement of Grounds and Particulars.

   The Applicant does not intend to provide any evidence in answer. The Applicant further respectfully submits that:

   ·there is no opposition case to answer;

   ·this opposition should be dismissed with costs; and

   ·this application should proceed directly to registration.

7. The Applicants then later requested a decision without a hearing and paid the associated fee.  The Opponent made no response to Trade Marks Office letters and did not pay any hearing fee.  There were no submissions from either side and, apart from the SGP, the only material of note is a declaration made by one of the Applicants in support of more time to comply with the Regulations.  Suitably redacted, it states:

   I, Matthew William STANTON am co-owner of Australian Trade Mark application no 2072506 BOSS BRAIN in support of the Applicant’s extension of time request of one month to file a Notice of Intention to Defend the Opposition. 

   There then follows a reference without apparent antecedent to an organisation ‘Life Matters’ and to its work, after which the declarant continues:

   Our Boss Brain program is a response to meeting the massive Australia-wide demand for child and parent mental health services. It is a program that among other things provides emotional resilience and connection for parents and their kids and aligns closely with the new National child mental health strategy. mental-health-and-wellbeing-strategy

   Boss Brain is a product offering for people who may be waiting on extensive wait lists to see a psychologist. It is one of the most important branches of our service.

   I never therefore intended to allow this trade mark application to lapse, and at all times wanted to defend the Opposition to this application.

8. As stated, no evidence in support followed.  Taking account of the aforegoing statements and the SGP, the Opponent’s submission rises no higher than an unsupported claim to use of BOSS BRAIN since August 2019 for services which may be of the same kind as those applied for.  Since there is no proof of that claim the s 58 ground fails because the Opponent has not met the burden of establishing its case.

   Decision and costs

9. Section 55 provides that the Registrar must decide to either refuse to register the Trade Mark, or to register the Trade Mark, having regard to the extent (if any) to which any ground on which the application was opposed has been established.

10. I find that the Opponent has not, to any extent, established a ground of opposition and so order that the Trade Mark be registered.

11. If the Registrar is served with a notice of appeal in respect of that decision, I direct that registration shall not occur until either the relevant appeal is withdrawn or discontinued.  Otherwise, the disposition of the relevant application should be in accordance with the Court’s order or direction.

12. The Applicants requested an award of costs and I make that order in their favour.

    Debrett Lyons

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    20 October 2022