Benelli Q.J. Srl (‘the holder’) requested protection in Australia for the following international registrations designating Australia (‘IRDAs’): Application No: 1119891 (International Regn.
884498) Priority Date: 18 January 2006 Goods: Class: 12 Vehicles; apparatus for locomotion by land with the exclusion of bicycles, air or water; motor bicycle, motorcycle, motor scooter, parts and accessories of said products comprised in this class Trade Mark: TORNADO NAKED TRE 1130 …………. Application No: 1119892 (International Regn.
884503) Priority Date: 18 January 2006 Goods: Class: 12 Vehicles; apparatus for locomotion by land with the exclusion of bicycles, air or water; motor bicycle, motorcycle, motor scooter, parts and accessories of said products comprised in this class Trade Mark: TORNADO NAKED TRE SPORT Following examination, the IRDAs were accepted on 10 September 2007 and advertised as such in the Official Journal of Trade Marks on 27 September 2007. On 21 December 2007, Ford Motor Company (‘the opponent’) filed Notices of Opposition to the extension of protection to Australia.59: Applicant not intending to use trade mark The registration of a trade mark may be opposed on the ground that the applicant does not intend: (a) to use, or authorise the use of, the trade mark in Australia; or (b) to assign the trade mark to a body corporate for use by the body corporate in Australia; in relation to the goods and/or services specified in the application.
The opponent’s sole argument is that the holder’s website (not in evidence, but of which I am asked to inform myself) shows it to be a manufacturer of motorbikes and motor scooters and so the opponent reasons that the IRDAs were filed: …without a relevant intention to use the marks in relation to all of the goods specified in the applications. The opposed applications include a claim to “vehicles” and “apparatus for locomotion by land” which could be described as a claim which is speculative, defensive and intended to gain an advantage over competitors.
The holder enjoys a rebuttable presumption that it intends to use the trade marks across the full breadth of the specifications.[6] In Suyen Corporation v. Americana International Limited,[7] I summarized the cases which had given rise to an inference that a trade mark applicant may not intend to use the mark such that the onus might shift to it to prove otherwise. None of the cases considered there assist the opponent.
I have not looked at the holder’s website and even if it was appropriate for me to do so, I do not consider that it would assist me either. The holder’s website is not a resource which alone speaks for the company’s aspirations. It is within my common general knowledge that the holder is an Italian maker of motor bikes.
Whilst I might be surprised to see the holder expand its business to car production, it would surprise me no more than when Porsche decided to make a 4WD SUV or when Lamborghini decided to make supercars in addition to agricultural tractors. Whilst I appreciate that terms like NAKED and SPORT are apposite to certain styles of motor bike appearance and that a designation like 1130 may be more likely to refer to motorcycle engine capacity, it remains that the commercial intentions for the trade marks are as likely to be concealed from me as they are from the opponent.
The inclusion of those terms does not preclude the use of the trade marks in relation to other claimed goods, and therefore does not shift the presumption to the holder to establish its intention. I find section 59 is not established. Decision No ground of opposition has been established. I therefore extend protection to Australia in respect of all the goods listed in the IRDAs.
The International Bureau will be notified of this decision as soon as practicable after the appeal period has ended, in accordance with Regulation 17A.34(2).
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Benelli Q. J. Srl. v Ford Motor Company [2011]
ATMO 9 (27 January 2011)
Last Updated: 7 February 2011
Background
Benelli Q.J. Srl (‘the holder’) requested protection in Australia for the following international registrations designating Australia (‘IRDAs’):
Application No: 1119891 (International Regn.
884498)
Goods: Class: 12 Vehicles; apparatus for locomotion by land with the exclusion of bicycles, air or water; motor bicycle. motorcycle, motor scooter. parts and accessories of said products comprised in this class
………….
Application No: 1119892 (International Regn.
884503)
Priority Date: 18 January 2006
Goods: Class: 12 Vehicles; apparatus for locomotion by land with the exclusion of bicycles, air or water; motor bicycle, motorcycle, motor scooter, parts and accessories of said products comprised in this class
Trade Mark: TORNADO NAKED TRE SPORT
Following examination, the IRDAs were accepted on 10 September 2007 and advertised as such in the Official Journal of Trade Marks on 27 September 2007.
On 21 December 2007, Ford Motor Company (‘the opponent’) filed Notices of Opposition to the extension of protection to Australia.
The matter was set down for hearing but before it went ahead, the opponent asked instead for a decision on the written record.
In this case the written record comprises:
Garen Holopikian dated 18 June 2009;
David Katic dated 18 February 2010;
Andrew Maclean dated 22 February 2010.
The holder did not file evidence or written submissions.
Notices of Opposition
Opposition to protection of an IRDA is governed by paragraph 17A.29 of the Regulations to the Trade Marks Act 1995 (‘the Act’). Regulation 17A.31 sets out the grounds for opposing an IRDA. They are sections 39 to 44 of the Act (by virtue of 17A.31(1) and 17A.28(1)), and sections 58 to 61 of the Act (by virtue of 17A.31(3)).
Regulations 17A.28(2) and 17A.31(3) establish that where the relevant section refers to an ‘application’, an IRDA is to be understood; and where an ‘applicant’ is referred to, the holder of the IRDA is to be understood.
The Notices of Opposition are in essentially identical terms and cite most grounds of opposition available to the opponent under the Act; however, in submissions the opponent limited its grounds of opposition to those under sections 42(b) , 44 , 59. and 60 .
Discussion
In opposition proceedings before the Registrar. the opponent bears the onus of establishing at least one ground of opposition stated in the Notice of Opposition on the balance of probabilities. [1]
For the sake of completeness, I find that the grounds of opposition listed in the Notices but not pressed have not been established.
Identical etc. trade marks
44.(1) Subject to subsections (3) and (4), an application for the registration of a trade mark ( applicant’s trade mark ) in respect of goods ( applicant’s goods ) must be rejected if:
(a) the applicant’s trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
Thus, in order to establish this ground, the opponent must establish:
the existence of one or more trade marks registered or pending in the name of a person other than the applicant;
that/those trade marks having earlier priority date(s) than that of the opposed trade mark;
that/those trade marks must be registered or pending in respect of goods which are similar, or services which are closely related, to those in respect of which the opposed application is made; and
the opposed trade mark must be substantially identical or deceptively similar to the trade mark(s) on which the opponent relies.
For the purposes of section 44. the registrations on which the opponent relies are:”>
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