A registration for has failed to prevent the registration of the trade mark for goods in class 3.
MBIP Nominees, the owner of the trade mark filed an opposition to the registration of the trade mark on the basis that:
- the trade mark is substantially identical with or deceptively similar to the trade mark (section 44);
- the owner of a substantially identical or deceptively similar trade mark to the trade mark used its trade mark in relation to similar goods/services before the trade mark was used (section 58A); and
- due to a reputation in the trade mark, the use of the trade mark would deceive or confuse (section 60).
At the Hearing, the Delegate only considered the ground of opposition based on whether or not the two trade marks were substantially identical or deceptively similar (section 44). This is because the Opponent did not file any Evidence in Support of the Opposition. Where an Opponent does not file any Evidence in Support, the issue arises as to whether the Opponent can discharge its onus of establishing a ground of opposition, save for a ground of opposition based on section 44 pleaded in the Statement of Grounds and Particulars. Even though the Opponent filed Evidence in Reply to the Evidence in Answer filed by the Applicant, the Delegate held that no weight could be given to any of the Opponent’s evidence in relation to the grounds of opposition based on prior use or reputation.
The Delegate found that the two marks in questions were not substantially identical or deceptively similar. Although there was no question that the goods under consideration were the same or goods of the same description, the marks could be distinguished when they were compared as wholes.
Despite the verbal elements of the marks consisting of a two syllable, five letter word beginning with ‘ME’ and ending with ‘a’, the spiral device in the trade mark could not be discounted for the purpose of visual comparison. If this was discounted, then this would mean that the verbal element would be the “essential element” of the mark which would change the character of the composite mark. Aurally, the elements MECCA and MEEKA are pronounced differently despite both having ‘ME’ as the first syllable. MECCA is pronounced “meck-ah” and MEEKA is pronounced “mee-kah”. Conceptually, both elements MEECA and MEEKA were also found to convey different things to Australian consumers.
Overall, the Delegate held that the marks were not deceptively similar and the opposition failed on this basis.
This decision is an important reminder to Opponents that they bear the onus of establishing a ground of opposition. When an Opponent elects not to file any evidence, or its evidence does not address or support the grounds of opposition, this may be fatal to the outcome.