Case Summary: Varinder Toor v Vikas Sharma [2024] ATMO 158 (VICKY DRIVING SCHOOL)
This decision provides an insight into how an Opponent is able to establish lack of ownership of a trade mark (section 58 grounds of opposition) by an Applicant, in circumstances where the Opponent was the first user of that trade mark.
The Opponent’s evidence established that:
He had operated his driving school in and around the North-Western suburbs of Melbourne since 2012, using the trading name VICKY DRIVING SCHOOL.
He had begun promoting his services under this Trade Mark since 2015, via his Website www.vickydrivingschool.com.au and Facebook Page.
He adopted the name VICKY DRIVING SCHOOL in connection with his driving school in early 2018 and registered Vicky Driving School as a business name on 24 March 2018. This business was operating in the same locality as the Opponents business.
At the same time, the Applicant was also operating under the alternative trading name Vikas Driving School.
He also registered the website www.vickydrivingschool.net.au on 12 February 2019 and used that website to promote his business.
S58 of the Trade Marks Act 1995 (Applicant not the owner of the Trade Mark).
The Trade Marks used by both the Opponent and Applicant (VICKY DRIVING SCHOOL) were found to be identical. For the purposes of establishing this ground, the marks must be at least substantially identical.
The Opponent’s Trade Mark was found to have been used in relation to services of the same kind as the Applicant’s claimed services (driving school lessons and driving education services).
Screenshots from the Opponent’s Website and Facebook pages dated back to 2016 clearly established use of the Trade Mark for the promotion of the Opponent’s services as at that time.
Some use of the Opponent’s Mark was in proximity to other trade marks, including the following logo: , although this use was found to no detract from the Opponents claim of ownership of the Trade Mark.
The fact that the Opponent’s business name was registered as VICKY DRIVING SCHOOL MELBOURNE as opposed to VICKY DRIVING SCHOOL did not impact its claim to ownership of the trade mark VICKY DRIVING SCHOOL. Registration of a business name does not necessarily demonstrate that the trade mark is used in that form.
Ultimatley, the Opponent was successful in demonstrating prior use of the its Trade Mark predating any evidence of use by the Applicant, and the Applicant was found not to be the true owner of the Trade Mark.
Costs were awarded in favour of the Opponent.
