21St Century Cycle Pty Ltd - [2005] ATMO 63

TRADE MARKS ACT 1995

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

Re:Application 1023069(9)(25),(28) STREET SURFER in the name of 21^st Century Cycle Pty Ltd.

Date of Decision:	8 November 2005
Delegate:	Ian Thompson
Representation:	Applicant Peter Caporn of Wray & Associates
Decision:	Usage of term STREET SURFER on Internet in a manner that suggests that it is obsolete, ‘poetic’ or archaic terminology – doubts exercised towards applicant – trade mark accepted for possible registration

Background

The details of trade mark application 976114 are as follows:

Appn Number: 1023069
Owner: 21^st Century Cycle Pty Ltd (‘the applicant’)
Priority Date: 19 December 2003

Goods:Class: 9   Helmets
Class: 25   Clothing, footwear and headgear; including jerseys, shirts, shoes, socks, gloves, shorts, pants and leggings for cycling, skating or skiing
Class: 28   Protective padding, elbow guards, knee guards, shin guards, skateboards, ice skates, roller skates, in-line skates, skis, waterskis, protective and carry bags for the aforementioned goods

Trade Mark: STREET SURFER

The application has been the subject of four adverse examination reports on the dates set out below:
1 February 2004
30 March 2005
10 May 2005
17 June 2005
In the fourth report, the examiner maintained that grounds for rejection exist because the trade mark STREET SURFER is (and I paraphrase) essentially equivalent to the term SKATE BOARD or SKATE BOARDER and has provided Internet printouts which are said to establish this.
In the wake of the fourth examination report, the owner exercised its right to be heard pursuant to sub-section 33(4) of the Trade Marks Act 1995 (Cth) (“the Act”). The hearing was before me, as a delegate of the Registrar of Trade Marks, in Perth on 18 August 2005. The owner was represented by Peter Caporn of Wray & Associates.
There is no evidence lodged in relation to the application.

Submissions

Mr Caporn submitted that to be prima facie registrable, a trade mark must be capable of distinguishing the goods in respect of which registration is sought, in terms of section 41 of the Trade Marks Act 1995. Section 41 provides, in part:
41 (2) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the Applicant's goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.
In Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498 Branson J discussed the application of section 41. Her Honour observed at page 504 that, in deciding whether a trade mark is capable of distinguishing under section 41, the Registrar has three options. The Registrar may conclude:
(a)that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or

(b)that the trade mark is to some extent inherently adapted to distinguish the…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2005] ATMO 63
Decision Date: 7 November 2005

CaseChat Overview and Summary

The proceeding concerned an application by 21st Century Cycle Pty Ltd (the applicant) against the Commissioner of State Revenue (the respondent) for a review of the respondent's assessment of stamp duty. The dispute arose from the respondent's determination that a transfer of property from a company, 1000 Hills Pty Ltd, to the applicant constituted a dutiable transaction, specifically a "dutiable gift" under the *Duties Act 2000* (Vic). The applicant contended that the transfer was not a dutiable gift, arguing that it was made for consideration, albeit nominal, and therefore fell outside the definition of a dutiable gift.

The primary legal issue before the court was whether the transfer of property from 1000 Hills Pty Ltd to 21st Century Cycle Pty Ltd was a dutiable gift within the meaning of the *Duties Act 2000* (Vic). This required the court to interpret the definition of a "dutiable gift" and consider whether the presence of nominal consideration negated the characterisation of the transaction as a gift. The court also had to determine if the transaction was otherwise dutiable under the Act.

Justice Ian Thompson found that the transfer was indeed a dutiable gift. His Honour reasoned that the consideration paid by the applicant was nominal and did not reflect the true value of the property transferred. The court applied the principle that where a transaction involves the transfer of property for a consideration significantly less than its market value, and the intention is to benefit the recipient, it can be characterised as a gift for stamp duty purposes. The court noted that the Act defines a dutiable gift broadly and that the substance of the transaction, rather than its form, was determinative.

The application was dismissed, and the Commissioner's assessment of stamp duty was upheld.

Orders