a2 Milk Co Ltd v LD&D Australia Pty Ltd - [2021] FCA 1515

FEDERAL COURT OF AUSTRALIA
The a2 Milk Company Limited v LD&D Australia Pty Ltd [2021] FCA 1515

File numbers: NSD 1012 of 2019
NSD 1282 of 2019

Judgment of: BROMWICH J

Date of judgment: 3 December 2021

Catchwords: TRADE MARKS – appeals under s 56 of the Trade Marks Act 1995 (Cth) from decisions of delegates of Registrar of Trade Marks to refuse applications to register in respect of words “a2 Milk” and “TRUE A2” which were each opposed by the respondent – where respondent has withdrawn opposition to registration – where parties sought by consent orders requiring that the trade mark applications the subjects of the appeals proceed to registration – where Registrar was unable to issue a letter indicating no opposition to her delegates’ decisions being set aside – held: appropriate to order that each trade mark application proceed to registration.

Legislation: Trade Marks Act 1995 (Cth) ss 33, 41, 56

Cases cited:
Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56; 345 ALR 205; 124 IPR 264

Aldi Foods Pty Ltd v Moroccanoil Israel Ltd [2018] FCAFC 93; 261 FCR 301

British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281

Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48; 254 CLR 337

Chevron USA Inc v National Resources Defense Council Inc, 467 US 837 (1984)

Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511

Corporation of the City of Enfield v Development Assessment Commission [2000] HCA 5; 199 CLR 135

Mars Australia Pty Ltd v Société des Produits Nestlé SA [2010] FCA 639; 86 IPR 581

Moroccanoil Israel Ltd v Aldi Foods Pty Ltd [2017] FCA 823

Registrar of Trade Marks v Muller (1980) 144 CLR 37

Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; 93 FCR 365

Société des Produits Nestlé SA v Aldi Stores (A Limited Partnership) [2010] FCA 218

Tohi v Minister for Immigration, Citizenship, Migrant Services and Multicultural Affairs [2021] FCAFC 125

Division: General Division

Registry: New South Wales

National Practice Area: Intellectual Property

Sub-area Trade Marks

Number of paragraphs: 35

Date of hearing: 27 July 2021

Counsel for the Applicant: R Cobden SC, L Thomas

Solicitor for the Applicant: Clayton Utz

Counsel for the Respondent: The respondent was excused from appearing

Solicitor for the Respondent: Baker McKenzie

ORDERS

NSD 1012 of 2019 NSD 1282 of 2019

BETWEEN:
THE A2 MILK COMPANY LIMITED

Applicant

AND:
LD&D AUSTRALIA PTY LTD ACN 083 019 390

First Respondent

ORDER MADE BY:

BROMWICH J

DATE OF ORDER:

3 DECEMBER 2021

THE COURT ORDERS THAT:
1.The appeals from the decisions of the delegates of the Registrar of Trade Marks given on 22 July 2019 in respect of trade mark application no 1708342 and on 3 June 2019 in respect of trade mark application no 1751238 be allowed.
2.The decisions be set aside.
3.The trade mark applications the subject of…

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: [2021] FCA 1515
Decision Date: 3 December 2021

CaseChat Overview and Summary

In the Federal Court, a2 Milk Co Ltd sought to appeal the decisions of delegates of the Registrar of Trade Marks, who had refused to register the trade marks “a2 Milk” and “TRUE A2”. LD&D Australia Pty Ltd, the respondent, had opposed the registration of these trade marks but subsequently withdrew their opposition. Both parties agreed that the trade mark applications should proceed to registration. The Registrar, however, was unable to issue a letter indicating no opposition to the setting aside of the delegates’ decisions.

The central legal issue before the court was whether it should allow the appeals against the decisions of the delegates, set aside those decisions, and direct that the trade mark applications proceed to registration. The court also needed to consider whether it should make any orders regarding costs.

The court found that the appeals should be allowed and the decisions of the delegates set aside. It was appropriate for the trade mark applications to proceed to registration, as both parties had consented to this outcome. The court observed that the Registrar's inability to issue the required letter did not impede the court’s ability to make the necessary orders. The court also decided not to make any orders as to costs, as the parties had not sought any specific orders in this regard.

The orders made by the court were that the appeals from the decisions of the delegates be allowed, the decisions be set aside, and the trade mark applications proceed to registration. No orders were made as to costs. The entry of these orders was governed by Rule 39.32 of the Federal Court Rules 2011.

Orders

Orders of the court

1. The appeals from the decisions of the delegates of the Registrar of Trade Marks given on 22 July 2019 in respect of trade mark application no 1708342 and on 3 June 2019 in respect of trade mark application no 1751238 be allowed.

2. The decisions be set aside.

3. The trade mark applications the subject of the appeals proceed to registration.

4. No orders be made as to costs.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.

File numbers:	NSD 1012 of 2019 NSD 1282 of 2019
Judgment of:	BROMWICH J
Date of judgment:	3 December 2021
Catchwords:	TRADE MARKS – appeals under s 56 of the Trade Marks Act 1995 (Cth) from decisions of delegates of Registrar of Trade Marks to refuse applications to register in respect of words “a2 Milk” and “TRUE A2” which were each opposed by the respondent – where respondent has withdrawn opposition to registration – where parties sought by consent orders requiring that the trade mark applications the subjects of the appeals proceed to registration – where Registrar was unable to issue a letter indicating no opposition to her delegates’ decisions being set aside – held: appropriate to order that each trade mark application proceed to registration.
Legislation:	Trade Marks Act 1995 (Cth) ss 33, 41, 56
Cases cited:	Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56; 345 ALR 205; 124 IPR 264 Aldi Foods Pty Ltd v Moroccanoil Israel Ltd [2018] FCAFC 93; 261 FCR 301 British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48; 254 CLR 337 Chevron USA Inc v National Resources Defense Council Inc, 467 US 837 (1984) Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 Corporation of the City of Enfield v Development Assessment Commission [2000] HCA 5; 199 CLR 135 Mars Australia Pty Ltd v Société des Produits Nestlé SA [2010] FCA 639; 86 IPR 581 Moroccanoil Israel Ltd v Aldi Foods Pty Ltd [2017] FCA 823 Registrar of Trade Marks v Muller (1980) 144 CLR 37 Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; 93 FCR 365 Société des Produits Nestlé SA v Aldi Stores (A Limited Partnership) [2010] FCA 218 Tohi v Minister for Immigration, Citizenship, Migrant Services and Multicultural Affairs [2021] FCAFC 125
Division:	General Division
Registry:	New South Wales
National Practice Area:	Intellectual Property
Sub-area	Trade Marks
Number of paragraphs:	35
Date of hearing:	27 July 2021
Counsel for the Applicant:	R Cobden SC, L Thomas
Solicitor for the Applicant:	Clayton Utz
Counsel for the Respondent:	The respondent was excused from appearing
Solicitor for the Respondent:	Baker McKenzie

NSD 1012 of 2019 NSD 1282 of 2019
BETWEEN:	THE A2 MILK COMPANY LIMITED Applicant
AND:	LD&D AUSTRALIA PTY LTD ACN 083 019 390 First Respondent
ORDER MADE BY:	BROMWICH J
DATE OF ORDER:	3 DECEMBER 2021