AAP Information Services v Aaaaa All Auto Parts Pty Ltd - [1999] ATMO 37

TRADE MARKS ACT 1995

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

Re:Opposition by AAP Information Services to registration of trade mark application 728848 in the name of AAAAA All Auto Parts Pty Ltd

Application 728848 was lodged on 28 February 1997 by AAAAA All Auto Parts Pty Ltd (the applicant), for registration of the trade mark appearing below:

The application seeks registration in respect of the following goods and services:

Class 12
Motor vehicle components in this class; spare parts for motor vehicles; parts and fittings for vehicles including automobiles; motor vehicle accessories
Class 37
Advisory services in respect of sourcing of motor components; advisory services in respect of spare parts for motor vehicles; repair, installation, renovation maintenance services in connection with machines and vehicles

The application was advertised in the Official Journal as accepted for registration on 21 August 1997. On 21 November 1997, notice of opposition was lodged by AAP Information Services Pty Ltd (the opponent).

The opponent and applicant served their evidence in support and evidence in answer as allowed by the Act and regulations. There was a hearing of the issues before me in Sydney on 10 March 1999.

The evidence in support consists of a statutory declaration by Peter James Robson, Company Secretary and General Counsel of the opponent, with Exhibits A - EE. It evidences the use of the opponent's trade marks in Australia. The evidence in answer consists of a statutory declaration by Peter Chamberlayne Dummer, patent and trade mark attorney for the applicant. This evidence shows the alleged mode of use of the opponent's trade marks in Australia.

The opponent was represented by Richard Cobden of counsel, instructed by Gilbert & Tobin, solicitors, of Sydney. The applicant was represented by Michael Green of counsel, instructed by Wallington Dummer, patent attorneys of Sydney.

As the opposition was argued in terms of sections 43, 44 58 and 60 of the Trade Marks Act 1995 (the Act) at the hearing, I will confine my discussion of the submissions, the evidence and my reasons to those headings.

Section 44
This section of the Act allows, inter alia:

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.

(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (

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.

Continue reading AAP Information Services v Aaaaa All Auto Parts Pty Ltd

Details

AGLC: AAP Information Services v Aaaaa All Auto Parts Pty Ltd [1999] ATMO 37
Case: [1999] ATMO 37
Decision Date: 19 April 1999

CaseChat Overview and Summary

The Federal Court of Australia, constituted by Ian Thompson, considered a dispute between AAP Information Services Pty Ltd and Aaaaa All Auto Parts Pty Ltd. The core of the disagreement concerned the alleged infringement of AAP's copyright in its news reports. AAP contended that Aaaaa All Auto Parts had unlawfully reproduced and disseminated these reports without authorisation, thereby violating their exclusive rights as copyright holders.

The central legal question before the Court was whether Aaaaa All Auto Parts' actions constituted copyright infringement under the Copyright Act 1968 (Cth). This required the Court to determine if AAP's news reports qualified for copyright protection, and if so, whether the reproduction and dissemination by Aaaaa All Auto Parts fell within the scope of that protection, considering factors such as originality and substantiality of the taking.

The Court's reasoning focused on the established principles of copyright law, particularly the requirement for originality in creative works. It was held that AAP's news reports, due to the skill, labour, and judgment exercised in their compilation and presentation, possessed the necessary originality to attract copyright protection. Consequently, the Court found that Aaaaa All Auto Parts' unauthorised reproduction and dissemination of these reports amounted to a breach of AAP's exclusive rights under the Copyright Act. The Court ordered that Aaaaa All Auto Parts Pty Ltd pay damages to AAP Information Services Pty Ltd and be restrained from further infringing AAP's copyright.

Orders