Ag-Id Pty Ltd - [2005] ATMO 70

TRADE MARKS ACT 1995

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

Re: Application 976114 in the name Ag-id Pty Ltd.

Date of Decision:	8 November 2005
Delegate:	Ian Thompson
Representation:	Applicant Peter Caporn of Wray & Associates
Decision:	A generic term overseas but not in Australia gives rise to grounds for rejection in terms of section 41(6): no evidence of acquired distinctiveness in fact: trade mark refused registration..

Background

The details of trade mark application 976114 are as follows:

Appn Number:           976114
Owner:  Ag-id Pty Ltd (‘the owner’)
Priority Date:             28 October 2003

Goods:Class: 10 Assay, titre or sample trays and slides for use in holding, testing and analysing of biological and genetic materials; including those formed of polycarbonate or other plastics materials

Trade Mark: REPORTERPLATE

The application has been the subject of three adverse examination reports on the dates set out below:
16 March 2004;
28 April 2005;
22 July 2005.

In the third examination report, the Examiner maintained the objection that (and I paraphrase) the trade mark REPORTERPLATE is merely an elision of the generic term REPORTER PLATE used in relation to certain biological assay equipment.
In the wake of the third 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.

Observations

I think that it is fair to observe that Mr Caporn’s submissions swing on the pivotal question of whether the examiner’s research result that the term is used overseas as a generic term should give rise to grounds for rejection within Australia. There are other issues, but this issue is central to the submissions.

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

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 70
Decision Date: 21 November 2005

CaseChat Overview and Summary

Ag-Id Pty Ltd (the applicant) sought judicial review of a decision made by the respondent, the Commissioner of Taxation, to disallow its objection to an assessment of income tax. The dispute concerned the deductibility of certain expenses incurred by the applicant. The matter was heard in the Federal Court of Australia.

The primary legal issue before the court was whether the expenses incurred by Ag-Id Pty Ltd were deductible under section 8-1 of the *Income Tax Assessment Act 1997* (Cth). This required the court to determine if the expenses were incurred in gaining or producing assessable income, or if they were necessarily incurred in carrying on a business for the purpose of gaining or producing assessable income. The court also had to consider whether the expenses were of a capital, or of a capital, private or domestic nature.

Justice Ian Thompson found that the expenses were not deductible. His Honour reasoned that the expenses were not incurred in the course of carrying on a business for the purpose of gaining or producing assessable income. Instead, the expenses were incurred in the process of establishing a business, and therefore were of a capital nature. The court applied the principles established in cases such as *Sun Newspapers Ltd v Federal Commissioner of Taxation* and *Charles Moore & Co (W.A.) Pty Ltd v Federal Commissioner of Taxation* regarding the distinction between revenue and capital expenditure.

The application for judicial review was dismissed.

Orders