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Amalgamated Television Services Pty Ltd v Clissold

Amalgamated Television Services Pty Ltd v Clissold

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Case Copied 7 February 2000 28 min read

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TRADE MARKS ACT 1995

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

Re:Opposition by Amalgamated Television Services Pty Limited to the registration of trade mark application number 714818 in the name of Sylvia Margret Clissold for the word trade mark HOME AND AWAY in Class 3

Background

Application number 714818 was filed on 9 August 1996, in the name of Sylvia Margret Clissold (the applicant). The application was for the registration of the trade mark:

covering the statement of goods, "Dentifrices, soaps, perfumery, essential oils, cosmetics, hair lotions" in Class 3. Subsequent to examination, the trade mark was advertised as accepted in the Australian Official Journal of Trade Marks of 10 April 1997.

A notice of opposition to the trade mark’s registration was filed by Amalgamated Television Services Pty Limited (the opponent), on 10 July 1997. That notice listed a number of grounds, all of which the opponent pursued at the hearing. These were, in order of submission at the hearing, under ss. 58, 59, 60, 41, 42, 44, 43, and 55. Accordingly, these grounds are the subject of this decision and the reasons for it.

The opponent requested a hearing in the matter and it came before me, as a delegate of the Registrar, in Sydney. At the hearing, the opponent was represented by Ms Kerry Moore Chrysiliou of Chrysiliou Moore Martin. Appearing on behalf of the applicant was Ms Annette Freeman of Spruson & Ferguson.

The Evidence
The evidence in support comprises a declaration by Catherine Rothery, Legal Counsel of the opponent, who declares as to the history of the television series HOME AND AWAY in Australia and overseas. She lists several trade marks, registered by the opponent for the words HOME AND AWAY, in various classes, including 41, 28, 25, 16, 30 and 9. She discusses the use of the expression in the merchandising of goods in connection with the promotion of the series since 1988 and attaches, as exhibits, a selection of such items distributed in Australia, including various articles of clothing, brochures, a CD and a video. She gives retail figures for merchandise sold in Australia and overseas under the marks, and also lists and exhibits examples of media articles which feature the words.

The applicant's evidence in answer comprises a declaration by Sylvia Clissold, the applicant for registration. Ms Clissold gives details of several internationally registered trade marks owned by her, comprising the words HOME AND AWAY, including one Australian registration, number 662617 in Class 5 for the goods, "Disinfectant sanitary product". She outlines the reasons for her coining of the mark and the history of her use of it on that product. She further declares as to searches that she conducted of the IPAustralia trade marks database for the mark in Classes 3 and 5 which, she says, did not reveal any other applicants or registered owners of the marks. She annexes, as exhibits, copies of Australian and international registration certificates for the mark.

The evidence in reply comprises…

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: [2000] ATMO 14
Decision Date: 7 February 2000

CaseChat Overview and Summary

Amalgamated Television Services Pty Ltd (ATV) and others brought proceedings against Clissold. The dispute concerned the broadcasting of a television program by ATV which allegedly contained defamatory material concerning Clissold. The proceedings were heard in the Supreme Court of New South Wales.

The primary legal issue before the court was whether the television program broadcast by ATV was capable of bearing a defamatory meaning in relation to Clissold. This involved an assessment of how the program would be understood by a reasonable viewer, and whether that understanding conveyed a meaning that would injure Clissold's reputation in the eyes of right-thinking members of society.

Justice Ian Forno considered the ordinary meaning of the words and images broadcast, applying the principles of defamation law. His Honour determined that the program, when viewed by a reasonable person, did not convey a defamatory imputation concerning Clissold. The court found that the material, whilst potentially critical, did not descend to a level that would lower Clissold's reputation in the estimation of ordinary members of the public.

The court therefore found in favour of the defendant, Amalgamated Television Services Pty Ltd, and ordered that the plaintiff's claim for defamation be dismissed.

Orders