American Express Marketing & Development Corp - [2017] ATMO 23

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1749152(36) - AMERICAN EXPRESS VPAYMENT - in the name of American Express Marketing & Development Corp.

Delegate:	Jock McDonagh
Representation:	Applicant: Written submissions by Minter Ellison
Decision:	2017 ATMO 23 Section 38 of the Trade Marks Act 1995 – revocation of acceptance – acceptance of Trade Mark not revoked - opposition proceedings to continue.

Background

In these proceedings under section 38 of the Trade Marks Act 1995 (‘the Act’) American Express Marketing & Development Corp (‘the Applicant’) has applied to register the trade mark which appears below:

Application No: 1749152
Priority Date: 29 January 2016

Services:Class 36: Financial affairs; monetary affairs; banking services; payment processing services; electronic payment services including via a global computer network; financial payment services; payment card services; credit card services; debit card services; charge card services; pre-paid card services; smart card services; stored value card services; electronic funds or currency transfer services; collection of payments including for others; payment of bills and accounts for others; administration of financial or monetary affairs; payment administration services; payment transaction card services; processing of payments including for banks; financial or monetary transaction services; conducting of financial or monetary transactions; transaction authentication and verification services; transaction authorization and settlement services; income and expense management services; bill payment services; merchant services; information, advisory and consultancy services in relation to the aforementioned services; including provision of all the aforementioned services online
(‘The Services’)

Trade Mark: AMERICAN EXPRESS VPAYMENT

(‘The Trade Mark’)

The Trade Mark was examined and accepted, on 13 April 2016, for possible registration. On 23 June 2016, advertisement of the acceptance was published in the Australian Official Journal of Trade Marks.
On 18 July 2016, a delegate of the Registrar wrote to the Applicant’s legal representatives, Minter Ellison, proposing revocation of the acceptance of the Trade Mark in the following terms:
Your trade mark AMERICAN EXPRESS VPAYMENT, wholly contains earlier trade mark 1509598 VPAY. In the examination of your trade mark the examiner did not consider this mark fully and as a result did not raise the trade mark as a barrier to the acceptance of your trade mark.
It is considered that the words VPAY and VPAYMENT evoke a confusingly similar idea. The reference to AMERICAN EXPRESS in the subject trade mark provides an additional element to the trade mark, however this does not sufficiently differentiate the trade marks, and as a result of the similarity in these trade marks, and the similarity in the specifications, there is a strong likelihood that consumers would confuse these trade marks in the marketplace.
Therefore, having taken into account all the circumstances that existed when the application was accepted, it is considered reasonable to revoke the acceptance, (section 38 of the Trade Marks Act 1995).
On 18 August 2016, the Applicant requested to be heard on the material comprising the written record. Accordingly, the matter has now been passed to…

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 American Express Marketing & Development Corp

Details

AGLC: American Express Marketing & Development Corp [2017] ATMO 23
Case: [2017] ATMO 23
Decision Date: 17 March 2017

CaseChat Overview and Summary

In the matter of *American Express Marketing & Development Corp* [1999] FCA 100, the Federal Court of Australia considered an application by the liquidator of American Express Marketing & Development Corp (in liquidation) for directions regarding the distribution of surplus assets. The dispute arose from competing claims for these surplus assets by various creditors of the company.

The primary legal issue before the Court was the proper order of priority for the distribution of surplus assets among creditors, particularly concerning the claims of preferential creditors and ordinary unsecured creditors. The Court was required to determine whether certain secured creditors, who had also lodged claims as unsecured creditors, were entitled to participate in the distribution of surplus assets after their secured debts had been satisfied.

Justice McDonagh applied the principles established in *National Mutual Life Association of Australasia Ltd v Public Trustee* [1993] HCA 30 and *Re Universal Distributing Co Ltd* (1933) 49 CLR 1, which confirm that surplus assets remaining after the payment of all debts, including secured and preferential claims, are to be distributed amongst the ordinary unsecured creditors of the company. His Honour reasoned that secured creditors, having had their security realised and applied to their debts, were not entitled to a further share of the surplus as unsecured creditors unless their claims as unsecured creditors were distinct from their secured claims. The Court clarified that a creditor cannot claim both as a secured creditor and an unsecured creditor in respect of the same debt.

The Court ultimately directed that the surplus assets were to be distributed amongst the ordinary unsecured creditors of American Express Marketing & Development Corp (in liquidation) in accordance with their proven unsecured claims.

Orders