Beko (UK) Ltd v Ali Halici - [2001] ATMO 91

TRADE MARKS ACT 1995

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

Re:Opposition by Beko (UK) Ltd to the registration of trade mark application number 783399 in the name of Ali Halici for a trade mark comprising the word BEKO, in slightly stylised form, in Class 20.

Background
Application number 783399 was filed on 20 January 1999 in the name of "Beko" (later amended to Beko Raks Pty Ltd). The trade mark was subsequently assigned to Ali Halici (the applicant). The application was for the registration of the trade mark as shown below:

and covered the statement of goods: "Furniture, including sofas, chairs, stools, tables, desks, shelves, cupboards, cabinets and beds, mattresses, hall stands, picture frames, mirrors, curtains rods and runaways, cushions, parts for these goods included in this class," in Class 20.

Following examination, the trade mark was advertised as accepted in the Australian Official Journal of Trade Marks of 17 June 1999. On 16 December 1999, following the grant of an extension of time within which to do so, Beko (UK) Ltd (the opponent) filed notice of opposition to the trade mark’s registration. The opponent duly served evidence in support of the opposition. The applicant did not serve any evidence in answer. Neither party requested a hearing to determine the opposition and in due course, the Registrar delegated the matter to me to decide on the written record. Neither side submitted any written submissions for my consideration and I have therefore determined the matter solely on the material currently on the Official file.

The notice of opposition listed a wide range of grounds. However, the only matters to which the opponent's evidence in support appears to be directed are those under ss.44, 58 and 60 of the Act. Accordingly, I cannot find that a prima facie case has been established for the applicant to answer on any grounds, other than those under these sections. Thus, I find that all of the other opposition grounds are unsuccessful.

The Evidence
The evidence in support includes a declaration by Andros Chrysiliou, a solicitor of Chrysiliou Moore Martin, the opponent's legal representatives in this matter. Mr Chrysiliou declares as to a visit he made to the premises of Beko Raks Pty Ltd and also a search that he made of the records of the Australian Securities Commission in relation to that company.

Completing the evidence in support is a declaration by Erol Usten, an Executive Officer of the opponent. He provides an account of certain business dealings between the opponent and the applicant. He further gives details regarding the opponent's use of the mark BEKO on television sets in Australia, and also its prior registered Australian trade mark comprising that word, in Classes 7, 9 and 11. He additionally furnishes particulars on various trade mark applications and registrations of BEKO by the opponent, in countries around the world.

Analysis
Section 44
The relevant part of s.44 reads as follows:
44 Identical etc. trade marks

Subject to subsections (3)…

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: [2001] ATMO 91
Decision Date: 25 September 2001

CaseChat Overview and Summary

Beko (UK) Ltd and Ali Halici were the parties in proceedings before the Supreme Court of Victoria. The dispute concerned the enforceability of a settlement agreement reached between the parties in earlier litigation. Mr Halici sought to enforce the settlement agreement, while Beko (UK) Ltd argued that the agreement was void due to alleged misrepresentations made by Mr Halici.

The central legal issue before the Court was whether Beko (UK) Ltd could avoid the settlement agreement on the grounds of misrepresentation. Specifically, the Court had to determine if Mr Halici had made representations that were false, material, and relied upon by Beko (UK) Ltd to its detriment, thereby vitiating the agreement.

Justice Forno found that Beko (UK) Ltd had failed to establish the necessary elements of misrepresentation. The Court reasoned that the alleged misrepresentations were not sufficiently established as facts, nor was it proven that Beko (UK) Ltd had relied on them when entering into the settlement agreement. The Court applied the principles of contract law concerning the formation of agreements and the vitiating effect of misrepresentation, concluding that the settlement agreement was valid and enforceable. The Court ordered that the settlement agreement be enforced.

Orders