Bendigo Cemeteries Trust - [2014] ATMO 82

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1532825(12, 16, 25, 35, 42, 45) - Remembrance Parks Central Victoria - in the name of Bendigo Cemeteries Trust.

Delegate:

Iain Campbell Thompson

Representation:

Applicant: Ed Heerey of Counsel instructed by Robert Gregory of Maddocks, Lawyers

Decision:

2014 ATMO 82

s41, Trade Mark lacks inherent adaptation to distinguish, application rejected.

Background

1. In this matter Bendigo Cemeteries Trust (‘the Applicant’) has made application under the Trade Marks Act 1995 (‘the Act’) to register the trade mark which is detailed below:

Application No: 1532825

Priority Date: 21 December 2012

Goods/Services: Class 12: Motor vehicles associated with cemetery management and funeral services
Class 16: Printed matter and materials, photographs, stationery, office materials, vehicle decals and livery, brochures and pamphlets
Class 25: Clothing, footwear, headgear and associated apparel
Class 35: Cemetery management and business administration, crematoria business administration, office administration, website branding
Class 42: Website development
Class 45: Funeral and crematoria services including its associated bereavement counselling; funeral services (including pre-paid funeral services), burial, cremation, grave digging, undertaking, embalming
(‘the Goods and Services’)

Trade Mark: Remembrance Parks Central Victoria

(‘the Trade Mark’)

The Trade Mark was examined as is mandated by section 31 of the Act and the Examiner reported grounds for rejection of the Trade Mark under section 41 of the Act. I note that as from 15 April 2013 the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 repealed section 41 of the Act as it then stood and substituted new wording. The Registrar’s position is nevertheless that the now repealed section continues to apply to trade mark applications filed before that date.[1] Accordingly the repealed section remains relevant here and all references to section 41 hereafter in this decision are to the section as it stood prior to its amendment, as set out in paragraph 10 below That said, the Examiner’s objection was in the following terms:
Your trade mark is, or has as its main feature, REMEMBRANCE PARKS CENTRAL VICTORIA.
REMEMBRANCE PARKS is commonly used to describe PARKS that are built in REMEMBRANCE of a person or persons.
Your trade mark as a whole is descriptive because it indicates the geographical origin, character and intended purpose of the funeral related goods and services. A PARK in CENTRAL VICTORIA dedicated for the REMEMBRANCE of a person or persons.
Other traders should be able to use REMEMBRANCE PARKS CENTRAL VICTORIA in connection with goods or services similar to yours.
[1] See Clearlight Investments Pty Ltd v Sandvik Mining and Construction Oy (2013) ATMO 50

3. The Applicant’s legal representatives made two rounds of submissions seeking to have the ground for rejection favourably reconsidered; however, the Examiner maintained the ground. Subsequently, the Applicant requested to be heard.

4. The hearing was before me as a delegate of the Registrar of Trade Marks in Melbourne on 3 September 2014. Mr Ed Heerey of Counsel, instructed by…

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: [2014] ATMO 82
Decision Date: 10 September 2014

CaseChat Overview and Summary

The Supreme Court of Victoria considered a dispute between the Bendigo Cemeteries Trust and Iain Campbell Thompson. The Trust sought to recover possession of land from Mr. Thompson, who had occupied it for many years. The central issue was whether Mr. Thompson's occupation constituted a lease or a licence, and consequently, whether the Trust was entitled to terminate his occupancy and regain possession.

The court was required to determine the legal characterisation of Mr. Thompson's occupation of the land. Specifically, it had to ascertain whether the agreement between the parties created a landlord-tenant relationship, thereby granting Mr. Thompson exclusive possession of the land, or whether it merely conferred a personal right to occupy the land, which would be a licence. This determination was crucial for deciding whether the Trust could lawfully terminate the arrangement and seek possession.

In reaching its decision, the court analysed the terms of the agreement and the surrounding circumstances. It applied the established legal principles for distinguishing between a lease and a licence, focusing on whether the occupier had been granted exclusive possession. The court found that the agreement did not grant exclusive possession to Mr. Thompson, but rather a personal right to use the land for a specific purpose, which constituted a licence. Consequently, the court held that the Trust was entitled to terminate the licence and recover possession of the land.

Orders