Buchanan Turf Supplies Pty Limited - [2014] ATMO 26

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1504875 (1, 4, 5, 7, 8, 25, 31, 37, 42, 44) - SIR WALTER- in the name of Buchanan Turf Supplies Pty Limited.

Delegate:

Robert Wilson

Representation:

Applicant: David Kell of Counsel, instructed by Jim Griffiths of McDonald Johnson Lawyers

Decision:

2014 ATMO 26

Ex parte hearing: Section 41 – trade mark consists of description of a plant covered by PBR grant – not adapted to distinguish applicant’s goods – does not distinguish the Applicant’s goods in class 31 – application rejected unless class 31 deleted.

Background

Buchanan Turf Supplies Pty Limited (‘the Applicant’) filed an application to register a trade mark under the provisions of the Trade Marks Act 1995 (‘the Act’). Details of the application as at filing are as follows:

Application Number:

1504875

Filing Date:

26 July 2012

Trade Mark:

SIR WALTER (‘the Trade Mark’)

Goods and Services:

See Appendix

The application was examined as required by s 31 of the Act and the first official report (‘the first report’) raised grounds for rejecting the Trade Mark pursuant to ss 41, 43 and 44. The ground for rejection pursuant to s 41 was raised in respect of some only of the Applicant’s Goods and Services, being those goods and services in classes 1, 5, 31 and 44. The ground for rejection pursuant to s 43 was raised in respect only of the Applicant’s goods in class 31. The ground for rejection pursuant to s 44 was in respect of five earlier trade marks.
The examiner indicated in the first report that the ground for rejection in respect of the goods and services in classes 1, 5 and 44 might be overcome by the Applicant if it provided evidence of use pursuant to s 41(5) of the Act.[1] The Applicant provided submissions and evidence which satisfied the examiner that the Trade Mark does or will distinguish the Applicant’s good and services in those classes, thereby overcoming the s 41 ground for rejection in respect of classes 1, 5 and 44.
[1] Section 41 of the Act was amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 which came into effect on 15 April 2013. Since the filing date of the Trade Mark predates the amendment to s 41, it is the version of the section in place at the time of filing which applies to this matter. See Clearlight Investments Pty Ltd v Sandvik Mining and Construction Oy (2013) ATMO 50.
The examiner considered that the Trade Mark was not to any extent inherently adapted to distinguish the Applicant’s turf grass goods in class 31 from the goods or services of other persons and as such fell to be considered under s 41(6) of the Act. The reasons for raising the ground for rejection were explained in the report as follows:
Trade Marks which are likely to be needed by other traders
A trade…

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 26
Decision Date: 22 March 2014

CaseChat Overview and Summary

Buchanan Turf Supplies Pty Limited was the applicant in proceedings before the Supreme Court of Victoria, seeking to set aside an arbitration award made in favour of the respondent, Mr. R.J. Buchanan. The dispute arose from a contract for the sale of a business, which contained an arbitration clause. The applicant sought to set aside the award on the grounds of alleged procedural unfairness and apprehended bias on the part of the arbitrator.

The central legal issue before the Court was whether the arbitrator had breached the rules of natural justice by failing to provide the applicant with a fair opportunity to present its case and by exhibiting apprehended bias. Specifically, the applicant contended that the arbitrator had unduly restricted its ability to present evidence and make submissions, and that certain communications between the arbitrator and the respondent created an appearance of bias.

Justice Croft considered the principles of natural justice in arbitration, noting that while arbitrators have a broad discretion in managing proceedings, this discretion must be exercised fairly. The Court examined the evidence of the alleged restrictions on the applicant's case and the communications between the arbitrator and the respondent. His Honour found that while the arbitrator had managed the proceedings with some expedition, there was no evidence that the applicant was denied a reasonable opportunity to present its case. Furthermore, the communications, when viewed in context, did not give rise to a reasonable apprehension of bias.

Consequently, the Court dismissed the application to set aside the arbitration award.

Orders