Caffe Ducale Pty Ltd v White Prime Group Pty Ltd - [2018] ATMO 171

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
ReOpposition by Horizons (Asia) Pty Ltd to registration of trade mark application 1758589 (11, 32, 35) – ALKALINE WATER ONLINE (logo) - in the name of White Prime Group Pty Ltd

Delegate: Robert Wilson
Representation: Opponent: written submissions by Ng Lee
Applicant: written submissions by Cooper Mills Lawyers

Decision: 2018 ATMO 171
Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 41, 42, 43, 44, 58, 58A, 60, 61 and 62A considered – none established – onus on Opponent in s 61to establish prima facie that sign is a geographical indication – trade mark may proceed to registration

Background
1. This decision concerns an opposition brought by Horizons (Asia) Pty Ltd (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (‘the Act’) to registration of the trade mark the subject of the application detailed below in the name of White Prime Group Pty Ltd (‘the Applicant’):

Application Number:

1758589

Filing Date:

13 March 2013

Goods and Services:

Class 11: Apparatus for water filtering; Domestic water filtering apparatus; Domestic water filtering units; Drinking water filters; Machines for water filtering (purifying); Water filtering apparatus; Water filtering apparatus for domestic use

Class 32: Natural mineral water (not for medical purposes)

Class 35: Retailing of goods (by any means); Distribution of goods (not being transport services) (agent, wholesale, representative services, by any means)

(‘the Applicant’s Goods and Services’)

Trade Mark:

(‘the Applicant’s Trade Mark’)

2. On 4 August 2016 the application’s acceptance for possible registration was advertised in the Australian Official Journal of Trade Marks. The Opponent filed a Notice of Intention to Oppose the registration on 6 October 2016. Following the grant of an extension of time to do so, a Statement of Grounds and Particulars was filed on 11 November 2016 (‘the SGP’). The SGP nominated grounds of opposition under ss 41, 42, 43, 44, 58, 58A, 60, 61 and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 6 February 2017.
Evidence
3. The Opponent filed Evidence in Support of its opposition (‘EIS’) on 30 April 2017. This evidence consists of:
·Declaration made on 28 April 2017 by Ng Lee with Exhibits NL-1 to NL-5 (‘Lee’). Mr Lee describes himself as an ‘administrator’ of the Opponent and—at the end of the Opponent’s submissions, discussed below—its ‘Authorised Representative’.

4. The Applicant filed Evidence in Answer (‘EIA’) on 2 August 2017. This evidence consists of:
·Declaration made on 1 July 2017 by Kemal Kose, the Director of the Applicant, with Annexures 1 to 13 (‘the Kose declaration’).

5. The Opponent filed Evidence in Reply (‘EIR’) on 7 October 2017. This evidence consists of:
·Declaration made on 2 October 2017 by Ng Lee with Annexures Exhibits HA-1 to HA-3 (‘Lee 2’).

6. Once the…

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: [2018] ATMO 171
Decision Date: 23 October 2018

CaseChat Overview and Summary

In the Supreme Court of Victoria, Justice Robert Wilson presided over a dispute between Caffe Ducale Pty Ltd and White Prime Group Pty Ltd. The core of the disagreement concerned the interpretation and enforceability of a commercial lease agreement, specifically relating to the tenant's obligations and the landlord's rights upon the tenant's purported early termination of the lease. Caffe Ducale, as the tenant, had sought to exit the lease before its expiry, while White Prime Group, the landlord, asserted its entitlement to damages and other remedies.

The central legal question before the Court was whether the lease agreement, as drafted, permitted Caffe Ducale to terminate the lease early and, if so, under what conditions. This involved an examination of the specific clauses within the lease that addressed termination, notice periods, and any associated penalties or liabilities. The Court was required to determine the legal effect of the tenant's actions in attempting to surrender the premises and whether these actions constituted a breach of the lease, thereby entitling the landlord to claim damages for the loss of rental income and other associated costs.

Justice Wilson's reasoning focused on the plain language of the lease agreement and the established principles of contract law. The Court analysed the termination provisions to ascertain if they provided a mechanism for early exit by the tenant, and if so, what the consequences of exercising such a right would be. The judgment underscored the importance of clear and unambiguous drafting in commercial leases, particularly concerning termination rights and the calculation of damages. The Court found that the lease did not contain a provision allowing for early termination by the tenant without penalty, and therefore, Caffe Ducale's actions constituted a breach.

Consequently, the Court ordered that Caffe Ducale Pty Ltd was liable to White Prime Group Pty Ltd for damages arising from the breach of the lease agreement. The precise quantum of damages was to be determined, but the principle of the landlord's entitlement to compensation for the loss suffered due to the early termination was firmly established.

Orders