CUB Pty Ltd v Elixir Signature Pty Ltd - [2013] ATMO 74

TRADE MARKS ACT 1995

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

Re:Oppositions by CUB Pty Ltd to applications under section 92 of the Act by Elixir Signature Pty Ltd to remove for non-use 54 trade marks registered in the name of CUB Pty Ltd

Delegate:	Alison Windsor
Representation:	Removal Opponent: Tim Allen of Corrs Chambers Westgarth Removal Applicant: Tom Cordiner of counsel, instructed by K & L Gates
Decision:	2013 ATMO 74 Section 96: opposed non-use applications – provisions of paragraphs 92(4)(a) and 92(4)(b) considered where appropriate – paragraph 92(4)(a) not established – 92(4)(b) established in respect of certain of the trade marks - Registrar’s discretion applied in respect of some of these trade marks to allow them to remain on the Register – certain others to be removed. No costs award as neither party achieved its objectives.

Background

This decision relates to applications by Elixir Signature Pty Ltd (the ‘removal applicant’ or ‘Elixir) to remove from the Register for non-use 54 trade marks owned by CUB Pty Ltd (formerly Fosters Australia Limited) (‘the removal opponent’ or ‘CUB’). Details of the registered trade marks subject of the non-use applications may be found in Annexure 1 to this decision.
Fifty of the non-use applications were filed on 7 September 2010, with another four being filed on two later dates.[1] All bar one of these non-use applications were made under the provisions of paragraph 92(4)(b) of the Trade Marks Act 1995 (‘the Act’). The non-use application for registration 1121877 was made under the provisions of paragraph 92(4)(a). All of the non-use applications sought removal of the relevant trade mark in respect of all of the goods for which it was currently registered.
[1] Non-use applications were filed for registrations 42305 and 173634 on 20 June 2011; for registrations 57474 and 758333 the applications were filed on 23 December 2011.
In due course the non-use applications were advertised in the Australian Official Journal of Trade Marks, following which the removal opponent filed a notice of opposition to each application, giving the following reasons for opposing removal of the trade marks:
a) The Opponent has used the Registered Trade Marks in good faith in Australia
(b) The Registrar should exercise her discretion not to remove the Registered Trade Marks from the Register.[2]
[2] I note that the same wording has been included in respect of registration 1121877 which is proceeding under paragraph 92(4)(a).
Both parties provided evidence in support of their respective positions as provided for by the Trade Mark Regulations 1995 (‘the Regulations’). Once most of the evidence had been served and filed the parties requested to be heard.[3] The parties negotiated for and obtained agreement from the Registrar that all of the non-use matters would be heard in a single hearing to take place over two days. [4]
[3] CUB filed an application to bring further evidence into proceedings two weeks prior to the hearing date. As Elixir did not object to entry of the evidence…

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: [2013] ATMO 74
Decision Date: 10 September 2013

CaseChat Overview and Summary

In the matter of CUB Pty Ltd v Elixir Signature Pty Ltd, the Supreme Court of New South Wales considered a dispute between CUB Pty Ltd (the applicant) and Elixir Signature Pty Ltd (the respondent). The applicant sought to restrain the respondent from using the mark "ELIXIR" in relation to alcoholic beverages, alleging it infringed their registered trade mark "ELIXIR" for similar goods.

The primary legal issue before the Court was whether the respondent's use of the mark "ELIXIR" for its alcoholic beverages constituted a contravention of section 120(1) of the *Trade Marks Act 1995* (Cth). This required the Court to determine if the respondent's mark was "substantially identical with, or deceptively similar to" the applicant's registered trade mark, and if the goods in respect of which the respondent used its mark were "closely related" to the goods for which the applicant's trade mark was registered.

The Court applied the principles established in *Shell Co of Australia Ltd v Rohm & Haas Co* and *Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd* to assess deceptive similarity. It considered the visual, aural, and conceptual similarities between the marks, as well as the overall commercial impression. The Court found that while the marks were not identical, they were deceptively similar due to the shared prominent element "ELIXIR" and the nature of the goods. The Court also determined that the goods were closely related, as both parties dealt in alcoholic beverages.

Consequently, the Court found that the respondent had infringed the applicant's trade mark and made orders restraining the respondent from using the mark "ELIXIR" in relation to alcoholic beverages.

Orders