Danjaq LLC v Resource Capital Australia Pty Ltd

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Danjaq, LLC to registration of trade mark application 893442(41) JAMES BONDI filed in the name of Resource Capital Australia Pty Ltd.

Delegate: Ian Thompson

Representation: Opponent
Michael Kirov of Spruson & Ferguson.
Applicant
Did not appear - no written submissions.

Decision:
1. Section 52 Opposition: exercise of Registrar's discretion, section 59 established: registration refused.

2. Costs awarded against applicant.

Background

Resource Capital Australia Pty Ltd., ('the applicant') of Alexandria, Sydney, has filed application to register a trade mark, current details of which are:
App No:          893442
Priority Date:    30 October 2001
Services:Entertainment services in this class, including film and television series and character and stories and video
Trade Mark:     JAMES BONDI
No grounds for rejection under the Trade Marks Act 1995 ('the Act') were raised against the application during examination, and it was advertised accepted for registration in the Australian Official Journal of Trade Marks, on 14 March 2002.
On 30 May 2002, Danjaq LLC ('the opponent') filed Notice of Opposition to registration of the trade mark. Grounds under sections 41, 42, 43, 44, 58, 60 and 62 were cited in the Notice which included the catchall “The Registrar should refuse the application on the above or other grounds in the exercise of his or her discretion”.
Evidence in support was served and filed; there was no evidence in answer filed. The opponent then applied, and was allowed, to serve and file further evidence. The applicant did not serve and file evidence in reply to the opponent’s further evidence. A hearing was held before me, as a delegate of the Registrar, in Sydney, on 18 March 2004. Mr Michael Kirov, of Spruson & Ferguson, Patent and Trade Mark Attorneys, Sydney, represented the opponent at the hearing. The applicant did not appear, was not represented and did not file written submissions.
Evidence
Evidence in support
The opponent's evidence in support comprises statutory declarations by Michael Kirov and David S Pope which state that the opponent is the owner of the JAMES BOND trade mark in relation to entertainment services and related merchandise. The declarations attest to the fame of the movie character James Bond, to an Australian trade mark registration which includes that name, to nineteen movies (made by the opponent or its predecessor in business) which feature the character James Bond and to the success of video and DVD sales of the movies.
Although it transpires that it is immaterial to these reasons and this decision, I accept that the James Bond character and movies are very well known.
Further Evidence
The further evidence is another declaration by Michael Kirov.
Mr Kirov’s second declaration exhibits an historical extract in relation to the applicant from the on-line database of the Australian Securities & Investments Commission ('ASIC'). This extract shows that:
·from 20 January 1999 until 27 August 2001 the address of the applicant's registered office recorded with ASIC was 2 Stokes Avenue, Alexandria NSW 2015;
·on or about 21 August 2001 the applicant advised ASIC that the address of its registered office had changed to Level 4, 20 Loftus Street, Sydney NSW 2000 with effect as from 10 August 2001 and this change was recorded by ASIC on or about 28 August 2001;
·from 4 January 1999 until 9 August 2001 the principal place of business of the applicant recorded with ASIC was 2 Stokes Avenue, Alexandria NSW 2015;
·on or about 21 August 2001 the applicant advised ASIC that the address of its principal place of business had changed to Level 4, 20 Loftus Street, Sydney NSW 2000 with effect as from 10 August 2001 and this change was recorded by ASIC on or about 28 August 2001.
I will note that on the application (dated 30 October 2001) to register this opposed trade mark, the applicant recorded its address as being 2 Stokes Avenue, Alexandria, whereas the ASIC extract shows the applicant informed ASIC that it ceased at that address (ie, the applicant left it) on 9 August 2001.
At the hearing, Mr Kirov handed me a further ASIC extract in relation to the applicant which shows that the applicant's addresses are now at 7 Elizabeth Street, Sydney. Mr Kirov also gave me a copy of a letter sent to the opponent by the applicant sent from that address which shows that it is aware of these proceedings and requesting a copy of the evidence on which the opponent relies. While the letter correctly seeks to place the obligation on the opponent to serve its evidence on the applicant, the letter (which shows the Elizabeth Street address) is seemingly written in ignorance of the provisions of subsection 215(1) which mandate:
215 Address for service
(1)The address for service of a person who has filed an application, notice or request is:
(a)the address for service stated in the application, notice or request; or
(b)if the person subsequently notifies in writing another address to the Registrar—that other address.
Note:For file see section 6.
The applicant has not applied to change its address for service. Hence, the evidence that has been served and filed in this matter has been properly served and filed and I thus conduct this matter on that basis.
The ASIC extracts also show that Marcus Stephen Boland, of Unit 7, Baden Street, Coogee, New South Wales is the sole Director, Company Secretary and shareholder of the applicant.
On or about 8 August 2003, the opponent attempted to serve documents on the applicant at its then notified principal place of business and registered office at Level 4, 20 Loftus Street, Sydney; the courier engaged to do so advised the opponent’s representatives that the applicant was not located at the Loftus Street address, that the telephone had been disconnected and that there was no current telephone listing for the applicant.
An attempt by the opponent to send the same documents to the GPO Box in Sydney notified by the applicant to the Registrar of Trade Marks as its address for service resulted in the return of the documents to the opponent with the advice “Box/Bag cancelled”.
Subsequently, the opponent conducted further research into the operations of the applicant and discovered a decision of the Federal Court: CSR Limited v Resource Capital Australia Pty Limited [2003] FCA 279 (‘the CSR decision’).
The opponent also discovered several trade mark applications to register trade marks made in the name of the applicant and I include details of those as Annex 2 to this decision
Each of the applications at Annex 2 either lapsed after one adverse report from the examiner or after being advertised for opposition purposes in the Australian Official Journal of Trade Marks.
Mr Kirov searched the trade marks at Annex 2 for similar trade marks on the Trade Marks Office on-line data-base of trade marks and appends a copy of the search results to his declaration. I will state now that I agree with the thrust of this evidence that many of the above trade marks bear a striking resemblance to the registered trade marks of others and that, for example, the trade mark VALLEY POWER, is the trade mark of a major electrical utility in the United States. The full list does not bear dwelling on, but some examples will suffice: the applicant's TV1.COM application is deceptively similar to the several registered trade marks which include or comprise TV1 owned by people other than the applicant; the applicant's EIGHT.COM applications are deceptively similar to the registration of the series eightcom and 8com owned by a person other than the applicant and the applicant's BIO NOVA application is substantially identical to seven BIONOVA registrations owned by a person other than the applicant.
The list is enough to be able infer that the applicant has a pattern of applications which sought registration of trade marks many of which were similar to those of other persons.
Other
The CSR decision of the Federal Court is a ‘cyber squatting’ case. I include the relevant portion of the judgment of Hill J as Annex 1 to this decision since it appears to be unreported. The following facts emerge in regard to that matter:
·the applicant has a history of cybersquatting; that is, registering Internet domain names for a pecuniary advantage, demanded from another person who is more entitled to be regarded as the rightful user of the domain name or with whom the public would more logically connect the domain name
·the applicant's sole officer has held himself out as an expert on Industrial and Intellectual Property and has sought consultancies on this basis notwithstanding his obvious lack of expertise in the field
·the applicant claims to have its business in the sugar industry, and by inference, in the construction materials industry and the wine industry, none of which claims are well-founded and were in fact found to be untruthful by the Court
·the applicant is the alter ego of Mr Boland
·Mr Boland was, in the words of Hill J, “a far from impressive witness.” And, again in the words of Hill J, “Mr Boland clearly has no great regard for the truth.”
Submissions
The main thrust of the opponent’s submissions was couched in terms of section 59 of the Act: the allegation is that the opponent does not intend to use the trade mark. The opponent made ancillary submissions in terms of the Registrar’s discretion and more generalised submissions in terms of sections 44, 60 and 58 of the Act.
In regard to section 59, Mr Kirov drew my attention to the vast range of commercial activities that the opponent implies, or has implied, intentions to use various trade marks or domain names in relation to – a host of activities as diverse as electricity generation and supply; wine making; surgical prostheses; film making; publishing and so forth and noted that the CSR decision typifies the applicant as a ‘non-trading company’ whose principal business appears to be cybersquatting.
Mr Kirov submitted that the applicant’s evidenced history of applying to register trade marks deceptively similar to those of others and of cyber squatting raised inferences about the behaviour of the applicant which had not been addressed by the applicant.
Mr Kirov drew my attention to the Court’s comments about the ethics of the commercial activities of Mr Boland and his alter ego.
Reasons
The Registrar's Discretion
In TV Shopping Network Ltd v Home Shopping Network Inc (1998) 40 IPR 639, at 645,[1] the Hearing Officer said:
[1] See further Challenge Cancer Support Network Inc v Leukemia Foundation of Queensland (2002) 55 IPR 616
“[Counsel for the opponent] has said that the Registrar has a discretion to refuse to register a trade mark even if the grounds of opposition have not been established. Here, I agree with him — providing that natural justice is afforded to both sides. Conversely, I cannot agree with [counsel for the applicant] that the so-called “presumption of registrability” outweighs the registrar's need to consider all of the surrounding factors before deciding whether or not to register a trade mark, with or without conditions or limitations. The Registrar, as a public official, must be concerned with the public interest. I am of the opinion that this interest could be harmed by the wrongful registration of a trade mark which, during the course of opposition proceedings, is revealed to clearly not qualify for registration but where the reason for that disqualification is not one of the grounds stated in the notice of opposition.”
In TV Shopping, where the Hearing Officer agrees that "the Registrar has a discretion to refuse to register a trade mark even if the grounds of opposition have not been established", he refers to the refusal of an application under one of the available grounds of opposition under Division 2 of Part 5 of the Act which was not specified in the Notice of Opposition. This is thus not a refusal to register on some vague ground of public policy or because of a general distaste for the business practices of the applicant. The exercise of the Registrar's discretion in this manner is only under circumstances where the public interest is clearly best served and where procedural fairness is observed by both parties having had opportunity to see and comment on the evidence.
Here, section 59 is not a ground expressly mentioned in the Notice of Opposition but is one of the potential other grounds mentioned in the Notice in connection with the exercise of the Registrar's discretion.
Both parties have had the opportunity to see and comment on the evidence in this matter. The opponent's evidence has been properly served at the applicant's notified address for service and properly filed at the registry. The second Kirov declaration directly addresses issues relevant to section 59 and challenges the applicant's bona fides and further addresses the public interests (particularly as regards the interests of other traders in fields of commerce as diverse as surgical appliances, Internet banking and television production) and having the true state of the marketplace correctly shown on the register of trade marks. I therefore am prepared to exercise my discretion in relation to section 59 of the Act as, because of the provisions of section 215, the norms of natural justice have been observed: if the applicant has not, in fact, seen the evidence this is because of being dilatory in recording its correct address for service and this is a defect in its application of which it must be aware. The relevant evidence of a party should not suffer because the other party has not notified its correct address for service.
Section 59
Section 59 of the Trade Marks Act 1995 provides:
59 Applicant not intending to use trade mark
The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a)to use, or authorise the use of, the trade mark in Australia; or
(b)to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services specified in the application.
Note:For applicant see section 6.
The evidence and submission of the opponent has four clear thrusts:
·The use of the trade mark is unlikely because of the limited resources of the applicant and the Court's observations about the trade of the applicant
·The applicant has a record of applying for trade marks which are similar to those of others and which are not seriously prosecuted by the applicant - behaviour that reveals a lack of intention to use
·The applicant’s record of cyber squatting and pattern of trade mark applications give rise to an inference that the applicant hoped to on-sell any registration which might have ensued from the application and hence there was no bona fide intention to use the trade mark.
·The applicant has remained uncontactable either at its notified address for service or at its notified business address. The latter has emerged in the evidence to have been wrong at the time that the application was filed and neither has been rectified.
I will deal with these four issues under the sub-headings, Trading Activities, Trade Marks' History, Cybersquatting and Address, below.
Trading Activities. In the CSR case, Hill J made the following observations about the trading activities of the applicant:
The business of RCA [here 'the applicant'] would seem to be, or at least to include the registering of domain names and turning those names to account, whether for money by transferring the domain names or by seeking to induce companies it targets to enter into agreements under which RCA provides intellectual property services for reward.
[And]
It will be recalled that the certificate of [business] registration suggests that RCA was said to have commenced a business of trading in sugar. He [Mr Boland] seemed not to mind repeating what I find to be a complete untruth, namely that RCA proposed to deal in sugar, in his correspondence with CSR.
On this here-opposed application, the applicant has specified the following services:
Entertainment services in this class, including film and television series and character and stories and video
The observations of the Court about the limited business activities of the applicant, the scope of the of the applicant's claims as to both goods and services on which it intends to use the trade mark (and the other trade marks for which it has sought registration) and the Court's comments as to the untruthfulness of the applicant's sole officer, Mr Boland, are issues from which adverse inferences can be drawn about the applicant's intention/capacity to use the trade mark. The inference I would draw is that the applicant does not have the capacity or means to use the trade mark and that the expression of intention to use the trade mark inherent in the making of the application was and remains ill-founded.
Trade Marks History. The applicant has made twenty-two trade mark applications, all of which either have lapsed on the issue of a first adverse report from the trade mark examiner, or have lapsed after being advertised for opposition (or have, in this one instance, been opposed). The applicant has shown no interest in the prosecution of this or any other of its applications beyond their filing dates. I consider that it is possible to adversely infer that, if this application had not been opposed, it would have also lapsed. This history therefore also reflects on the applicant's intention to use the opposed trade mark and it is possible to draw an adverse inference that the applicant does not, or did not, did not, intend to use the trade mark. These observations are not, I consider, necessarily inconsistent with my comments, below, about the applicant’s possible intentions to traffic in trade marks.
Cybersquatting. The applicant has a track record of making untruthful representations to the Registrar of Business Names in order to secure domain names from Melbourne IT which it then offered to on-sell at vastly inflated prices to people who could be more properly regarded as being their rightful users. The applicant has also applied for twenty-two trade mark registrations many of which bear striking similarity to the trade marks of other people. It is not wrong, of course, to register a trade mark which is used overseas[2] and unused or unregistered in Australia if the filing of the application is made in good faith and coupled with a bona fide and continuing intention to use. However, when the applicant's behaviour in cybersquatting is juxtaposed with the applicant's pattern of applications, an adverse inference may be drawn that the applicant sought trade mark registrations to on-sell in the same manner that it sought to on-sell domain names to their more rightful owners, or that the applicant sought to trade in trade mark registrations, rather than to use the trade marks in trade. The logical objection to drawing such an inference is that this has obviously not occurred – none of the applied for applications matured to a registration. However, the CSR decision noted that Mr Boland was obviously inexpert in IP matters and the pattern of applications at Annex 2 shows a preparedness to attempt to register trade marks which are deceptively similar to those of others. This behaviour is bizarre from an applicant that has held itself out as an expert on Intellectual Property, but, to my mind, it would seem that the applicant did not apprehend that the filing of an application to register a trade mark which is deceptively similar to the registered trade mark of another trader for the same or related goods or services should not result in a valid registration. It would seem that the applicant may have been under a misapprehension that registered trade marks are somewhat similar to domain names and business names in that small differences might allow business names and domain names to co-exist: this is not usually the case in regards to trade marks in respect of the same goods or services.[3]
[2] The "sharp business practice" referred to in In Moorgate Tobacco Co Ltd v Phillip Morris Ltd (1984) 156 CLR 414
[3] Subsection 44(3) and (4) provide exceptions.

There are, furthermore, strong parallels in this behaviour and the applicant’s behaviour in registering domain names, the use of which would have constituted misleading or deceptive practice in terms of the Trade Practices Act 1972. Accordingly, I think that the inference is there to be taken.
Neither of these scenarios (either an attempted piracy of trade marks or an attempt to trade in trade marks) constitutes, in my consideration, a bona fide intention to use a trade mark.
Address. The applicant provided a postal address for service that has become inaccurate since the application was filed and has not attempted to rectify it. The physical business address of the applicant was, according to the ASIC records, false at the time that the application was made. I think that these circumstances, coupled with any of the circumstances I allude to under the headings Trading Activities, Trade Marks' History or Cybersquatting allows an inference that the applicant has attempted to in some way insulate itself from the repercussions of its behaviour. However, this is not necessarily a matter which reflects on the applicant's intention to use the trade mark.
Under the above headings, Trading Activities, Trade Marks' History and Cybersquatting I have observed that adverse inferences may be drawn from the unrebutted evidence of the opponent. Section 55 provides:
Decision
55. Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note: For limitations see section 6.
Are 'inferences' enough to establish a ground of opposition to my satisfaction in the absence of any evidence from the applicant? In Phillip Morris Products SA v Sean Ngu [2002] ATMO 96 (23 October 2002) Hearing Officer Jock McDonagh said:
I consider that the evidence of Mr Williams goes very much to section 59 of the Act and should have put the applicant on notice that section 59 was an issue that would be addressed by the opponent at the hearing. The applicant, in his letter to Spruson & Ferguson, above, made various allegations that he was preparing for use of the opposed trade mark. The purported preparations are ones which would be easy to substantiate via documentation of negotiations with the Australian Taxation Office, substantiation of the referred to market research and so on. For whatever reason, the applicant has, when pressed, not provided evidence to support his claims.
In Sapient Australia Pty Ltd and Sapient Corporation v SAP Aktiengesellschaft [2002] ATMO 51 (20 June 2002, Hearing Officer Williams said:
I do not say that Sapient has proved its case - it does not have the unenviable job of "proving a negative" - but if "slight evidence will suffice[4]" then it has done sufficient to shift the onus onto SAP Ag, requiring it to validate its intention.
[4] Estex Clothing Manufacturers Pty. Limited v. Ellis and Goldstein Limited, 116 CLR 254 at 258
The approach of the Hearing Officers is consistent with that of the High Court in Jones v Dunkel (1959) 101 CLR 298 where Kitto J said at 312:
(i) that the absence of the defendant Hegedus as a witness cannot be used to make up any deficiency of evidence; (ii) that evidence which might have been contradicted by the defendant can be accepted the more readily if the defendant fails to give evidence; (iii) that where an inference is open from facts proved by direct evidence and the question is whether it should be drawn, the circumstance that the defendant disputing it might have proved the contrary had he chosen to give evidence is properly to be taken into account as a circumstance in favour of drawing the inference.
Here quite clear inferences may be separately or collectively drawn from the evidence in terms of my discussions under the headings Trading Activities, Trade Marks' History and Cybersquatting that the applicant does not intend to use the trade mark. The evidence from which these inferences can be drawn is unchallenged and unrebutted by the applicant who could have readily addressed them in its own evidence. The opponent's evidence is cogent, relevant and drawn from the records of ASIC, the Federal Court and of the Trade Marks Office. The evidence thus has a high provenance and credibility in a situation where, as Hearing Officer Williams, in the Sapient decision said, slight evidence should suffice to shift the onus onto the applicant and the applicant has not responded. I therefore accept the inferences in the opponent's evidence and I am satisfied that the applicant does not intend to use the trade mark.
The opponent has established its ground under section 59 of the Act.
Conclusion
I refuse to register application 893442.
Costs
The opponent, having been successful, is entitled to its costs which I order at the official scale against the applicant.
Other
Regulation 5.16 provides:
5.16 Conduct of opposition proceedings generally
(1)The Registrar may, at the request of a party to the opposition proceedings or on the initiative of the Registrar, give a direction in relation to the procedure in the proceedings.
The despatch of this decision and the matter of costs are procedures within these proceedings.
As this may have some bearing on the opponent's recovery of its costs and the despatch of this decision to the applicant, I direct that the address for service of the applicant be now treated as if it is Box 45, 7 Elizabeth Street, Sydney which was its correct mailing address on 16 March 2004.
Ian Thompson
Hearing Officer
Trade Marks Hearings
7 April 2004
Annex 1 to 893442
  Dated 12 April 2004
The RCA is a company incorporated in New South Wales in 1997. Mr Boland is its sole director and secretary. He has, so I am told, a law degree but appears not to be admitted either as a barrister or as a solicitor in this State. By leave, he appeared for the first respondent and was unrepresented in his capacity as the second respondent.
3 The case for CSR is relatively straightforward. CSR is a publicly listed company which carries on business in Australia, New Zealand, Canada, some parts of Asia and some parts of Europe. Its activities are diverse. However, the main activities are the refining and sale of sugar and sugar by-products and the manufacture and sale of building materials.
4 Sales made by the various companies in the group of companies of which CSR Limited is the holding company are approximately seven billion dollars. The group employs some 16,000 people of whom some 6,000 work in Australia and New Zealand and the balance in other countries.
5 CSR was originally incorporated in 1855 under the name of Colonial Sugar Refining Company. It changed its name in the 1970's to its present name. In so doing it is possible that the origin of the initials has become lost. The group of companies produces some 4% of raw sugar traded on the world market. Approximately two million tons of raw sugar per annum are produced by its sugar mills, amounting to some 40% of Australia's total raw sugar. It is one of the largest sugar millers in the world. Major customers of the sugar milled in Northern Queensland include, in addition to Australian refiners, refiners in Korea, Japan and Canada. By-products include molasses and bagasse. Molasses is used for fermentation producing ethanol, yeast and monosodium glutamate. There are two production enterprises, called Sugar Australia and New Zealand Sugar in which CSR has a 50% joint interest which together are the major suppliers of refined sugar to Australia and New Zealand.
6 In evidence there was a large amount of marketing material, involving the name CSR in connection with or together with the word "sugar". A domain site on the CSR website contains considerable information about sugar production and recipes and promotes the CSR sugar brand.
7 It is unnecessary to list the large numbers of trade mark registrations CSR has in connection with sugar and by-products. It suffices to say that both "CSR" and "CSR Sugar" are registered trade marks in respect of sugar itself and sweetening agents or sugar containing products in various classes. There is also an extensive trade mark protection of "CSR", the name, in conjunction with construction materials.
8 On 28 September 2001 RCA obtained registration in NSW of the business name CSR Sugar Supply. On the same day RCA registered the domain name "csrsugar.com". Additionally it registered "csrsugar.com.au".
9 In Australia domain names are registered by the company Melbourne IT Limited. The nature of a domain name, which in essence is a name which when entered into a computer linked on the internet maps to particular numbers used in intercomputer transactions, is discussed by Aldous LJ in British Telecommunications plc v One in a Million Ltd [1998] 4 All ER 476, a case dealing with what remedies were available in passing off against a company which registered domain names close to popular trade marks and then sought to sell them to the proprietor of the trade mark for a figure greatly in excess of the cost of registration. I shall return to that case later in these reasons.
10 The business name registration for CSR Sugar Supply shows the nature of its business as the "sales & supply of sugar & related products." It shows also that that business had commenced on 28 September 2001. It can readily be inferred that the information on the register originated from RCA at the time it sought the registration. The business name was deregistered in 2002 at the instance of CSR.
11 RCA also registered a business name Combined Sugar Retailers Sugar Supply on 23 April 2002. Its business, according to a search of the register of business names was said to be "sales & supply of sugar & related products." The business is said to have commenced on 22 April 2002. Again, the information on the register can be inferred to have originated from RCA at the time it applied for registration of the business name. Registration of that name also ceased in November 2002 and it would seem at the instance of CSR.
12 It seems that RCA also obtained a domain name registration for the name "constructionmaterials.com.au" around the same time as it sought registration of the business name CSR Sugar Supply.
13 On 12 October 2001 RCA wrote to CSR advising that it was a Sydney based corporate advisory and investment company with an intellectual property division specialising in global IP solutions and protection. The letter noted that "as a service" RCA offered to sell to CSR the domain name "constructionmaterials.com.au" for a price of some $25,000 to $30,000. The letter suggested that this was a special price as an initial introductory offer and that the writer would be happy with share script instead of cash. A later letter threatened that the domain name would be offered to others if agreement was not reached. Apparently CSR did not take up the offer.
14 It does not seem that a similar letter was sent by RCA in respect of the two "csr" domain names of which registration was secured by RCA. Instead, on 11 March 2002 CSR wrote to RCA asserting its right to the "csr" name in association with "sugar" and demanding that RCA undertake under seal not to use the names "csr sugar" or "csr sugar supply" and discontinue both the business name and the licence held for the domain name with Melbourne IT Limited. RCA purported to be seriously affronted by CSR's demand. A letter of 2 April 2002 from Mr Boland on behalf of RCA to Nicole Leggett in the Legal Department of CSR claimed CSR to be acting male fides and to be "ill based in fact." In what can only be said to be a bizarre suggestion, Mr Boland claimed that he was seeking to protect the interests of shareholders of CSR by securing the relevant domain names and asked CSR to provide a full and proper explanation for its failure to register the domain names.
15 The next letter in evidence was a letter of 9 April 2002 from RCA to Ms Leggett requesting a meeting with the relevant executive of CSR. The letter complains at the disregard by CSR of the interests of its shareholders having regard to the "obvious commerciality and effect upon corporate value." The letter also complains of the refusal by CSR to provide to RCA a copy of CSR's intellectual property policy. There are threats to take the matter up with shareholders to obtain an appropriate sanction against the board and damages. Details are demanded of why CSR did not take up the offer to acquire the domain name, presumably referring to the construction material name.
16 When CSR did not respond RCA wrote again on 23 April 2002 demanding a meeting and advising that it was most certain that "an appropriate and satisfactory settlement of this matter can be achieved for both parties in good and ready time." The letter contained what might be seen to be an important admission by RCA (an admission which Mr Boland sought to contradict in his oral evidence):
"We note that throughout the entirety of this matter, you have failed to enquire or determine of us in any respect our aspirations and plans for the sugar industry in this country. We advise we are most seriously interested in the sugar supply side of the industry and hence our obvious endeavours to date in respect of same with respect to incorporation of appropriate sale and supply portals to facilitate these machinations.
...Our primary interest naturally is to see these businesses operating to full and expected capacity over time, and believe we are in a unique position to expand and enhance traditional sugar markets and supply chain as a result thereof."
17 On 12 September 2002 Messrs Clayton Utz, the solicitors for CSR, wrote to RCA claiming that RCA was in breach of the Trade Practices Act 1974 (Cth), was passing itself off or threatened to pass itself off as associated with CSR and also infringed s 120(1) of the Trade Marks Act 1995 (Cth). Undertakings to cease use of the domain name csrsusgar.com.au and not use names in which the CSR mark appeared were requested.
18 On 26 September 2002 RCA wrote to Ms Still, a partner of Clayton Utz complaining that attempts to have discussions with CSR had been invited but ignored. It was suggested that Clayton Utz was defamatory and was acting mala fide. There was a threat, which is somewhat difficult to understand, in the following terms:
"We now advise we shall be moving this matter to appropriate public knowledge status specifically in regards your client's demonstrated blatant failure to observe due and appropriate fiduciary duty in such a matter."
Nevertheless it is suggested that the matter was capable of "appropriate corporate resolution." If not the matter would be taken "to the public press and ASIC."
19 There appear to have been some attempt to arrange a discussion between appropriate executives and legal advisers. A meeting was held on 4 October 2002 between Ms Still, Ms Hooper also of Clayton Utz, Ms Leggitt and Mr Boland with Mr McKay of CSR on the telephone. Precisely what happened at that meeting is not clear but on 14 October 2002 Clayton Utz wrote to RCA advising that proceedings would be commenced in respect now of the two names "csrsugar.com" and "csrsugar.com.au." RCA replied in a letter of 17 October 2002. The letter suggested that the Clayton Utz letter was "directly contrary to arrangements and express representations made to us in this matter by yourself." Due legal process is said to have been abused. The letter suggested that there was an agreement that RCA would forward to CSR a report which would perhaps lead to "most serious identification of massive flaws in the company's IP policy." Details are sought of charges which Clayton Utz had made to CSR in the matter to date as well as all advices given on IP matters since the inception of Clayton Utz's retainer. There is emphasis on the need for "proper discussion with ourselves commercially", suggesting, one would think some requirement that RCA be paid money.
20 Clayton Utz replied in a letter of 21 October 2002 reiterating that it had instructions to commence proceedings and noting that RCA had declined to transfer the two registrations to CSR. Wrongdoing by CSR or Clayton Utz was denied. RCA responded the same day alleging misrepresentations by Clayton Utz and complaining of its conduct in preventing "appropriate and reasonable discussion in regards to this matter and expected due commerciality." The letter says, among other things:
"As you are also most aware this matter relates to the potential commercial value of the domain names and their appropriate commercial use and application to sugar sales, and the potential for construction of a maximized electronic program for same. In its essence and mainstream, it is a commercial matter."
21 The letter enclosed in what was said to be "in accordance with due and ordinate commercial practice a confidentiality agreement," following which the "subject IP Report" would be forwarded.
22 The final correspondence before proceedings commenced was a letter from Clayton Utz to RCA returning the confidentiality document unexecuted (a matter in respect of which Mr Boland complained in the course of the proceedings). The letter notes that RCA had offered to provide the report and that CSR was willing to consider it, but that CSR refused to give a non-disclosure agreement when it had no idea of the content of the report or the material to be covered by it.
23 The present application was filed on 24 October 2002. RCA did nothing about the matter, so far as the Court was aware, until it came before me for hearing on 11 February 2003. Mr Boland appeared in court that day and asked that the proceedings be adjourned. He complained that he had been let down by his solicitor. On Mr Boland giving an undertaking until judgment not to use the csrsugar.com name (the csrsugar.com.au domain name had, in the meantime been cancelled by Melbourne IT Ltd on 4 December 2002 following the deregistration of the business name CSR Sugar Supply on 15 August 2002) the matter was adjourned and orders were made for the filing of defences and affidavit evidence. A defence was filed (out of time) but no affidavits were filed and served until the date of the hearing when leave was sought and granted, to file an affidavit (unsworn) in court.
24 The "affidavit" contained little in the way of factual matters, and considerable argumentative material. I permitted some of the clauses in the affidavit to be read in so far as they did relate to what was said to be the motive of Mr Boland in undertaking the course he did. The unsworn document was then verified by Mr Boland from the witness box.
25 Before proceeding to note the defence filed by the respondents it might be mentioned that RCA did not restrict its attention to CSR alone. It wrote to another sugar company, Maryborough Sugar in Queensland, advising that RCA had obtained domain name registration of "maryboroughsugar.com.au" and offering for sale that domain name for between $5,000 and $10,000 for "introductory purposes." Again it was suggested that share script would be satisfactory payment.
26 This offer was obviously not found satisfactory by Maryborough Sugar, or so far as the evidence discloses.
27 RCA also, apparently, obtained a domain registration of " A subsequent dispute covering that domain name came before the Administrative Panel of WIPO Arbitration and Mediation Centre at the complaint of Southcorp Wines Pty Ltd and J Y Tulloch Pty Ltd, the former being the parent and the latter the subsidiary of it involved in making wine. The mediator's report, which was in evidence, noted that RCA had no interest in wine and that it was not feasible that RCA was unaware of the existence of the trade marks owned by the Southcorp group at the time of registration. It seems clear also that there had been an offer to sell the disputed domain name for a price "far exceeding the registration costs" which the panel regarded as constituting bad faith.
28 It was apparently suggested by RCA in the course of the arbitration that there had been no intention at the time the domain name was registered to attempt to sell it to Southcorp. That was a matter which apparently had arisen as a "polite afterthought." Not surprisingly the panel found the domain name confusingly similar to the name Tulloch in association with wine and the assertion that Mr Boland had been acting for a client (an assertion repeated in the witness box before me) was rejected. It was found by the panel that Mr Boland had acted in bad faith and that there was "no clearer case of cybersquatting."
29 What is to say the least strange is the defence which Mr Boland seeks to put to the court. His case is (despite both correspondence with CSR and representations on the business name applications to the contrary) that at no time did RCA or he ever intend to carry on a sugar business. He suggests, strangely, that in some way or other there was no CSR Sugar Limited (that may itself be true but of no relevance) and no CSR sugar division so that there could be no confusion caused to members of the public. The defence says that in any event, the sole purpose of RCA and Mr Boland was in essence to protect the shareholders of CSR and the company and to ensure that its assets (particularly its intellectual property assets) "were and are at all times positively and proactively managed to ensure total maximum balance sheet... value to shareholders." There are assertions of the fiduciary duty the board of CSR had to shareholders to protect its intellectual property and some self praise on the part of Mr Boland for having alerted CSR to actual and potential loss of current and future balance sheet values. The defence continues, "the second respondent also states that despite all such endeavour demeanour and constant attempts to put forward any such discussion and good intent the applicant preferred at all times to engage in abusive and unnecessary legal expense before establishing these matters or the bona fides of same in any way."
30 Although not referred to in the defence, Mr Boland, in evidence and from the bar table, asserted a desire to alert CSR of the significance of generic names as domain names in modern commercial worldwide dealings and, if I understood Mr Boland correctly, suggested that there were valuable intellectual property advantages to be obtained from generic names. While this may have some relevance to the domain name "constructionmaterials.com.au" (not the subject of the present proceedings) it is hard to see how it had any relevance at all to the "csrsugar" name.
31 Mr Boland was a far from impressive witness. He sought to give the impression that his intervention with CSR was altruistic and brought about by his desire to protect the company from itself in the intellectual property area. However, it is abundantly clear to me that Mr Boland at no time proceeded for an altruistic reason. His purpose in this matter, as in the other matters involving Maryborough Sugar and Tulloch, was to extract a reward, whether in money or shares from companies such as CSR, which had intellectual property rights. That money could come from, in effect, forcing the coming to pay for a transfer of the domain name or it might be extracted by forcing the target of Mr Boland's attention to pay for consulting services. Since Mr Boland's knowledge of intellectual property law struck me as far from well informed, a consulting agreement would hardly be worth the paper it was written upon. But perhaps some companies might prefer to pay up to obtain the relevant domain name registration rather than risk the continued registration of that name or litigation, whether in the form of WIPO mediation and arbitration or in this Court. As it happens CSR did neither but brought the present proceedings.
32 Although CSR put its case on both s 52 and s 53 of the Trade Practices Act 1974 (Cth) as well as by reference to an alleged infringement of trade marks pursuant to s 120 of the Trade Marks Act 1995 (Cth), it suffices really to consider only the case under s 52 of the Trade Practices Act 1974 (Cth), for if that case is made out then CSR would be entitled to the injunctive relief it seeks. The case under s 53 is not substantially different.
33 Section 52 of the Trade Practices Act 1974 (Cth) prescribes a norm of conduct, as part of the Parliamentary purpose of protecting consumers, to be found in Part V of that Act. The conduct required of a corporation is that it not, in trade or commerce, engage in conduct that is misleading or deceptive or likely to mislead or deceive. The Court has an undoubted discretion where it is satisfied that a person is either in breach of that code of conduct or is proposing to engage in conduct that would be in breach of that code of conduct to grant an injunction in such terms as the Court determines to be appropriate: s 80. Further it will be taken to be a breach of s 52 if a person procures another to contravene s 52 or is in any way knowingly concerned in such a contravention: s 79. Section 53 likewise prescribes a standard of conduct. It proscribes (but in connexion with the supply or possible supply of goods or services or in connexion with the promotion of the supply or use of goods or services) inter alia the representation by a corporation that it has an affiliation it does not have or that goods and services have sponsorship or approval they do not have.
34 While conduct may be misleading or deceptive even where it does not involve a representation which is false, a quite large percentage of the cases where contravention has been found under s 52 have involved representations. In Equity Access Pty Ltd v Westpac Banking Corporation (1990) 16 IPR 431 at 440-442 I set out in a judgment described by the learned authors of Miller's Annotated Trade Practices Act 1974 (24th Ed) 2003 at 1.52.5 as "a helpful summary of the principles to be applied in relation to s 52" a series of propositions culled from the cases to that time. These principles were later restated in a judgment of a Full Court of this Court in S & I Publishing Pty Ltd v Australian Surf Life Saver Pty Ltd (1998) 88 FCR 354 at 361. They can be taken to apply in the present case.
35 There is no doubt that CSR has a considerable reputation in connection with the refining and sale of sugar and sugar products. Through the trade marks it owns and uses in connection with sugar and sugar products and the extensive advertising it undertakes, it can be said that CSR is a household name and further that any use of the initials CSR would immediately remind the user of the applicant here.
36 The business of RCA would seem to be, or at least to include the registering of domain names and turning those names to account, whether for money by transferring the domain names or by seeking to induce companies it targets to enter into agreements under which RCA provides intellectual property services for reward. Clearly in so doing it acts in trade or commerce. There is no doubt that Mr Boland, as the sole director and secretary of RCA, is knowingly concerned in the activities of RCA. Indeed, RCA is his alter ego so far as the evidence would suggest.
37 Mr Boland clearly has no great regard for the truth. He appears happy to obtain business name registrations, those being a necessary prerequisite for obtaining registration of domain names, without regard to the truth of what he represents to the Registrar of Business Names. It will be recalled that the certificate of registration suggests that RCA was said to have commenced a business of trading in sugar. He seemed not to mind repeating what I find to be a complete untruth, namely that RCA proposed to deal in sugar, in his correspondence with CSR. In my view Mr Boland had only the one interest in obtaining domain names with the word "csrsugar" and that had nothing to do with RCA trading in sugar. He wished to make money from that registration and believed he could do so by either selling the name to CSR or by causing CSR to pay for his services in the area of intellectual property.
38 In my view the obtaining of the registration of both domain names, "csrsugar.com" and "csrsugar.com.au" implied that the domain name belonged to CSR or, if it was noted that RCA was shown as owner of the names that RCA was in some way connected with CSR. Anyone seeing the domain name would assume, unless he or she made further enquiries and was told the truth, that CSR was the real owner of the domain name and entitled to use it for its purposes on the internet in connection with its sugar businesses. In my view the act of obtaining registration of both domain names constituted conduct that was misleading and deceptive or was likely to mislead and deceive persons and breached s 52 of the Trade Practices Act 1974 (Cth). It alternatively constituted a representation that CSR and RCA were affiliated.
39 As I have already note, the circumstances of this case it is clear that Mr Boland had full knowledge of everything that was done by RCA. Indeed he clearly represented RCA in all its activities. It follows that he was knowingly concerned in the contravention by RCA of s 52 of the Trade Practice Act 1974 (Cth). He would also be in breach of the Fair Trading Act 1987 (NSW) as himself engaging in conduct which was misleading and deceptive.
40 In my view the present is a clear case where not only orders should be made that RCA transfer the one presently registered domain name to CSR but also that injunctions should be granted in the form suggested by counsel for CSR, restraining both RCA and Mr Boland from registering any other domain name where the word CSR appears and whether in connection with sugar or otherwise.
41 I would also direct the Registrar of the Court to forward a copy of this judgment to Melbourne IT Limited with the suggestion that when dealing with RCA or Mr Boland or any company in which Mr Boland is a director, it require from him a statutory declaration both that at the time he seeks registration he is unaware of any trade mark or business or company name identical with or substantially similar to the domain name he seeks to register and does not hope or intend to transfer or agree to transfer that domain name to another person. The practice, in which Mr Boland has been involved, sometimes is called cybersquatting. There are probably less flattering names that could be used that might suggest the conduct verges on the criminal.
42 I think there is a real difficulty in relief being given under the Trade Marks Act 1995 (Cth) by virtue of RCA having infringed the CSR trade marks. It is a problem that is noted by the Court of Appeal in the One in a Million case but not ultimately decided by it. It is one thing to say that a cyber squatter who registers a name intending to sell that name to the owner of a trade mark or threaten a sale to a competitor if the owner does not come up with the money may have registered the name as an instrument of fraud, and thereby be guilty of the tort of passing off as was held by the Court of Appeal in England. The case of One in a Million was followed by Architects (Australia) Pty Ltd (trading as Architects Australia) v Witty Consultants Pty Ltd [2002] QSC 139 and Australian Stock Exchange Ltd v ASX Investor Services Pty Ltd (Burchett J, 3 June 1999, unreported). But it is another thing to say that for the purposes of s 120 of the Trade Marks Act 1995 (Cth) RCA used the domain name as a trade mark in relation to goods or services in respect of which CSR had registration or for that matter closely related to either goods or services referred to in the CSR registrations. No doubt it can be said that the interest of CSR were likely to be adversely affected by the acts of RCA but that is not sufficient to constitute an infringement. There could be a threatened infringement if one were to take seriously the suggestion that RCA intended to engage in the sugar trade. Clearly, however, that was not the real intention of RCA or Mr Boland, who at no time used or intended to use the domain names as trade marks in relation to either goods or services.
43 Fortunately it is unnecessary for me to decide that question. It suffices for the relief sought that I have found a breach of s 52 of the Trade Practices Act 1974 (Cth).
Annex 2 to 893442
  Dated 12 April 2004
Appn Number: 793963
Priority Date:               13 May 1999
Goods/Services:          Class: 28 Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees
Class: 36 Insurance; financial affairs; monetary affairs; real estate affairs
Class: 38 Telecommunications
Class: 41 Education; providing of training; entertainment, sporting and cultural activities
Trade Mark:                SPORTSBET.COM
Action:  Lapsed on 1^st adverse report (section 44)
Appn Number: 794319
Priority Date:               18 May 1999
Goods/Services:          Class: 28 Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees
Class: 36 Insurance; financial affairs; monetary affairs; real estate affairs
Class: 38 Telecommunications
Class: 41 Education; providing of training; entertainment, sporting and cultural activities
Trade Mark:                SPORTSBET
Action:  Lapsed on 1^st adverse report (section 44)
Appn Number: 797210
Priority Date:               16 June 1999
Goods/Services:          Class: 38 Telecommunications and broadcasting services; provision of on-line communications services; free to air, cable, satellite and subscription, Internet telecommunication, broadcasting and transmission services
Trade Mark:                TV1.COM, TV2.COM, TV3.COM; purported series ad infinitum
Action:  Lapsed on 1^st adverse report (section 44)
Appn Number: 797211
Priority Date:               16/06/1999
Goods/Services:          Class: 35 Advertising; electronic billboard advertising; all other services in this class
Class: 38Telecommunications and broadcasting services; provision of on-line communication links to global interactive, telecommunication and transmission networks, including free to air, cable, satellite, Internet subscription
Class: 42Indexing, searching and access relating to computer data on networks such as the Internet; computer and Internet services and providing access via computer and communication networks
Trade Mark:                TV.COM
Action:  Lapsed on 1^st adverse report (section 44)
Appn Number: 797212
Priority Date:               16 June 1999
Goods/Services:          Class: 36 Electronic billing and payment services that enables consumers to pay their bills electronically, and to pay for goods and services electronically, and enable financial institutions to settle same electronically
Trade Mark:                ECREDIT
Action:  Lapsed on 1^st adverse report (section 44)
Appn Number: 797216
Priority Date:               16 June 1999
Goods/Services:          Class: 36 Insurance; financial affairs; monetary affairs; real estate affairs
Class: 38 Telecommunications and communication services
Trade Mark:                TRANSACT
Action:  Lapsed on 1^st adverse report (section 44)
Appn Number: 797219
Priority Date:               16 June 1999
Goods/Services:          Class: 28 Games and playthings; gymnastic and sporting articles not included in other classes
Class: 35 Advertising, including electronic billboard advertising, dissemination of advertising matter by means of electronic communications networks
Class: 41 Education; providing of training; entertainment, sporting and cultural activities
Class: 42 Indexing, searching and access relating to computer data on networks such as the Internet
Trade Mark:                SPORTS.COM.AU
Action:  Lapsed on 1^st adverse report (section 44)
Appn Number: 797222
Priority Date:               16 June 1999
Goods/Services:          Class: 38 Telecommunication services relating to Internet, telephone, facsimile, voice mail, paging and data transmission communications; mobile and satellite telephone services; Internet telephony
Trade Mark:                SPEED-E TEL
Action:  Lapsed accepted
Appn Number: 797224
Priority Date:               16 June 1999
Goods/Services:          Class: 35 Advertising; business management; business administration; office functions; electronic billboard advertising
Class: 36 Insurance; financial; monetary affairs; real estate affairs
Class: 42 Indexing, searching and access relating to computer data on networks such as the Internet
Trade Mark:                FINANCE.COM.AU
Action:  Lapsed on 1^st adverse report section 41(6)
Appn Number: 808069
Priority Date:               24 September 1999
Goods/Services:          Class: 41 Sales and rentals of CD's, DVD's, video disks and games, compact disks, interactive software and hardware and related products, entertainment services in the field of compact disks, DVD's, video and virtual reality games
Trade Mark:                CDVD
Action:  Lapsed - formalities
Appn Number: 839709
Priority Date:               21 June 2000
Goods/Services:          Class: 35 Electronic retailing of goods and services including via the Internet; advertising services
Class: 38 Telecommunication services; transmission, dissemination, diffusion and broadcasting services of all types including pay, free to air and cable, Internet, satellite; communication services of all types including such services across international networks and the Internet; exchange and transmission of data; cable and satellite broadcasting and communications services, subscription television broadcasting and communication services, "pay-per-view" broadcasting and communications services; broadcasting services of all types, including pay, free to air and cable; television entertainment; electronic mail services; provision of telecommunications access and links to computer databases and the Internet; television broadcasting including but not limited to interactive television broadcasting, computer aided transmission of messages and communications via telephony and facsimile and other technological means
Class: 41 Electronic distribution of educational and entertainment programming and services for others, including children's and music television and computer programs; creation, development, distribution and provision of interactive and non-interactive electronic information advisory services in the fields of education and entertainment; education and entertainment services in this class relating to sports, news, nature, current affairs and items of general reference; publishing services; film production, production of radio and television programs; entertainment services including by film, television and/or radio and by other electronic means including the Internet and computers, multimedia and convergence technology; producing and broadcasting live and pre-recorded television programs, films and videos and dvds and other related recording-based technology; production of television, video and audio tapes and compact discs and dvds; production of Internet programs and programs on other media; production and presentation of stage events; arranging and conducting seminars and conferences; production of music videos and recordings; publication of books, magazines and text; organisation of exhibitions for cultural or educational purposes; dissemination of information for training, educational, entertainment and recreational purposes; planning of parties and special events; entertaining services provided during intervals at sports events; arranging, organising and conducting competitions; sponsorship of sporting events, individual sports team, club or association and individual athletes
Class: 42 Computer services including consultancy and programming; information provided on-line from the Internet and from CD-ROMs; computer software design; computer programming; licensing of intellectual property; copyright management; indexing, searching and access to computer data on networks such as the Internet; computer and Internet services and providing access via computer and communication networks including the Internet
Trade Mark:                8
Action:  Lapsed on 1^st adverse report - section 41(6)
Appn Number: 839711
Priority Date:               21 June 200
Goods/Services:          As for 839709
Trade Mark:                Channel 8
Action:  Lapsed on 1^st adverse report - subsection 41(5)
Appn Number: 839712
Priority Date:               21 June 2000
Goods/Services:          As for 839709
Trade Mark:                EIGHT.COM
Action:  Lapsed on 1^st adverse report - subsection 41(5)
Appn Number: 839713
Priority Date:               21 June 2000
Goods/Services:          As for 839709
Trade Mark:                EIGHT.COM.AU
Action:  Lapsed on 1^st adverse report - subsection 41(5)
Appn Number: 839715
Priority Date:               21 June 2000
Goods/Services:          As for 839709
Trade Mark:                EIGHT
Action:  Lapsed on 1^st adverse report - subsection 41(5)
Appn Number: 839716
Priority Date:               21 June 2000
Goods/Services:          As for 839709
Trade Mark:                EIGHT NETWORK
Action:  Lapsed on 1^st adverse report - subsection 41(5)
Appn Number: 880085
Priority Date:               25 June 2001
Goods/Services:          Class: 35 Retailing magazines; arranging and managing subscriptions to magazines; information services (including online information services) relating to business
Class: 41 Publishing; electronic publishing; publication of information on the Internet; organization of competitions for education and/or entertainment; information services (including online information services) relating to education, sport, entertainment, cooking, interior decorating, motoring, business, computing, news and current affairs, politics, travel, fashion, women's and men's health and lifestyle issues; services to assist people in the selection and purchase of gifts; services of a magazine club
Class: 42 Retailing, wholesaling and mail order provision of magazines
Trade Mark:                MAGMONSTER
Action:  Lapsed on 1^st adverse report - formalities
Appn Number: 884283
Priority Date:               1 August 2001
Goods/Services:          Class: 10 Prosthesis and grafts for the human body including vascular grafts
Trade Mark:                BIO NOVA
Action:  Lapsed on 1^st adverse report - section 44
Appn Number: 887037
Priority Date:               27 August 2001
Goods/Services:          Class: 9 Telecommunications and communications equipment, apparatus and systems; telephone cards, debit and credit cards, machine readable apparatus, such as telephone and calling cards, and apparatus which include integrated circuits, magnetic strips and memory chips; telephone equipment, apparatus and systems; facsimile equipment apparatus and systems; computer equipment, apparatus and systems; computer hardware; computer software; computer peripheral devices; modems; transmission, receiving and storage equipment, apparatus and systems; including but not limited to email systems and electronic directory equipment, apparatus and systems; publications in electronic form supplied on-line from databases or from facilities provided on the Internet (including websites); publications in electronic format; apparatus and instruments for recording, transmission, reception, processing, retrieval reproduction, manipulation, analysis, display and print out of sound, images and/or data; CD-ROMs; discs and tapes; DVDs; video and audio equipment, apparatus and systems; and all associated parts, accessories and fittings in this class
Class: 38 Telephone and Internet based telecommunications services; communication and telecommunication of information and data via local long distance and international voice, text, facsimile, video and data telecom services and email; services for the collection, transmission, processing and storage of messages and data
Trade Mark:                FREECALL
Action:  Lapsed on 1^st adverse report - subsection 41(6); section 44
Appn Number: 889153
Priority Date:               14 September 2001
Goods/Services:          Class: 35 Advertising and management of class action registry and related services for worldwide class actions
Class: 42 Legal services; database and Internet services
Trade Mark:                WORLD CLASS ACTION
Action:  Lapsed on 1^st adverse report - formalities and section 41
Appn Number: 893227
Priority Date:               26 October 2001
Goods/Services:          Class: 39 Electricity and energy transmission, distribution and supply services, including high-voltage electricity
Trade Mark:                VALLEY POWER
Action:  Lapsed accepted
Comment:  Address inaccurate
Appn Number: 8933385
Priority Date:               29 October 2001
Goods/Services:          Class: 39 Transportation and transport services, including freight and freight forwarding services, packaging and storage of goods, including all land, sea, and rail transport services; warehousing and distribution services
Trade Mark:                INTEGRATED LOGISTICS
Action:   Lapsed on 1^st adverse report - section 41
Comment:  Address inaccurate
Appn Number: 911315
Priority Date:               2 May 2002
Goods/Services:          Class: 36 Financial services for real estate transactions; real estate services and financial products for real estate transactions
Trade Mark:                PROPERTYBOND
Action:  Lapsed on 1^st adverse report - section 41
Comment:  Address inaccurate

[2004] ATMO 18

7 April 2004

Key Legal Topics

Areas of Law

Commercial Law

Intellectual Property

Legal Concepts

Statutory Construction

Intention

Reliance

Standing