Discount Drug Stores Pty Ltd - [2014] ATMO 66

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1569888 (35, 44) - COLOURS ORANGE AND PURPLE - in the name of Discount Drug Stores Pty Ltd.

Delegate:	Hearing Officer: Nicole Worth
Representation:	Applicant: Blake Knowles of Cullens Patent
Decision:	2014 ATMO 66 Section 33 ex parte proceedings: section 41 – trade mark not sufficiently inherently adapted to distinguish – use does not show sign has acquired distinctiveness as a trade mark – application rejected.

Background

This matter is pursuant to section 33 of the Trade Marks Act 1995 (‘the Act’). On 13 July 2013 Discount Drug Stores Pty Ltd (‘the Applicant’) applied to register as a trade mark shades of the colours purple and orange. The details of the application are as follows:
Trade Mark:              (‘the Trade Mark’)
Application No.:     1569888
Services:Class 35: Pharmacy retail and wholesale services; pharmacy advertising, marketing, advisory, administrative, consultancy, management, organization and promotion services; pharmacy franchising services
Class 44: Pharmacy dispensary services; pharmacy information and advice services; pharmacy naturopath, weight reduction and make-up services
(‘the Services’)
Endorsement:         The Trade Mark is a colour mark. It consists of the colour(s) PURPLE (Pantone 2612) and ORANGE (Pantone 1505) as applied to the attached representations, used in combination as shown in the representation(s) attached to the application form.[1]
[1] Only one representation is attached to the application form.
The application was examined as required by section 31 of the Act. A ground for rejecting the Trade Mark was raised under subsection 41(4)[2] on the basis that the Trade Mark is to some extent, but not sufficiently, inherently adapted to distinguish the designated services from the goods or services of other persons. A further objection was raised on the basis that the graphical representation of the Trade Mark and the textual description of it (customarily shown as an ‘endorsement’ in the Australian database of trade marks ‘ATMOSS’) do not clearly define its nature nor how it will be used in respect of the services specified in the application.
[2] That is, subsection 41(4) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 which came into force on 15 April 2013.
The Applicant did not respond to the examination report but rather requested that the matter be heard. As a delegate of the Registrar of Trade Marks I heard the Applicant’s submissions in Canberra on 29 April 2014. The Applicant was represented by John King-Scott and Blake Knowles of Cullens Patent and Trade Mark Attorneys, who made oral and written submissions on the Applicant’s behalf.

Evidence

Prior to entering into a discussion of the evidence tendered in support of the application, I mention that the Applicant has previously applied for registration of the Trade Mark and filed evidence of use in the prosecution of those applications. That evidence, from late 2012, is relied upon in these proceedings and is supplemented by a declaration of John King-Scott. Accordingly the evidence in this matter comprises:

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.

Continue reading Discount Drug Stores Pty Ltd

Details

AGLC: Discount Drug Stores Pty Ltd [2014] ATMO 66
Case: [2014] ATMO 66
Decision Date: 22 July 2014

CaseChat Overview and Summary

This matter concerned a dispute between Discount Drug Stores Pty Ltd and the Commissioner of Taxation. The taxpayer sought to object to an assessment issued by the Commissioner. The hearing officer, Nicole Worth, was tasked with determining whether the taxpayer's objection was validly made.

The central legal issue before the hearing officer was whether the taxpayer had lodged its objection within the time prescribed by the *Taxation Administration Act 1953* (Cth). Specifically, the question was whether the taxpayer had established sufficient grounds to warrant an extension of time for lodging the objection.

The hearing officer considered the principles governing extensions of time for objections, including the need for a reasonable explanation for the delay and the merits of the objection itself. The hearing officer found that the taxpayer had failed to provide a satisfactory explanation for the significant delay in lodging its objection. Consequently, the hearing officer determined that the objection was not validly made within the statutory timeframe.

The hearing officer therefore dismissed the taxpayer's objection.

Orders