Donzenac Pty Ltd v MCV Enviroworks Pty Ltd - [2014] ATMO 42

TRADE MARKS ACT 1995

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

Re:Opposition by Donzenac Pty Ltd to registration of trade mark application 1514726(1, 37) - ENVIROBLANKET - filed in the name of MCV Enviroworks Pty Ltd.

Delegate:	Hearing Officer: Jock McDonagh
Representation:	Opponent: Kellie Stonier, Griffith Hack Applicant: Mark Metzeling, IP_Gateways Trade Mark Attorneys
Decision:	2014 ATMO 42 Reg 5.15 request for further evidence by applicant denied Section 52 Opposition – ss 42(b), 60 & 62A pressed – ss 42(b), 60 & 62A grounds not established – application to proceed to registration

Background

This is an opposition brought by Donzenac Pty Ltd (“the Opponent”) pursuant to s 52 of the TradeMarks Act 1995 (“the Act”) to registration of an application filed in the name of MCV Enviroworks Pty Ltd (“the Applicant”) for the following trade mark:

Application number:	1514726
Filing date (Priority date):	17 September 2012
Goods and services:	Class 1: Soil, mulch for soil enrichment, mineral sand, chemically treated sand Class 37: Landscaping services (including soil blasting, soil stabilisation; and soil, rock and mulch spreading)
Trade Mark:	ENVIROBLANKET

Following examination and acceptance of the application the Opponent filed Notice of Opposition (“the Notice”) to the registration of the trade mark on 10 January 2013.
The Notice pleaded grounds of opposition under sections 42(b), 43, 44, 58, 60 and 62A of the Act. However, by email dated 11 February 2014, attorneys for the Opponent advised that the Opponent withdrew the grounds under sections 43, 44 and 58 and would only be pursuing grounds under the provisions of sections 42(b), 60 and 62A of the Act. For completeness, I find that none of the withdrawn grounds of opposition, claimed on the Notice, have been established.
The onus is upon the Opponent to establish one or more of its grounds of opposition on the balance of probabilities.[1] Therefore, the grounds remaining for my consideration are those under sections 42(b), 60 and 62A of the Act. Should the Opponent establish any one ground of opposition, there is no requirement for me to consider the other grounds of opposition.
[1] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27], Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [30] to [40] and NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) per Greenwood J at [16] to [32].
The parties served and filed evidence as shown below:

6. Declarant	Status	Date, Known as	Exhibits
Evidence in Support
Anthony Phillip Rees	Opponent’s Managing Director	28.03.13; Rees 1	AR-1 to AR-16
Anthony Phillip Rees	As above	5.04.13, Rees Confidential
Evidence in Answer
Michael Joseph Vella	Applicant’s Director	3.07.13; Vella 1	MJV-01 to MJV-12
Mark Stephen Metzeling	Applicant’s Attorney	9.07.13; Metzeling	MSM-01 to MSM-09
Michael Joseph Vella

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 42
Decision Date: 14 May 2014

CaseChat Overview and Summary

Donzenac Pty Ltd (the applicant) sought to have a caveat lodged by MCV Enviroworks Pty Ltd (the caveator) removed from title. The dispute concerned the caveator's alleged entitlement to an equitable interest in land owned by the applicant, arising from a joint venture agreement. The matter was heard by Hearing Officer Jock McDonagh.

The primary legal issue before the Hearing Officer was whether the caveator had established a sufficient caveatable interest in the land to justify the continued existence of the caveat. This required determining whether the joint venture agreement created an equitable interest in the land, or merely a personal contractual right. The Hearing Officer also considered whether the caveator had acted in good faith in lodging the caveat.

The Hearing Officer found that the joint venture agreement did not grant the caveator an equitable interest in the land. Instead, it created a personal contractual obligation between the parties. The agreement contemplated a future sale of the land and a distribution of profits, but did not vest any proprietary interest in the land in the caveator at the time the agreement was entered into. Consequently, the Hearing Officer concluded that the caveat was improperly lodged.

The Hearing Officer ordered that the caveat lodged by MCV Enviroworks Pty Ltd be removed from the title to the land.

Orders