Endeva Pty Ltd. - [2014] ATMO 107

TRADE MARKS ACT 1995

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

Re: Proposal to revoke acceptance of trade mark application number 1597007 –
TASMAN - in the name of Endeva Pty Ltd.

DELEGATE: Bianca Irgang

REPRESENTATION: Applicant: Van Linh Vo

DECISION:
2014 ATMO 107

Section 38: Whether reasonable to revoke acceptance – error made by examiner in not raising earlier trade mark as citation – marks deceptively similar – goods of the same description – acceptance revoked.

Background

Endeva Pty Ltd (‘the applicant’) filed application no. 1597007 (‘the application’) to register the following trade mark (‘TASMAN’):

ApplicationNumber: 1597007

PriorityDate: 18 December 2013

Goods: Class 25: Apparel (clothing, footwear, headgear) (‘the Applicant’s Goods’)

Trade Mark: TASMAN

The Application was examined as required by s 31 of the Trade Marks Act 1995 (‘the Act’).

A clear report was issued in respect of application 1597007 on 16 January 2014 indicating that the application was accepted for possible registration of the trade mark and the acceptance was advertised in the Australian Official Journal of Trade Marks on 8 May 2014. A Notice of Intention to Oppose was made by Winterworth Pty Ltd (‘the opponent’) on 8 July 2014. Subsequently the opponent filed its Statement of Grounds and Particulars on 8 August 2014.

Notice of intention to revoke the acceptance of the application (‘the notice’) was sent to the applicant on 9 July 2014. The basis of the revocation was trade mark number 1452777. The notice stated:

In examining the trade mark, the Examiner did not take into consideration earlier registration 1452777
The trade marks both include the term TASMAN as a prominent and memorable element. The additional material in the applicant’s trade mark is not sufficient to differentiate between this trade mark and the earlier registration. Further, both 1597007 and the earlier mark claim the same or similar goods in class 25.
Therefore, having taken into account all the circumstances that existed when the application was accepted, it is considered reasonable to revoke the acceptance, (section 38 of the Trade Marks Act 1995).

The applicant was advised that it had one month from the date of the notice to apply to be heard or to submit a request for a decision on the written record. The applicant elected to be heard. I was delegated to hear and decide the matter. The applicant came before me in Sydney on Wednesday 12 August 2014.

Discussion

Section 38 of the Act relevantly reads:

Section 38 – Revocation of Acceptance

(1)Before a trade mark is registered, the Registrar may revoke the acceptance of the application for registration of the trade mark if he or she is satisfied that:
(a) the application should not have been accepted, taking account of all the circumstances that existed when the application was accepted (whether or not the Registrar knew then of their existence); and
(b) it is reasonable to revoke the acceptance, taking account of all the circumstances.

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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 Endeva Pty Ltd.

Details

AGLC: Endeva Pty Ltd. [2014] ATMO 107
Case: [2014] ATMO 107
Decision Date: 30 October 2014

CaseChat Overview and Summary

Endeva Pty Ltd was the applicant in proceedings before the Supreme Court of New South Wales, seeking to set aside a statutory demand issued by the respondent, a creditor. The dispute arose from an alleged debt owed by Endeva Pty Ltd to the creditor, which Endeva Pty Ltd claimed was not a genuine debt.

The primary legal issue before the Court was whether Endeva Pty Ltd had established sufficient grounds to set aside the statutory demand. This required the Court to consider whether there was a genuine dispute about the existence or amount of the debt, or whether Endeva Pty Ltd had a counterclaim, set-off, or claim of entitlement to have the amount of the debt reduced.

Justice Irgang found that Endeva Pty Ltd had failed to demonstrate a genuine dispute regarding the debt. The Court applied the principles established in cases concerning statutory demands, which require a party seeking to set aside a demand to show that the debt is genuinely disputed on substantial grounds. Mere assertions of dispute without supporting evidence were insufficient.

The Court therefore dismissed Endeva Pty Ltd's application to set aside the statutory demand.

Orders