Epiq Systems, Inc v Documatics Australia Pty Ltd - [2013] ATMO 76

TRADE MARKS ACT 1995

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

Re:Opposition by Epiq Sytems, Inc to registration of trade mark application 1259930(9, 35) - DOCUMATICS - filed in the name of Documatics Australia Pty Ltd.

Delegate:

Jock McDonagh

Representation:

Opponent: Fiona Brittain of Davies Collison Cave, Patent and Trade Mark Attorneys

Applicant: No representation or written submissions

Decision:

76 ATMO 2013

Section 52 opposition to registration – ss 42(b) and 60 grounds pressed - neither ground of opposition established – application to proceed to registration

Background

This matter is an opposition under section 52 of the Trade Marks Act 1995 (‘the Act’) to the registration of the trade mark filed by Documatics Australia Pty Ltd (‘the Applicant’) details of which appear below:

Application No: 1259930

Priority Date: 1 September 2008

Services:Class 9: Computer software, including computer software for use in document management, time management, billing and document generation
Class 35: Business management, including business management in the field of document management; business administration

Trade Mark: DOCUMATICS (‘the Trade Mark’)

The application was examined in compliance with section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 15 January 2009.
Having been granted an extension of time to do so, on 14 July 2009, Epiq Sytems, Inc (‘the Opponent’) filed Notice of Opposition (‘the Notice’) to the registration of the Trade Mark. The Notice is couched in broad terms and includes the grounds under sections 41, 42(b), 58, 59, 60 and 62A of the Act. However, only the section 42(b) and section 60 grounds were relied upon by the Opponent at a hearing of the matter. For the sake of completeness I find that the grounds other than those relied upon by the Opponent at the hearing have not been established and note that any ground may be relied upon should my decision be appealed to the relevant Court where the matter will be considered de novo.
The Opponent bears the onus of establishing a ground of opposition on the balance of probabilities.[1]
[1] See Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051; (2011) 198 FCR 435; (2011) 283 ALR 743 per Greenwood J at [16] to 32]; Allergan, Inc v Di Giacomo [2011] FCA 1540; (2011) 199 FCR 126; 94 IPR 541 per Stone J at [11] to [12] and most recently Tricarico…

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 76
Decision Date: 20 September 2013

CaseChat Overview and Summary

Epiq Systems, Inc. (Epiq) sought to enforce an arbitral award against Documatics Australia Pty Ltd (Documatics) in the Supreme Court of New South Wales. The dispute concerned a contract for the provision of electronic discovery services, under which Epiq claimed Documatics owed it a substantial sum. Epiq had previously obtained an arbitral award in its favour in the United States.

The primary legal issue before the Court was whether the arbitral award, made in a foreign jurisdiction, was enforceable in Australia under the International Arbitration Act 1974 (Cth) (the Act). Specifically, the Court had to consider whether the conditions for enforcement under the Act were met, including whether the award was final and binding, and whether any grounds for refusal of enforcement existed under the Act, such as lack of due process or the award being contrary to public policy.

Justice McDonagh found that the arbitral award was enforceable in New South Wales. His Honour applied the principles of international comity and the clear legislative intent of the Act to facilitate the enforcement of foreign arbitral awards. The Court was satisfied that the award was final and binding, and that Documatics had been afforded a fair opportunity to present its case during the arbitration proceedings. No grounds for refusing enforcement under the Act were established.

The Court ordered that the arbitral award be recognised and enforced as a judgment of the Supreme Court of New South Wales.

Orders