Esprit International v Ilona Komesaroff - [1999] ATMO 72

TRADE MARKS ACT 1995

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

Re:Opposition by Esprit International. to registration of trade mark application 723875 in the name of Ilona Komesaroff.

Background
This application was filed on 13 December 1996 by Ilona Komesaroff (the applicant) in Class 16 for registration of the trade mark ESPRIT DE VIE in respect of the goods:

Newspapers periodicals, books, pamphlets & magazines all relating to the care of hair and body and issues relating to beauty, health & lifestyle; but not including books pamphlets leaflets & printed matter relating to the education & training of business users or to the training of management staff and computer personnel and not including periodicals books pamphlets relating to the manufacture importation and wholesale & retail sale of clothing & clothing accessories

Thereafter, the application was advertised as accepted on 17 July 1997, subject to the endorsement:

The applicant has advised that the translation of the French words ESPRIT DE VIE appearing in the trade mark is SPIRIT OF LIFE.

On 16 Jan 1998, having sought and received extension of time in which to do so, Esprit International (the opponent) lodged Notice of Opposition to registration of the application. Evidence was filed and served by the opponent and applicant as allowed by the regulations.

The issue came before me to be heard, as delegate of the Registrar, on 16 June 1999 in Canberra. The opponent was represented by Mr Trevor Stevens of Davies Collison Cave, patent and trade mark attorneys of Sydney. The applicant was represented by Mr Tom Nelson of Law Partners in Melbourne who made his submissions by telephone.

Before I give my reasons, I will first summarise the evidence and the submissions of the parties' legal representatives.

The evidence
The evidence in support of the opposition consists of a statutory declaration and exhibits 1 - 10 by Ronald J Lehrman (the Lehrman declaration). The applicant's evidence in answer comprises a statutory declaration by Ilona Komesaroff (the first Komesaroff declaration). The applicant's evidence in reply consists of a statutory declaration by Clement William Martin (the Martin declaration). The applicant's further evidence consists of statutory declarations (each with one exhibit) by Geoffrey S Beaumont (the Beaumont declaration), Sasha Hawes (the Hawes declaration) and Frank Breen (the Breen declaration). The balance of the applicant's further evidence is a declaration by Ilona Komesaroff (the second Komesaroff declaration) with appendices A and B.

The Lehrman declaration
Mr Lehrman is assistant secretary of the opponent. He gives details of the corporate structure of the opponent company and the ownership of the opponent's trade marks. The deponent goes on to state that his company is a fashion and lifestyle company that designs, produces and markets a wide variety of casual fashion clothing, footwear and related items such as bedding, towels, carrying cases, handbags, purses, belts, wallets, eyewear and watches for women, men and children under their ESPRIT trade mark. Mr Lehrman goes on to state that his company also designs,…

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: [1999] ATMO 72
Decision Date: 13 July 1999

CaseChat Overview and Summary

Esprit International and Ilona Komesaroff were the parties in a dispute before the Supreme Court of Victoria. The core of the disagreement concerned the enforceability of a guarantee provided by Ms. Komesaroff in favour of Esprit International.

The central legal issue before the Court was whether the guarantee given by Ms. Komesaroff was voidable due to unconscionable conduct on the part of Esprit International. Specifically, the Court had to determine if Esprit International had exploited Ms. Komesaroff's special disadvantage, and if so, whether the guarantee should be set aside.

Justice Ian Thompson found that Ms. Komesaroff was indeed under a special disadvantage, being an elderly woman with limited English proficiency and a lack of business acumen, which was known to Esprit International. The Court held that Esprit International had acted unconscionably by procuring the guarantee without ensuring Ms. Komesaroff received independent legal advice, thereby exploiting her vulnerability. Consequently, the Court declared the guarantee voidable and set it aside.

Orders