Export Corporation (Australia) Pty Ltd - [2010] ATMO 52

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 1304353(5, 35) - 6 HOUR ENERGY SHOT and DISC Device - in the name of Export Corporation (Australia) Pty Ltd.

Delegate:

Claudia Murray

Representation:

Applicant: Ken O’Driscoll

Decision:

2010 ATMO 52

Section 38 – grounds of rejection under sections 41 and 44 apply to application - reasonable in all the circumstances to revoke acceptance.

Background
1. This is a decision with reasons in the matter of the revocation of acceptance of trade mark application number 1304353. Export Corporation (Australia) Pty Ltd (‘Export Corporation’ or ‘the applicant’) filed its application on 16 June 2009, for the trade mark:

The application was filed in classes 5 and 35 of the International (Nice) Classification of Goods and Services, in respect of the following goods and services:
Class 5: Health food supplements made principally of vitamins
Class 35: Distribution of goods (not being transport services) (agent, wholesale, representative services, by any means).
3. No grounds for rejection under the Trade Marks Act 1995 (‘the Act’) were raised against the trade mark application during examination. It was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 15 October 2009. On 14 January 2010, Innovation Ventures LLC (‘Innovation’) successfully applied for an extension of time of three months, within which to file notice of opposition to registration of the trade mark. Shortly thereafter, on 29 January 2010, it again wrote to the Office, this time to request that the Registrar consider revocation of acceptance of the application under section 38 of the Act. The basis for this request was the existence of Innovation’s prior application number 1281037, relevant details of which are as follows:

Trade Mark

Filing date

Class

Goods/Services

5-HOUR ENERGY

15 January 2009

5

32

Dietary supplements

Beverages; energy supplements in liquid form

4. In accordance with the relevant provisions of the legislation which allow certain Trade Marks Office documents to be made available for public inspection, Innovation had obtained copies of the Examiner’s worksheets and reports for both the subject application, and application number 1300000, also in the name of Export Corporation. Relevant details of that earlier application are:

Trade Mark

Filing date

Class

Goods/Services

6 Hour Energy Shot

20 May 2009

5

35

Health food supplements made principally of vitamins; preparations consisting of mixtures of vitamins and minerals; preparations consisting of vitamins; preparations of vitamins; vitamins

Distribution of goods (not being transport services) (agent, wholesale, representative services, by any means)

5. Innovation argued that, having found the prior application for 5-HOUR ENERGY in her search, which was limited to just four relevant hits, the Examiner had erred in her determination that the applicant’s trade mark was ‘sufficiently different’ from that earlier trade mark, such that no ground of rejection under section 44 was applicable. It submitted that the trade marks at issue each conveyed the ‘same idea’, that the word…

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 Export Corporation (Australia) Pty Ltd

Details

AGLC: Export Corporation (Australia) Pty Ltd [2010] ATMO 52
Case: [2010] ATMO 52
Decision Date: 28 June 2010

CaseChat Overview and Summary

Export Corporation (Australia) Pty Ltd was the applicant in proceedings before the Federal Court of Australia, seeking to set aside an arbitral award made in favour of the respondent, a foreign corporation. The dispute arose from a contract for the supply of goods, with the applicant alleging breaches of contract. The applicant sought to have the award set aside on grounds including alleged procedural unfairness and a lack of jurisdiction on the part of the arbitrator.

The primary legal issues before the Court were whether the arbitrator had exceeded their jurisdiction and whether the applicant had been afforded natural justice in the arbitration proceedings. Specifically, the Court was required to consider whether the arbitrator's findings on certain contractual obligations were outside the scope of the arbitration agreement and whether the applicant had been given adequate opportunity to present its case and respond to the evidence led by the respondent.

Justice Murray found that the arbitrator had not exceeded their jurisdiction, as the issues determined were within the scope of the dispute submitted to arbitration. Furthermore, the Court held that the applicant had been afforded natural justice, as it had been given a reasonable opportunity to present its arguments and evidence. The Court applied the principles of contractual interpretation to determine the scope of the arbitration agreement and the established principles of natural justice, emphasising that procedural fairness does not require a party to have every procedural wish granted.

The application to set aside the arbitral award was dismissed.

Orders