FKP Sojuzplodoimport v Spirits International BV - [2010] ATMO 62

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS, WITH REASONS
Re:Directions suspending opposition by FKP Sojuzplodoimport to protection of International Registrations Designating Australia 932465, 932471 and 934031 and others - STOLICHNAYA ELIT and others- in the name of Spirits International BV.

Delegate: Terry Williams

Representation: Opponent: Angus Lang of counsel, instructed by Catherine Mooshi, solicitor, of Sagacious Legal
Applicant: Patrick Flynn of counsel, instructed by Mallesons Stephen Jaques

Decision: 2010 ATMO 62
Reg 5.16 suspension of opposition: relevance of court case going to ownership of earlier registrations, relevance of evidence therein, length and complexity of proceedings, balance of convenience, opposition proceedings to resume.
Background

Spirits International BV (“Spirit”) has registered various trade marks on the International Register at the International Bureau. These international registrations designate Australia as a country in which protection is sought under the Madrid Protocol, thus becoming “IRDAs”.
The relevant IRDAs have been examined, and accepted for possible protection of the trade marks in Australia. Protection has been opposed[1] by FKP Sojuzplodoimport (“FKP”). IRDAs 932465, 932471 and 934031 were opposed in 2006. All three trade marks incorporate the words STOLICHNAYA ELIT, with or without Cyrillic characters, and set out either in plain type or in script form:
[1] Opposition to protection is the Madrid analogue of opposition to registration under s 52 of the Trade Marks Act 1995 (“the Act”). Part 17A of the Act authorises reg 17A to make the necessary adaptations of the Act but these are, for present purposes, immaterial.
Since then, FKP has opposed protection (“the opposition proceedings” or “the oppositions”) of a number of other IRDAs of which Spirit is the holder. These are set out in Attachment 1 and are all opposed by FKP on the basis of matters that, as I will explain, mesh with court proceedings to which I will come in due course. Essentially, the IRDAs, in classes 32 or 33, all include a trade mark element arguably similar to the words STOLICHNAYA, STOLI or MOSKOVSKAYA.
The Registrar of Trade Marks is required to conduct oppositions within the broad framework provided by the regulations under the Trade Marks Act 1995 (“the Act”). Regs 5.7 and 5.8 allow an initial period of three months for the service and filing of evidence in support by an opponent. Thereafter, regs 5.9 and 5.10 allow for the service and filing of evidence in answer by the holder/applicant and reg 5.12 allows for the service and filing of evidence in reply by the opponent. The process of those evidence stages is itself subject to regulation 5.15, which governs how a party may apply for an extension of time for the service of evidence and how the Registrar must deal with that request.
In the related court proceedings to which I have referred (“the court proceedings”) FKP has, by way of a cross-claim made against Spirit in 2004, challenged the validity of a number of existing trade mark registrations (“the existing registrations”) which stand now in the name of Spirit. The…

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: [2010] ATMO 62
Decision Date: 15 July 2010

CaseChat Overview and Summary

FKP Sojuzplodoimport (FKP) sought a continuation of a suspension of opposition proceedings, while Spirits International BV (Spirit) opposed this request. The matter came before Terry Williams J.

The court was required to determine whether FKP had discharged its onus to demonstrate why the suspension of the opposition proceedings should continue. This involved considering the principles governing the suspension of such proceedings, particularly in light of relevant case law.

Justice Williams rejected FKP's characterisation of the proceedings and affirmed that the onus rested with FKP to justify the suspension. The court considered arguments from Spirit, referencing the principles outlined in *Cadbury*, which suggested that indefinite delays in opposition proceedings could amount to a refusal to hear them. The court noted that while suspensions might be appropriate in certain circumstances, such as where issues overlap significantly and it would be unfair to proceed without awaiting court resolutions, the specific facts of this case did not meet those criteria. The court also considered the Registrar's statutory duty to progress opposition proceedings expeditiously, while acknowledging the Registrar's discretion to suspend proceedings for proper reasons.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

To this, FKP was able to reply only that it needed more time to make submissions on why the status quo should continue. It appeared that FKP’s current lawyers, acting in the opposition matters since 2007, had yet to receive, from FKP’s former lawyers, the files relating to the oppositions. I therefore directed that the matter be listed for hearing in Sydney as soon as this could be arranged. At that hearing, FKP was represented by Angus Lang of counsel, instructed by Sagacious Legal. Spirit was represented by Patrick Flynn, also of counsel, instructed by Mallesons.Reasons for decision At the outset, I must agree with Mr Flynn that it is for FKP to show why a suspension should continue. I reject both Mr Lang’s characterization of the matter on which he appeared as “Spirit’s third attempt at opposing a suspension” and his suggestion that Spirit bears the onus in doing so. The onus lies with FKP. Both parties made submissions about Cadbury. For Spirit, Mr Flynn argued that there were two principles identified at [9] in Cadbury that would negate any possibility of a suspension.The first is that to delay opposition proceedings for an indeterminate period, a period that could stretch out to three, four or even more years, amounts to a refusal by the delegate to hear those proceedings. The second reason is that the delegate was asked (and appears to have been prepared) to give too much significance to findings of fact made by the Federal Court. As per [21] in Cadbury Mr Flynn conceded that Sometimes there will be circumstances in which it is appropriate to delay opposition proceedings and await a court’s resolution of disputed facts that may be relevant in opposition proceedings. It is not possible to say with any precision what those circumstances might be. They would include (a) the degree of similarity of the issues involved, (b) the significance of the issues to the opposition proceeding, (c) whether the Registrar has more evidence than the trial judge, (d) the likelihood of the judge’s findings being challenged, and (e) whether it may be unfair (ie a breach of the rules of natural justice) to rely on the judge’s findings or the evidence on which those findings were based. In particular cases other matters will be taken into account. However, he argued that [21] itself sits within the limits posed by Finkelstein J as constituting the “first error”. Mr Flynn argued that the judgment of Finkelstein J sets up something of a code governing suspensions. In his view, taking paras [12] and [13] together, the Registrar’s statutory duty is defined and his/her ability to suspend oppositions is sharply constrained. As, for example (and with due apologies for the liberty I have taken with the relevant paragraphs in the judgment):But subject to the requirements of the Act and the regulations (the effect of which is that the Registrar must take all necessary steps to get opposition proceedings ready for hearing as soon as practicable and thereafter hold the hearing) because the Registrar has control over the procedures of opposition proceedings he may presumably suspend or temporarily stay proceedings for proper reasons.

Ratio Decidendi

Legal Principle Established

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Delegate:	Terry Williams
Representation:	Opponent: Angus Lang of counsel, instructed by Catherine Mooshi, solicitor, of Sagacious Legal Applicant: Patrick Flynn of counsel, instructed by Mallesons Stephen Jaques
Decision:	2010 ATMO 62 Reg 5.16 suspension of opposition: relevance of court case going to ownership of earlier registrations, relevance of evidence therein, length and complexity of proceedings, balance of convenience, opposition proceedings to resume.