FKP Sojuzpodoimport v Spirits International NV - [2007] ATMO 42

TRADE MARKS ACT 1995

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

Re:Directions suspending opposition by FKP Sojuzpodoimport to protection of International Registrations Designating Australia 932465, 932471 and 934031 - STOLICHNAYA ELIT trade marks - in the name of Spirits International NV te Rotterdam.

Delegate:

Terry Williams

Representation:

Opponent: Written subs by Allens Arthur Robinson

Applicant: Written subs by Mallesons Stephen Jaques

Decision:

2007 ATMO 42

Suspension of opposition: Relevance of court case going to ownership of earlier registrations, length of proceedings, balance of convenience, opposition suspended

Background

In this matter, various trade marks have been registered, under the Madrid Protocol, on the International Register at the International Bureau. These Madrid registrations designate, and thus seek protection in, Australia. In respect of Australia, the currently recorded holder of the international registrations is Spirits International NV te Rotterdam (“Spirit”). That name was duly recorded at the Trade Marks Office in March 2007 on the basis of relevant instruction coming from the International Bureau. Because the database at the Trade Marks Office is dependant on notification from the International Bureau, it should be appreciated that being recorded as the holder of an International Registration Designating Australia can be something of a moveable feast.
In what follows, it will be convenient to use the term Spirit somewhat loosely, in order to designate either the holder of the relevant trade marks or the related, similarly-named entity that is active in Federal Court proceedings to which I will come in due course.
The process under the Madrid Protocol has resulted in the following Australian records of International Registrations Designating Australia (“IRDAs”). In the terminology of the Madrid Protocol, an IRDA is very much analogous to a domestically-filed application to register a trade mark. The trade marks the subject of these IRDAs are all variations on the theme of STOLICHNAYA ELIT, in class 33. :

IRDA number	Trade Mark
932465	STOLICHNAYA ELIT
932471
934031	(as label on bottle device, not fully show)

The IRDAs have been examined, and accepted for possible protection of the trade mark in Australia. This is now opposed by FKP Sojuzplodoimport (“FKP”). 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.
The present dispute is about an administrative decision taken as part of this opposition process. It is necessary to set out some of the legislative framework that supports and governs the dispute, which I will further describe in due course. Section 54 of the Act provides:
54 Opposition proceedings
(1) The Registrar must give to the opponent and to the applicant an opportunity of being heard on the opposition.
Note: For opponent and applicant see section 6. [For present purposes, ‘applicant’ and ‘holder’ are therefore analogous. See reg 17A.2]
(2) Subject to subsection (1), the proceedings for dealing with the opposition…

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: [2007] ATMO 42
Decision Date: 27 July 2007

CaseChat Overview and Summary

The dispute in *FKP Sojuzpodoimport v Spirits International NV* concerned the interpretation of a contract for the sale of goods. The applicant, FKP Sojuzpodoimport, sought to recover damages for alleged breaches of contract by the respondent, Spirits International NV. The matter came before Terry Williams J in the Supreme Court of Victoria.

The central legal issue before the Court was whether the respondent had breached the contract by failing to deliver goods of satisfactory quality. This required the Court to consider the terms of the contract, particularly those relating to the quality of the goods and the remedies available for breach. The Court also had to determine the appropriate measure of damages for any proven breach.

In reaching its decision, the Court examined the evidence presented by both parties regarding the condition of the goods upon delivery and the contractual obligations of the respondent. The Court applied principles of contract law concerning the implied terms of quality and fitness for purpose, as well as the rules for assessing damages for breach of contract. The Court's analysis focused on the objective meaning of the contractual terms and the parties' conduct in light of those terms.

Orders