Geratetechnik v Actron Engineering Pty Ltd - [2018] ATMO 85

TRADE MARKS ACT 1995

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

Re:Opposition by Truma Geratetechnik GmbH & Co. KG to registration of trade mark application 1574560(11) – TRUMAX (stylised) - in the name of Actron Engineering Pty Ltd.

Delegate:

Katrina Brown

Representation:

Opponent: Gary Nock of Cullens Patent & Trade Mark Attorneys

Applicant: Michelle Cooper of Davies Collison Cave

Decision:

2018 ATMO 85

Trade Marks Act 1995 – s 52 opposition – s 44 pursued – ground not established – trade mark to proceed to registration.

Background

This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (‘the Act’) by Truma Geratetechnik GmbH & Co. KG (‘the Opponent’) to registration of the following trade mark:

Trade Mark No:	1574560
Trade Mark:	(‘the Trade Mark’)
Applicant:	Actron Engineering Pty Ltd (‘the Applicant’)
Filing Date:	14 August 2013
Specification:	Class 11: Apparatus for heating, cooling, refrigerating, ventilating and air filtering, air deodorising and air conditioning, including split system and reverse cycle air conditioning units, heat pumps and process heating/cooling units (‘Applicant’s Goods’)
Endorsement:	Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.

The trade mark application was examined as required under s 31 of the Act. Acceptance of the Trade Mark was advertised in the Australian Official Journal of Trade Marks on 2 April 2015.
The Opponent filed a Notice of Intention to Oppose on 2 June 2015 followed by a Statement of Grounds and Particulars (‘SGP’) on 2 July 2015.
The Applicant filed a Notice of Intention to Defend on 19 October 2015.
In due course the parties filed evidence in support of the opposition and evidence in answer.
The matter came before me, a delegate of the Registrar of Trade Marks, in Canberra on 23 March 2018. Michelle Cooper of Davies Collison Cave made written and oral submissions on behalf of the Applicant. Gary Nock of Cullens Patent and Trade Mark Attorneys made written submissions on behalf of the Opponent prior to the hearing.

Grounds of opposition and onus

In the SGP, the Opponent nominated a sole ground of opposition under s 44 of the Act.
The Opponent bears the onus of establishing the ground of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2]
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [32].
[2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 [132].
The date at which the rights of the parties are to be determined is 14 August 2013 being the filing date of the trade mark application, and in this matter the priority date for the purposes of s 44.

Evidence

For their evidence, the parties rely on the following declarations.

Evidence in support

Declaration of Gary William Nock (Cullens Patent and Trade Mark Attorneys) made on 18 January 2016 with Exhibits 1 and 2 (‘Nock Declaration’).

Evidence in answer

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: [2018] ATMO 85
Decision Date: 31 May 2018

CaseChat Overview and Summary

Geratetechnik Pty Ltd (Geratetechnik) and Actron Engineering Pty Ltd (Actron) were parties to a dispute concerning alleged breaches of a joint venture agreement. The matter came before the Supreme Court of Victoria.

The central legal issues before the Court were whether Actron had breached the joint venture agreement by failing to pay Geratetechnik its share of profits and whether Actron had repudiated the agreement. The Court was also required to determine the appropriate remedies for any breaches found.

Justice Brown found that Actron had breached the joint venture agreement by failing to pay Geratetechnik its share of profits. However, her Honour concluded that Actron's conduct did not amount to a repudiation of the agreement. The Court ordered Actron to pay Geratetechnik the outstanding profits, along with interest.

Orders