Glendon Hardware Pty. Limited

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 1323621 (Classes 37 and 42) - DOCTOR LOCKSMITH AND DEVICE - in the name of Glendon Hardware Pty. Limited and Proposal to revoke acceptance of same.

Delegate:

John Spence

Representation:

Applicant : Mr. Christopher Lawrence of Counsel, instructed by Mr. Dan Siveguru, Solicitor, of DTA Lawyers

Decision:

2010 ATMO 105

Section 38 – proposed revocation of acceptance – grounds of rejection pursuant to Section 44 apply to application – reasonable in all the circumstances to revoke acceptance.

Background
1. These proceedings involve the proposed revocation of acceptance in respect of the following trade mark application, namely:

This application was filed by Glendon Hardware Pty. Limited (“the Applicant”) on 6 October 2009 in Classes 37 and 42 of the International (Nice) Classification of Goods and Services and in respect of the following items, namely:
Class 37:
Locksmithing services being the installation, repair and maintenance of locks and locking systems.

Class 42:

Locksmithing services being the design of locks and locking systems.

2.     In the course of examination the sole objection which was raised required clarification as to the name of the owner as it appeared in the application document. Upon that issue being satisfied, this application was accepted for possible registration on 23 October 2009 and advertised as such in the Official Journal of Trade Marks dated 4 February 2010.
3.     On 23 March 2010, Mr. Nathan do Rozario on behalf of the business known as “DR LOCK LOCKSMITH” sent an e-mail to IP Australia raising objections to the acceptance of the present application No. 1323621 and seeking a review of the situation. In particular Mr. do Rozario drew attention to the prior existing registration No. 1160453 “Dr Lock” (word mark) in Classes 37 and 45 which is held in his name and which has the earlier filing date of 11 February 2007. In addition Mr. do Rozario explained that his business is generally referred to as “Dr Lock Locksmith” and he sought to provide instances where confusion had allegedly occurred.
4. On 30 March 2010 IP Australia forwarded correspondence to the Applicant indicating that it intended to revoke the acceptance of application No. 1323621 pursuant to the provisions of Section 38 of the Trade Marks Act 1995 (“the Act”). Revocation was proposed because the prior conflicting registrations Nos. 669422 “DOCTOR LOCK” and 1160453 “Dr Lock” in respect of similar services had not been identified by the examiner during the course of initial examination, and therefore grounds for rejecting the application existed by virtue of Section 44 of the Act.
5. Pursuant to the provisions of Section 203 of the Act, the Applicant exercised its right to be heard in relation to the revocation proposal. The matter was duly set down for a hearing which took place in Canberra on 8 July 2010 before me as the delegate of the Registrar. On that occasion, the Applicant was represented by Mr. Christopher Lawrence of Counsel instructed by Mr. Dan Siveguru, Solicitor (on behalf of DTA Lawyers) both of whom appeared by telephone.
6.     Prior to the taking place of the hearing, Mr. do Rozario (represented by Complete IP Pty. Limited) had filed a notice of opposition on 28 May 2010 in respect of the present application No. 1323621. As at the date of the issuing of this decision, no evidence in support has been filed and served in relation to the opposition proceedings and appropriate extensions of time within which to do so have been obtained by the Opponent. The hearing, since it related to the proposed revocation, took place on an ex parte basis and the Opponent did not have standing to appear on that occasion.
Submissions
7.     The Applicant principally sought to rely upon the points of difference between the respective marks and their resultant lack of similarity. It was further argued that there is a line of authority (as, for example, in the decision of Miss World (Jersey) Limited & Anor v. Mrs of the World Pageants,Inc. (1988) AIPC 90-460) relating to the difficulty of claiming a monopoly in respect of the use of ordinary, common or descriptive words such as “Doctor” or “Lock”. Mr. Lawrence contended that there is no proprietary interest or exclusive right in respect of such words which are commonly used in trade. In his view, the fact that a multiplicity of persons adopt and use such words does not serve to make each instance of such use deceptively similar. He submitted that the present application is not sufficiently similar as to justify a refusal of acceptance or the revocation of acceptance of same, and that the issue of the prior conflicting entries that have now been raised can be disposed of in the course of the Opposition proceedings which are on foot. Those proceedings, he maintained, do not of themselves afford sufficient reason to justify the Trade Marks Office in revoking the approval which has previously been given.
The Law
8.     For present purposes, the relevant provisions of the Trade Marks Act 1995 (“the Act”) are Sections 31, 33, 34, 38 and 44. Section 31 provides:
31       The Registrar must, in accordance with the regulations, examine and report on:
(a) whether the application has been made in accordance with this Act; and

(b) whether there are grounds under this Act for rejecting it.

Note: For this Act see section 6.

Section 33 relevantly states:
33.     (1) The Registrar must, after the examination, accept the application unless he or she is satisfied that:
(a) the application has not been made in accordance with this Act; or    (b) there are grounds under this Act for rejecting it.
Note:          For this Act see section 6.
(2) The Registrar may accept the application subject to conditions or limitations.
Note:          For limitations see section 6.
(3) If the Registrar is satisfied that:
(a) the application has not been made in accordance with this Act; or
(b) there are grounds under this Act for rejecting it;
the Registrar must reject the application.
Note:          For this Act see section 6.
(4) The Registrar may not reject an application without giving the applicant an opportunity of being heard.
Note:          For applicant see section 6.
Section 34 indicates:
34. The Registrar must:
(a) notify the applicant in writing of his or her decision under section 33; and
(b) advertise the decision in the Official Journal .
Note: For applicant see section 6.
Section 38 is worded as follows:
38 (1) Before a trade mark is registered, the Registrar may revoke the acceptance of the application for registration of the trade mark if he or she is satisfied that:
(a) the application should not have been accepted, taking account of all the circumstances that existed when the application was accepted (whether or not the Registrar knew then of their existence); and
(b) it is reasonable to revoke the acceptance, taking account of all the circumstances.
(2) If the Registrar revokes the acceptance:
(a) the application is taken to have never been accepted; and (b) the Registrar must examine, and report on, the application as necessary under section 31; and
(c) sections 33 and 34 again apply in relation to the application.
Section 44 relevantly provides as follows:
44       (2) Subject to subsections (3) and (4), an application for the registration of a trade mark ( applicant's trade mark ) in respect of services ( applicant's services ) must be rejected if:
(a) it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
Note 1:       For deceptively similar see section 10.
Note 2:       For similar services see subsection 14(2).
Note 3:       For priority date see section 12.
Note 4:       The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
In relation to the expression “deceptively similar”, Section 10 provides the following definition:
10. For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
Section 38 has antecedents. In particular the present wording of this Section was substituted by virtue of the Intellectual Property Laws Amendment Act 2006 (No. 106 of 2006), Schedule 1 (1) (“the Amendment Act”) effective as from 23 March 2007. Prior to the adoption of the Amendment Act, Section 38 had read as follows:
38 Revocation of acceptance
(1)         If, before a trade mark is registered, the Registrar is satisfied:
(a)         that the application for registration of the trade mark was accepted because of an error or omission in the course of the examination; or
(b)         that, in the special circumstances of the case, the trade mark should not be registered, or should be registered subject to conditions or limitations, or to additional or different conditions or limitations;
the Registrar may revoke the acceptance of the application.
Note: For limitations see section 6.
(2)         If the Registrar revokes the acceptance:
(a)         the application is taken to have never been accepted; and
(b)         the Registrar must examine, and report on, the application as necessary under section 31; and
(c)          sections 33 and 34 again apply in relation to the application.
On a comparative analysis, it can be seen that in its present form the wording of Section 38 is considerably broader in scope and that it confers a wider discretion in favour of the Registrar than existed prior to 23 March 2007.[1]In particular, in the form of wording in which it is now expressed, Section 38 makes it clear that the Registrar is able to take account of any circumstance existing at the time when an application was examined which should have prevented its acceptance. Previously, the ambit of the Registrar’s discretion in relation to Section 38 was construed in relatively narrow terms or compass and that discretion focused on those instances involving “error or omission” or “special circumstances”. That approach, however, is no longer appropriate.[2] There is nothing in the amended legislation that limits the Registrar in terms of what she may consider.
Section 38 (or its equivalent) has been the subject of consideration in a growing body of decisions. In this regard, the early cases pointed to the paucity of such decisions as then existed.[3] However, in more recent times, such cases have arisen with increasing frequency. Presumably that trend is consistent with the growing number of trade mark applications which are now lodged each year and which require processing and examination, together with a propensity for search results to be larger and more complex in scope. From the existing cases,[4] there can be seen to emerge a framework or a basis for the interpretation and application of Section 38 the relevant general principles of which are summarised as follows:
·Proceedings under Section 38 must be carefully considered and the revocation of acceptance should not be proposed lightly since the examiner (as the Registrar’s delegate) has already exercised his or her delegation to accept the mark. Therefore, it follows that the facts of the matter must be of sufficient weight as to require that the existing decision should be overturned.
·There are two arms or limbs of Section 38 in its amended and current form each of which is required to be satisfied, namely:
(i) whether the application in question should have been accepted taking into account all the circumstances which existed when the subject application was examined;
and
(ii) whether the Registrar is satisfied that it is reasonable to exercise the discretion to revoke acceptance taking account of all the circumstances.[5]
·Those circumstances which need to be taken into account, and as identified in the Trade Marks Office Manual of Practice and Procedure (see Part 38, paragraph 2.3) and in the decided cases, include such factors as:
§inadequate indexing (notably the fact that an application is accepted because a citation was missed due to an indexing error;
§information not available in the Trade Marks Office resources at the time of acceptance;
§the level of inconvenience and expense likely to be incurred by an applicant;
§any other prejudice which an applicant may face as the result of revocation;
§the status of any opposition proceedings which may have already been commenced;
§the fact that appropriate research was not carried out, or an inappropriate search strategy was used;
§the failure of methodical and thorough research to provide the relevant information (for example, when that information was not to be found in the available resources of the Trade Marks Office);
§the need to ensure that the Register is maintained in a form that is as consistent and accurate as possible;
and
§the public interest.
These, then, are the general principles to which I have given due regard in considering and deciding this matter.
Discussion
Section 38 specifies that all the surrounding circumstances must be taken into account. In this instance, one of the relevant circumstances which is important is the adequacy or otherwise of the searches of the Register which the examiner conducted at the time. In this regard, the usual practice of examiners and the search procedures which they adopt have received extensive consideration in earlier decisions and I do not need to restate those procedures.[6] Suffice it to say that at a basic level the approach which one would usually expect to be adopted would be for the examiner to conduct a search in respect of each of the separate components “DOCTOR”, “LOCK” and “SMITH”, perhaps with appropriate combinations designed to reduce the number of “hits” which the examiner needed to consider.
I have reviewed the examination file in respect of the present application No. 1323621 and I have considered the search strategy which was adopted by the examiner in this instance. It is clear that the strategy used and the Register entries considered would not have located the two earlier filed registrations which have subsequently been identified as being in possible conflict with the present application. In this instance the search strategy was not adequate and significant information of relevance was overlooked thereby leading to the failure on the part of the examiner to identify a ground for rejecting the application. It would appear that the examiner did not assess the registrability of application 1323621 having regard to the two conflicting entries Nos. 669422 and 1160453. I consider that those entries should at least have received the examiner’s consideration. As a result, there has arguably occurred an error, mistake or omission on the part of the examiner and because the examiner was in ignorance of the facts or the true situation. The essential issue is as to whether that error, mistake or omission has made a material difference to the outcome such that the present situation where acceptance has been permitted cannot be allowed to stand.
Mr. Lawrence on behalf of the Applicant has argued strenuously that neither of the two conflicting entries Nos. 669422 and 1160453 which have been identified in the official letter dated 30 March 2010 could be said to be “deceptively similar” to the present application as earlier indicated. The main thrust of his submissions was that the Applicant’s trade mark, being a composite mark rendered in a particular form which combines ordinary, descriptive and common words with a device, symbol or logo, could not be regarded as being “deceptively similar” or even “similar” to the entries which are now raised and that as a result those entries could not be said to give rise for concern. Indeed, on Mr. Lawrence’s argument, the differences between the respective marks are so apparent that even if the examiner had been aware of those entries he would still have allowed acceptance. Mr. Lawrence expressed the view that the Opposition proceedings which are on foot are unlikely to succeed for the same reason. According to the Applicant, the conflicting entries which have now been raised are “distinctly different” from the present application which is not deceptively similar to those entries.
The Applicant, then, has submitted that the respective marks are not similar. In this regard, I accept that there are differences both of wording and of appearance between the respective marks and for that reason I consider that in this instance the requirement of “substantially identical” is not likely to be met. However I am satisfied that the present application is deceptively similar to the prior registrations Nos. 669422 and 1160453 and that those two registrations should have been considered at examination.
The relevant test which is applied in determining whether trade marks are “deceptively similar” has been variously stated but it is usual to rely upon the words of Justices Dixon and McTiernan in Australian Woollen Mills Limited v. F.S. Walton and Company Limited (1937) 58 CLR 641 at 658:
In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight.
These principles, which have been adopted in subsequent decisions (notably in Southern Cross Refrigerating Company v. Toowoomba Foundry Pty. Limited (1954) 91 CLR 592 at 594-595 and in Shell Company (Australia) Limited v. Esso Standard Oil (Australia) Limited (1961) 109 CLR 407 at 415) have not been challenged. More recently, the relevant principles have been restated by Justice French in Registrar of Trade Marks v. Woolworths Limited (1999) 45 IPR 411 at 428. Some additional assistance is afforded by the High Court in the Shell v. Esso case referred to above where it is said (at 416):
[The] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.
In addition, the test is said to be one not of mere possibility of confusion but of a real tangible danger that a number of persons will be caused to wonder whether the relevant goods or services come from the same source.7

In relation to the issue of deceptive or confusing similarity generally, reference is made to the observation of Justice Mason in Berlei Hestia Industries Limited v. Bali Company Inc. (19730 129 CLR 353 at 362, namely:
. . . The question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real risk of confusion.
Section 44(2) requires that the Registrar must reject an application for registration in respect of services if it is substantially identical with or deceptively similar to a trade mark registered by another person in respect of similar services. In the present instance, there can be little doubt that the services of Nos. 669422 and 1160453 (relating to “locksmith services” and “the provision and installation of security services” respectively) are sufficiently similar to the item “locksmithing services being the installation, repair, maintenance and design of locks” as claimed by the Applicant as to satisfy the requirement of the Section in this regard.

Findings

In considering those factors which have earlier ben referred to, and in applying the provisions of Section 38, the two limbs (as earlier identified in paragraph 16 above) need to be separately addressed. The first limb, as provided by Section 38(1)(a), is whether I am satisfied that the present application should not have been accepted taking account of all the circumstances that existed as at the time when the application was accepted and whether those circumstances should have prevented its acceptance. I am so satisfied. I find that the ground for rejection pursuant to Section 44 is applicable to the present application and in the terms as set out in the official letter dated 30 March 2010 which provided notification of the proposal to revoke acceptance.
Turning to the second limb, the wording of Section 38(1)(b) requires me to be satisfied that, taking account of all the circumstances, it is now reasonable to revoke acceptance of the application. Even if a ground has been made out under Section 38(1) (a), the wording of Section 38(1) (b) would still serve to prevent me as the Registrar’s delegate from proceeding to revoke acceptance unless it were reasonable to do so, that is, unless I were satisfied as to this second limb. Some factors or circumstances which I might take into consideration before exercising this discretion include the good faith of the Applicant, the balance of convenience, any prejudice which the Applicant might be said to face as the result of revocation (including the inconvenience and expense which the Applicant might incur), whether or not the application was being opposed and the status of such Opposition proceedings, and the public interest. In the present instance the acceptance will stand, despite the existence of a valid ground, unless that discretion is exercised against the Applicant.
I am satisfied that, taking account of all the relevant circumstances as I presently understand them, revocation of acceptance in respect of the present application is reasonable and that the second limb of Section 38(1) is met in this instance. Accordingly, I intend to exercise the Registrar’s discretion against the Applicant. In so doing, I am aware that the decision to revoke acceptance involves potentially more than the Applicant and the Opponent in this matter.8 As the initial decision-making process appears to have been flawed in allowing acceptance, I consider that the matter should be returned to the examination section for the conduct of a fresh review. That review should involve a full consideration of all relevant formalities and possible grounds for rejection and it may potentially raise additional citations, perhaps belonging to other parties. In my view, it is in the best interests of the Applicant, as well as the Opponent, that the present application should be properly tested by being subjected to the appropriate examination processes which it has hitherto avoided.9 The Applicant is entitled to know that a full and thorough examination has been conducted in respect of its application, and the owners of other trade marks incorporating the words “Doctor”, “Lock” and “Locksmith” or their phonetic equivalents are entitled to be assured that their prior rights have been taken into consideration. After the completion of that process, and should such a step ultimately be necessary, the application may proceed to the adversarial forum of Opposition proceedings and to the escalation of argument, evidence and expense associated with such proceedings.
Understandably, the Applicant is not likely to view revocation of acceptance as an ideal option. However revocation as now directed need not be fatal to the application. Those arguments which have eloquently been put to me by Counsel are available for submission to the examiner. The evidence of use and other circumstances provisions of Sections 41(5), 44(3) and 44(4) of the Act will be available to the Applicant, and the Applicant will be allowed a further fifteen-month period within which to overcome any objections and to put the application into proper order. While there can always be said to be a degree of prejudice caused to any applicant upon having acceptance of its trade mark application revoked, on this occasion the extent of prejudice which is involved is limited given that what is now required is the subjecting of this application to that very sort of assessment and consideration which it should reasonably and properly have received in the first instance.
Any element of unfairness, disadvantage or detriment which the Applicant may experience as the result of my findings cannot outweigh the fact that circumstances of a relevant nature exist in this instance and that revocation is appropriate if the existing exercise of the acceptance delegation and the effect of same, resulting in a poorly-based registration, is to be rectified and overcome. For these reasons, in the present instance the balance of convenience must in my view favour the revocation of acceptance. The Applicant is no worse off as the result of this course being taken than it would have been had proper examination earlier taken place.
While it is the situation that Opposition proceedings have been commenced, those proceedings are only at an early stage and in particular no evidence has been filed or served to date. In this instance, where revocation is correct and reasonable, I see it as the preferred course of action. Even the objection of delay is met by the fact that the priority date of the application will be maintained while the fresh examination process takes place.
In addition, there is the issue of the public interest to be borne in mind. In this regard, quite apart from the prospect that deception or confusion might occur in the market-place, the public interest is not served by maintaining a defective acceptance which would result in the Register containing readily apparent anomalies, discrepancies or errors. Rather, the interests of all parties and the public are best served by returning the present application to examination and by allowing to the Applicant the normal and legitimate opportunity to argue its case and to overcome any grounds for rejection that may properly be raised.10 There is a need to ensure that the Register is as consistent and accurate as possible. It is an important aspect of the public interest, and therefore also a relevant circumstance in this matter, that wherever possible the proper examination processes of the Trade Marks Office are consistently maintained. Revocation of acceptance on this occasion will serve that interest.11 In this instance, the public interest lies in the proper consideration of Section 44 in relation to the present application.
The Registrar is a public official charged with safeguarding the public interest.12 Indeed, I am mindful of the observation of Justice Wilcox in Ocean Spray Cranberries Inc. v. Registrar of Trade Marks (2000) AIPC 91-539 at paragraph 35, namely:
I add only that, although consistency in public administration is desirable, a public officer is not justified in persisting with error. Marks may, in the past, have been wrongly registered. It would be an unwarranted distraction from the task at hand to investigate, in a particular case, whether they were or not.
The present situation is well-encapsulated in the words of Senior Examiner Bennett in Re Application by Sartek Pty. Limited (1991) 22 IPR 317 at 323, namely:
However, an error in acceptance having been made, the primary concern of the public interest would favour that error being corrected by the office and the application receiving further examination to ensure that the conditions necessary for acceptance are fulfilled.
Decision
Given the circumstances surrounding the examination and acceptance of the present application, I consider that revocation of acceptance is entirely reasonable. Accordingly, I revoke the acceptance of the present application No. 1323621 Re-examination of the application will commence after one month from the dare of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that the re-examination shall not occur until the appeal has been discontinued or, in the event that a decision of the Courts should issue, that the application be subject to such orders or directions as are made.
Costs
At the conclusion of the hearing, Mr. Lawrence sought a direction for costs in favour of the Applicant. He submitted that given that the Applicant was required to request and attend the hearing because the Trade Marks Office had failed to consider or was not aware of two prior conflicting entries on the Register, the Applicant should be entitled to claim reimbursement. If revocation were to be refused, so it was argued, then the Applicant has had to meet the cost of the hearing, while if revocation does occur then the Applicant is faced with incurring the costs thrown away in relation to the lodging of the original application.
In responding to this submission, I would indicate that there is no provision under the Act or the Regulations for the Registrar to award costs against herself, and I find it difficult to envisage a situation where such a direction might be made pursuant to the terms of Section 202(d). In the present instance, these proceedings were ex parte and no other party was involved so that there is no-one against whom the Applicant can obtain an award of costs. Moreover the Applicant did not need to request that a hearing take place and that course was at the election and the choosing of the Applicant. In any event, the Applicant has been unsuccessful on this occasion and the request on its part to have revocation of acceptance not take place has been rejected. For these reasons, the issue of costs is neither relevant nor appropriate in this instance and accordingly I make no direction or award in relation to same.
John Spence
Hearing Officer
Trade Marks Hearings
12 October 2010

[1] Under the former Trade Marks Act 1955 there was a corresponding Section 44(3). For a comparison of the respective Section 44(3) of the 1955 Act and Section 38 of the 1995 Act, see the decision of Hearing Officer Homann in Re Haig Street Wholesalers Pty. Limited (1998) 42 IPR 463 at 465.
[2] See, for example, the decisions of Hearing Officer Dunn in Re Aceto Balsamico Del Duca di Adriano Grosoli Srl [2009] ATMO 99 at paragraphs 5 and 6 and of Hearing Officer Windsor in Re Insulflex Insulation Pty. Limited [2010] ATMO 14 at paragraph 16.
[3] See, for example, the decisions of Re Haig Street Wholesalers (1998) 42 IPR 463 at 466 and Re Application by Remington Products, Inc. (1990).18 IPR 251 at 253.
[4] Those decisions in which Section 38 (or its equivalent) are considered, arranged in chronological order, include Re Application by Jacuzzi Inc. (1990) 17 IPR 414, Re Application by Remington Products Inc. (1990) 18 IPR 251 (the “Smooth and Silky” case), Re Application by Shop-Vac Corporation (19900 18 IPR 523, Re Application by the Dandenong Ranges Bakery (1990) 19 IPR 65, Re Application by Sartek Pty. Limited (1991) 22 IPR 317, Re Application by Clive Edward Butler Rice (1993) 26 IPR 591, Re Application by Pacific Access Pty. Limited (1993) 27 IPR 417, Re Application by Kabushiki Kaisha Nikken Sohonsa (trading as Nikken Sohonsa Corporation) (1994) 28 IPR 599, Re Application by Penneys Pty. Limited (1995) 31 IPR 652, Re Haig Street Wholesalers Pty. Limited (1998) 42 IPR 463, Re Honan Investments Pty. Limited [1998] ATMO 39, Re Application by Arista Enterprises Inc. (2000) 49 IPR 99, Re Command Staffing, LLC [2005] ATMO 34, Re Application by Channel Four Television Corporation (2007) 72 IPR 163, Re Aceto Balsamico Del Duca di Adriano Grosoli Srl [2008] ATMO 2, Re J.H. Fenner and Company Limited [2009] ATMO 7, Re Sealite Limited [2009] ATMO 99, Re Jack Grieve [2010] ATMO 12, Re Insulflex Insulation Pty. Limited’s Application [2010] ATMO 14. and Re Application by Export Corporation (Australia) Pty. Limited [2010] ATMO 52.
[5] See, for example, Re J.H. Fenner and Company Limited [2009] ATMO 7 at paragraphs 10 and 11, Re Sealite Limited [2009] ATMO 99 at paragraphs 7 and 8, and Re Export Corporation (Australia) Pty. Limited [2010] ATMO 52 at paragraphs 11 and 12.
[6] See, for example, Re Application by Sartek Pty. Limited (1991) 22 IPR 317 at 323, Re Application by Channel Four Television Corporation (2007) 72 IPR 163 at paragraph 13, Re Aceto Balsamico Del Duca di Adriano Grosoli Srl [2008] ATMO 2 at paragraphs 15-17 and Re Sealite Limited [2009] ATMO 99 at paragraphs 12-14.
7 See Southern Cross Refrigerating Company v. Toowoomba Foundry Pty. Limited (1954) 91 CLR 592.
8 See Re Aceto Balsamico Del Duca di Adriano Grosoli Srl [2008] ATMO 2 at paragraph 35.
9 See Re Export Corporation (Australia) Pty. Limited [2010] ATMO 52 at paragraph 13.
10 See Aceto Balsamico Del Duca di Adriano Grosoli Srl [2008] ATMO 2 at paragraph 36.
11 See Export Corporation (Australia) Pty. Limited [2010] ATMO 52 at paragraph 14.
12 See Re Application by Pacific Access Pty. Limited (1993) 27 IPR 417 at 420.

[2010] ATMO 105

19 October 2010