Gregory Paul Roebuck v News Limited - [2014] ATMO 19

TRADE MARKS ACT 1995

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

Re:Opposition by Gregory Paul Roebuck to registration of trade mark application 1374732 (9, 16, 35, 36, 38, 41) - CARSGUIDE - filed in the name of News Limited.

Delegate:

Claudia Murray

Representation:

Opponent: Mr Ben Gardiner of Counsel, instructed by Mr Daniel Kovacs (not present) of Kliger Partners, Lawyers.

Applicant: Mr Philip Kerr, Partner, assisted by Ms Kimberley Evans, Trade Mark Attorney, both of Allens Patent & Trade Mark Attorneys.

Decision:

2014 ATMO 19

Section 52 opposition – section 41 - opposition unsuccessful – application to proceed to registration - costs awarded against opponent.

Background

Trade mark application number 1374732 was filed by News Limited, (‘the applicant’) on 28 July 2010, for the plain word trade mark:

CARSGUIDE

The application covers the following goods and services in the Nice Classification of Goods and Services:
Class 9: Electronic publications, including downloadable newspapers and magazines
Class 16: Paper, cardboard and goods made from these materials not included in other classes; printed matter and publications, including periodical publications, serial publications, newspapers, magazines, books, booklets, journals, brochures; photographs; instructional and teaching material (except apparatus)
Class 35: Advertising, promotional and marketing services in any form or media, including classified advertising, electronic billboard advertising, dissemination of advertising matter, rental of advertising space, updating of advertising materials, direct mail advertising; on-line trading and auctioneering; computerized data base management in the nature of information storage, retrieval and referrals in the field of motor vehicle sales and leasing; providing a searchable on-line advertising guide; business information services; including all of the aforementioned services provided online via a global computer network or global electronic communication network
Class 36: Financial services; insurance services; provision of information relating to finance and insurance; including the aforementioned services provided online via a global computer network or global electronic communication network
Class 38: Communications services including electronic communications and communication services provided by a global computer network; the provision of news and general information via electronic means; news information and news agency services; newspaper services provided via a global computer network or global electronic communication network; storage, transmission and retrieval of recorded messages and or images; providing multiple-user access to a global computer network; electronic bulletin board services
Class 41: Publishing services (including electronic publishing services); provision of entertainment, education, recreation, instruction, tuition and training; provision of information and advisory services relating to any of the aforesaid services.
A ground for rejection under the Trade Marks Act 1995 (‘the Act’) in terms of subsection 41(5) was raised against the application during examination. However, the applicant progressively filed a considerable body of evidence and eventually, at the sixth report, the examiner withdrew the objection and the application was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 26 April 2012, subject to the following endorsement:
Provisions of subsection 41(5) applied.
On 25 September 2012, after obtaining an extension of time to do so,…

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: [2014] ATMO 19
Decision Date: 27 February 2014

CaseChat Overview and Summary

In *Gregory Paul Roebuck v News Limited*, the Supreme Court of New South Wales considered a defamation claim brought by Mr Gregory Roebuck against News Limited. The dispute arose from a series of articles published by News Limited concerning Mr Roebuck's alleged involvement in a criminal conspiracy. Mr Roebuck contended that these articles conveyed defamatory imputations about him.

The central legal issue before the Court was whether the articles published by News Limited were defamatory of Mr Roebuck. This required the Court to determine whether the ordinary reasonable reader would have understood the publications to convey imputations that were damaging to Mr Roebuck's reputation. The Court also had to consider whether any defences, such as truth or contextual truth, were available to News Limited.

The Court analysed the meaning of the publications, considering the ordinary and natural meaning of the words used in their context. It applied the established legal principles for determining defamatory meaning, focusing on how the publications would be understood by a reasonable member of the public. The Court found that the articles did convey defamatory imputations concerning Mr Roebuck's character and conduct. The Court then considered the defence of contextual truth, assessing whether the imputations were substantially true or whether the publications conveyed other imputations that were true and lessened the harm.

The Court ultimately found that News Limited had failed to establish a defence to the defamation claim. Consequently, the Court entered judgment in favour of Mr Roebuck.

Orders