FEDERAL COURT OF AUSTRALIA
Hills Holdings Limited v Bitek Pty Ltd [2011] FCA 644
Citation: Hills Holdings Limited v Bitek Pty Ltd [2011] FCA 644 Parties: HILLS HOLDINGS LIMITED (FORMERLY HILLS INDUSTRIES LIMITED) ACN 007 573 417 v BITEK PTY LTD ACN 084 308 207 File number: SAD 53 of 2011 Judge: MANSFIELD J Date of judgment: 7 June 2011 Catchwords: INTELLECTUAL PROPERTY – whether leave to appeal pursuant to s 195 of the Trade Marks Act 1995 (Cth) should be granted – where applicant’s opposition to the registration of the respondent’s trade mark was dismissed before the Registrar for Trade Marks and single Judge of the Court – where leave to appeal in related proceedings has been consented to and concerns overlapping issues with this appeal – where discretion to grant leave is unfettered – leave to appeal granted Legislation: Trade Marks Act 1995 (Cth)
Cases cited: Hills Industries Limited v Bitek Pty Ltd [2011] FCA 94 considered
Décor Corporation Pty Ltd v Dart Industries Inc (1991) 33 FCR 397 applied
Scotch Whiskey Association v DeWitt [2008] FCA 73 cited
Food Channel Network Pty Ltd v Television Food Network, G.P (2008) 84 IPR 112 cited
Woolworths Ltd v BP plc (2006) 150 FCR 134 cited
Genetics Institute Inc v Kirin-Amgen Inc (1999) 92 FCR 106 cited
Lomas v Winton Shire Council [2003] AIPC 91-839 cited
Clinique Laboratories Inc v Luxury Skin Care Brands Pty Ltd (2003) 61 IPR 130 cited
E & J Gallo v Lion Nathan (2009) 175 FCR 386 cited
Registrar of Trade Marks v Woolworths (1999) 93 FCR 365 cited
McCormick & Co v McCormick (2000) 51 IPR 102 citedDate of hearing: Heard on the papers Date of last submissions: 6 May 2011 Place: Adelaide Division: GENERAL DIVISION Category: Catchwords Number of paragraphs: 33 Counsel for the Applicant: EJC Heerey Solicitor for the Applicant: Piper Alderman Counsel for the Respondent: HMJ Roff Solicitor for the Respondent: Norman Waterhouse
IN THE FEDERAL COURT OF AUSTRALIA
SOUTH AUSTRALIA DISTRICT REGISTRY
GENERAL DIVISION
SAD 53 of 2011
BETWEEN: HILLS HOLDINGS LIMITED (FORMERLY HILLS INDUSTRIES LIMITED) ACN 007 573 417
Applicant
AND: BITEK PTY LTD ACN 084 308 207
Respondent
JUDGE:
MANSFIELD J
DATE OF ORDER:
7 JUNE 2011
WHERE MADE:
ADELAIDE
THE COURT ORDERS THAT:
1.The applicant be given leave to appeal from the orders of the Court given on 10 March 2011 in proceedings SAD 14 of 2008.
2.The applicant do file and serve its notice of appeal pursuant to the leave to appeal hereby given, confined to the grounds of appeal applicable to such appeal (to the intent that the applicant, if so advised, may file and serve a single notice of appeal for this appeal and its appeal from the orders of the Court made on 10 March 2011 in proceedings SAD 39 of 2009 provided that it clearly and separately states the grounds of appeal applicable to each appeal).
3.The applicant do file and serve its notice of appeal within 14 days of the…
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- Case
- [2011] FCA 644
- Decision Date
CaseChat Overview and Summary
The court was required to determine whether it should exercise its discretion to grant leave to appeal. The legal issues included the scope of the court's discretion under section 195 of the Trade Marks Act, the overlap of issues with related proceedings, and the appropriate conditions for granting leave. The court noted that its discretion to grant leave was broad and not subject to specific criteria, and considered the applicant's prospects of success on appeal, the importance of the questions of law involved, and the potential impact on the parties and the public interest.
The court found that the applicant had a reasonable prospect of success on appeal, and the questions of law involved were significant. Given the overlap with related proceedings where leave had already been consented to, the court concluded that it was appropriate to grant leave to appeal. The court also outlined specific conditions for the filing and serving of the notice of appeal, and the timing and hearing of the appeal. It ordered that the costs of the application for leave to appeal follow the event on the appeal.
In summary, the court granted leave to appeal and set out conditions for the notice of appeal, its timing, and the hearing of the appeal. The costs of the application were to follow the event on the appeal.
Orders
Orders of the court
1. The applicant be given leave to appeal from the orders of the Court given on 10 March 2011 in proceedings SAD 14 of 2008.
2. The applicant do file and serve its notice of appeal pursuant to the leave to appeal hereby given, confined to the grounds of appeal applicable to such appeal (to the intent that the applicant, if so advised, may file and serve a single notice of appeal for this appeal and its appeal from the orders of the Court made on 10 March 2011 in proceedings SAD 39 of 2009 provided that it clearly and separately states the grounds of appeal applicable to each appeal).
3. The applicant do file and serve its notice of appeal within 14 days of the date of these orders.
4. The appeal be heard at the same time as the appeal from the orders made on 10 March 2011 in proceedings SAD 39 of 2009.
5. The costs of the application for leave to appeal follow the event on the appeal.
Note:
Background
Background to the litigation
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Evidence
Evidence Before The Court
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Decision
Reasons for decision
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Ratio Decidendi
Legal Principle Established
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