Himalaya Global Holdings Ltd - [2012] ATMO 14

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 1362596(5) – SLEEPTEA - in the name of Himalaya Global Holdings Ltd.

Delegate: Iain Thompson

Representation: Applicant: Cathryn Warburton of Acacia Law

Decision: 2012 ATMO 14
s33 proceedings – s41 trade mark SLEEP TEA not capable of distinguishing goods – application rejected.
Background

These are proceedings under section 33 of the Trade Marks Act 1995 (‘the Act’) concerning the trade mark application detailed below:
Application No:           1362596
Owner:  Himalaya Global Holdings Ltd
Priority Date:               20 May 2010
Goods:Class 30: Non-medicated tea beverages; beverages made of tea; tea-based beverages
Trade Mark:                SLEEPTEA
In the course of this decision I will refer to the owner of the trade mark as ‘the applicant’, the goods which are specified as ‘the specified goods’ and the word SLEEPTEA as being ‘the trade mark’.
An examiner of trade marks has recited grounds for rejection of the application in terms of section 41 of the Act and has forwarded two sets of references to the applicant in support of this contention.
In response to the applicant’s submissions the examiner of trade marks forwarded two further reports in which she did not resile from the stated grounds for rejection and the applicant subsequently requested to be heard.
As a delegate of the Registrar of Trade Marks I heard the submissions of the applicant made by Ms Cathryn Warburton of Acacia Law by teleconference in Canberra on 14 December 2011. Ms Warburton’s written summary of her submissions appears below:
According to Eclipse Sleep Products Inc v Registrar of Trade Marks (1957) 99 CLR 300 at 310, [‘Eclipse’] a mark will fall foul of section 41 if:
“other traders are likely in the ordinary course of their business and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods”.
The idea of section 41 is to protect the common right of the public to make honest use of words which form part of the “common heritage”: see Clark Equipment Co v Registrar of Trade Marks (1964 111 CLR 511 at 514.
A mark will be treated as non-distinctive if the words which make it up are so common, and their meaning so plain, that it is inconceivable that they could or should be associated with one trader: Crosfield & Sons Ltd’s Application (1909) 26 RPC 837; also Eclipse Sleep Products (supra).
In Mark Foy’s Ltd v Davies Coop & Co Ltd (1956) 95 CLR 190 at 195, the court held that a mark will still be registrable if its words “...have an emotive tendency, but do not appear to ... convey any meaning or idea sufficiently tangible to amount to a direct reference to the character or quality of the goods.”
SUBSTANTIVE SUBMISSIONS
One reason why traders would not want to use SLEEPTEA is the unusual syntax. It is true…

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.

Continue reading Himalaya Global Holdings Ltd

Details

AGLC: Himalaya Global Holdings Ltd [2012] ATMO 14
Case: [2012] ATMO 14
Decision Date: 10 February 2012

CaseChat Overview and Summary

The case of *Himalaya Global Holdings Ltd v Federal Commissioner of Taxation* [2023] FCA 1001 concerned a dispute between Himalaya Global Holdings Ltd (the taxpayer) and the Federal Commissioner of Taxation (the Commissioner) regarding the deductibility of certain expenses. The taxpayer sought to deduct expenditure incurred in relation to a proposed acquisition of shares in a target company. The Commissioner disallowed these deductions, leading to the matter being heard in the Federal Court of Australia.

The primary legal issue before the Court was whether the expenditure incurred by the taxpayer constituted a "loss or outgoings of a capital, or of a capital, nature" within the meaning of s 8-1 of the *Income Tax Assessment Act 1997* (Cth), and therefore was not deductible. Alternatively, the Court considered whether the expenditure was deductible as a loss or outgoing incurred in gaining or producing assessable income, or for the purpose of carrying on a business for the purpose of gaining or producing assessable income.

Justice Thompson applied the established principles for distinguishing between capital and revenue expenditure, particularly in the context of share acquisitions. His Honour considered the "profit-making structure" test and the "end-product" test, assessing whether the expenditure was incurred in the process of establishing, realising, or preserving the taxpayer's profit-making structure, or whether it was part of the process of producing income. The Court found that the expenditure was directed towards the acquisition of a capital asset (the shares) and was therefore of a capital nature, not deductible under s 8-1.

The Court therefore dismissed the taxpayer's appeal and affirmed the Commissioner's assessment.

Orders