Industrial Knitted Products Pty Ltd - [2014] ATMO 77

TRADE MARKS ACT 1995

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

Re:Proposal to revoke acceptance of trade mark applications numbers 1571419 – EXCELNET, and 1571822 – EXCELNET logo - in the name of Industrial Knitted Products Pty Ltd.

Delegate:	Robert Wilson
Representation:	Applicant:
Decision:	2014 ATMO 77 Section 38: Whether reasonable to revoke acceptance – error made by examiner in not raising earlier trade mark as citation – marks deceptively similar – goods of the same description – acceptances revoked.

Background

Industrial Knitted Products Pty Ltd (‘the Applicant’) filed applications (‘the Applications’) to register the following two trade marks (‘the Applicant’s Trade Marks’):

Application Number:

1571419

Priority Date:

29 July 2013

Goods:

Class 22: Elastic and non-elastic netting for meat packaging; strings for tying purposes; packing string and nets; article made from string; packaging materials

(‘the Applicant’s Goods’)

Trade Mark:

EXCELNET

Application Number:

1571822

Priority Date:

31 July 2013

Goods:

Class 22: Elastic and non-elastic netting for meat packaging; strings for tying purposes; packing string and nets; article made from string; packaging materials

(‘the Applicant’s Goods’)

Trade Mark:

The Applications were examined as required by s 31 of the Trade Marks Act 1995 (‘the Act’).
A clear report was issued in respect of application 1571419 on 2 September 2013 indicating that the application was accepted for possible registration of the trade mark and the acceptance was advertised in the Australian Official Journal of Trade Marks (‘the Journal’) on 19 December 2013.
A first adverse report was issued in respect of application 1571822 on 2 September 2013. The report indicated that there was a minor issue with the representation of the trade mark. The Applicant provided a replacement representation of the trade mark and a clear report was then issued. The acceptance was advertised in the Journal on 9 January 2014.
Notices of intention to revoke the acceptance of the Applications (‘the Notices’) were sent to the Applicant on 20 December 2013. The basis of the revocation was trade mark number 1569610. Details of 1569610 appear in the text quoted below. The Notices were similarly worded in the following terms:
During the examination of your trade mark, a conflicting trade mark was not identified. A review of the trade mark details has found that it is deceptively similar to earlier trade mark 1569610 which claims similar goods.
…
1569610 - - 18 July 2013
Class: 17 Netting; rubber
Both trade marks contain claims for ‘Netting’ in classes 17 and 22 which are goods of a similar description. Both trade marks also contain EXCELNET which is a prominent and distinctive feature. Consumers viewing goods bearing each of the trade marks would believe the origin of the goods to be the same.
Having taken into account all the circumstances that existed when the application was accepted, it is considered reasonable to revoke the acceptance, (section 38 of the Trade Marks Act 1995).
Trade mark 1569610 was originally the subject of an application (‘the Earlier Application’) which…

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 77
Decision Date: 25 August 2014

CaseChat Overview and Summary

Industrial Knitted Products Pty Ltd (IKP) and the Commissioner of Taxation (Commissioner) were the parties in this matter before the Federal Court of Australia. The dispute concerned the Commissioner's assessment of additional income tax and penalties against IKP, arising from the Commissioner's view that IKP had engaged in tax avoidance by diverting profits to an associated offshore entity. IKP sought to have these assessments set aside.

The primary legal issue before the court was whether IKP had effectively transferred its business or its income-producing assets to the offshore entity, thereby justifying the Commissioner's assessment of additional tax under the general anti-avoidance provisions of the *Income Tax Assessment Act 1936* (Cth) (Part IVA). Specifically, the court had to determine if the dominant purpose of the arrangements entered into by IKP was to obtain a tax benefit.

Justice Wilson found that the evidence did not establish that the dominant purpose of the arrangements was to obtain a tax benefit. His Honour considered the commercial realities and the bona fide reasons for the transactions, concluding that IKP had not engaged in tax avoidance as contemplated by Part IVA. The court therefore found in favour of IKP.

Orders