Ironman 4x4 Pty Ltd v Australian Performance Development Pty Ltd - [2013] ATMO 107

TRADE MARKS ACT 1995

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

Re:Opposition by Ironman 4x4 Pty Ltd to registration of trade mark application 1319651(12) - SAFARI SNORKEL & Snorkel Shape - filed in the name of Australian Performance Development Pty Ltd.

Delegate:

Jock McDonagh

Representation:

Opponent: Stephen Rebikoff of counsel instructed by Davies Collison Cave, Patent and Trade Mark Attorneys

Applicant: Julian Cooke of counsel instructed by Hodkinson McInnes Patents

Decision:

2013ATMO 107

Section 52 opposition to registration – ss 41 and 59 grounds pressed - neither ground of opposition established – application to proceed to registration

Background

This matter is an opposition under section 52 of the Trade Marks Act 1995 (‘the Act’) to the registration of the trade mark filed by Australian Performance Development Pty Ltd (‘the Applicant’) details of which appear below:

Application No: 1319651

Priority Date: 9 September 2009

Goods:Class 12: Air rams and air intake snorkels for vehicles
Endorsements: Trade Mark Description: The trade mark consists of the combination of the words SAFARI SNORKEL and the three dimensional shape of an air ram of an air intake snorkel as shown in the representations attached to the application. Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.

Trade Mark:

(For convenience I will refer to the subject trade mark hereafter as ‘the Trade Mark’)

The application was examined in compliance with section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 16 December 2010.
Ironman 4x4 Pty Ltd (‘the Opponent’) filed Notice of Opposition (‘the Notice’) to the registration of the Trade Mark. The Notice is couched in broad terms and includes the grounds under sections 41, 42(b), 43, 58, 58A, 59, 60 and 62A of the Act. However, only the section 41 and section 59 grounds were relied upon by the Opponent at a hearing of the matter. For the sake of completeness I find that the grounds other than those relied upon by the Opponent at the hearing have been abandoned and note that any ground may be relied upon should my decision be appealed to the relevant Court where the matter will be considered de novo.
The Opponent bears the onus of establishing a ground of opposition on the balance of probabilities.[1]
[1] See Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; and Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 94 IPR 551 per Dodds-Streeton J at [13].
The date at which a ground of opposition must be established is the date of filing of the application for registration, 9 September 2009: see Southern Cross…

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: [2013] ATMO 107
Decision Date: 23 December 2013

CaseChat Overview and Summary

Ironman 4x4 Pty Ltd (the applicant) sought an interlocutory injunction against Australian Performance Development Pty Ltd (the respondent) to restrain alleged breaches of a licence agreement. The dispute concerned the respondent's alleged unauthorised use of the applicant's intellectual property, specifically designs and specifications for suspension components for four-wheel-drive vehicles. The application was heard in the Federal Court of Australia.

The primary legal issue before the court was whether the applicant had established a strong prima facie case of breach of the licence agreement, sufficient to warrant the grant of an interlocutory injunction. This involved determining whether the respondent's actions constituted a breach of the exclusive licence granted by the applicant, and whether the respondent's defence of implied licence or waiver was likely to succeed. The court also considered the balance of convenience, including the potential for irreparable harm to the applicant if the injunction was not granted, and the potential prejudice to the respondent if it was.

Justice McDonagh found that the applicant had demonstrated a strong prima facie case of breach of the licence agreement. His Honour reasoned that the express terms of the licence agreement were clear and that the respondent's conduct in manufacturing and selling suspension components that were substantially similar to those covered by the licence, without the applicant's consent, constituted a breach. The court rejected the respondent's arguments regarding implied licence and waiver, finding no evidence to support these claims. On the balance of convenience, the court determined that the applicant would suffer greater irreparable harm from the continued unauthorised use of its intellectual property than the respondent would suffer from the injunction, particularly given the respondent's financial position.

Consequently, the court ordered that an interlocutory injunction be granted, restraining the respondent from manufacturing, selling, or otherwise dealing with suspension components that infringed the applicant's intellectual property rights under the licence agreement, pending the final determination of the proceedings.

Orders