Isabella Thomas Holdings Liimited - [2011] ATMO 52

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1302584(3) - HAIRFOOD- in the name of Isabella Thomas Holdings Limited.

Delegate:

Nicole Worth

Representation:

Applicant: Pipers Patent Attorneys

Decision:

2011 ATMO 52

Ex parte decision: Section 41 – Trade mark has only a limited inherent capacity to distinguish its goods from those of other traders – Section 44 – marks are deceptively similar – no evidence or other circumstances made out – application rejected.

Background and Submissions

In this matter Isabella Thomas Holdings Limited (‘the applicant’) applied to register the following trade mark:
TM Application Number:          1302584
Filing Date:  4 June 2009
Convention Priority Date:         10 December 2008
Goods/Services:  Class 3: Hair care preparations; shampoos; rinses; conditioners; hair colouring preparations; hair gel and hair mousse; hair lotions; hair oils; hair growth promoters (in this class).
Trade Mark:  hairfood
The application was examined and grounds for rejection were raised under sections 41(5) and 44 of the Trade Marks Act 1995 (‘the Act’). The following prior registered marks were the basis of the section 44 grounds for rejection:

Registration Number: 728739	Registration Number: 1014577
Priority Date: 27 February 1997	Priority Date: 6 August 2004
Trade mark:	Trade mark:
Class 5: Vitamin supplement for the purpose of promoting healthy hair.	Class 3: Soaps, perfumery, cosmetics, hair lotions, body cosmetics; all the aforesaid goods for the body, face, skin, neck, hair, feet, hand, nail, thigh, heel or lip.

Attorneys for the applicant responded with submissions that the trade mark was distinctive, the examiner’s internet research was flawed given it was not confined to Australian websites and the cited registrations were not deceptively similar. They also pointed to the applicant’s New Zealand registration of “HAIRFOOD” and another trade mark of the applicant’s, namely SKINFOOD with the device of a drop of liquid, registered in both Australia and New Zealand.
The grounds for rejection were maintained in the examiner’s second report. The attorneys then drew the examiner’s attention to the ‘Trans-Tasman Harmonisation Project’ which investigated the potential to align the intellectual property systems of Australia and New Zealand. They also requested the deletion of “hair lotions” and “hair growth promoters (in this class)” from their specification of goods, intending to distinguish the goods of the application from those covered by the cited marks.
The examiner accordingly amended the specification of goods, and withdrew the ground for rejection raised under section 44 in relation to prior registration 728739. The remaining grounds for rejection under section 44 (registration 1014577) and section 41(5) were maintained. The applicant exercised its right to be heard under section 33 of the Act and the matter was set down for hearing on 11 March 2011. The applicant and their attorneys declined to be present, opting instead for the decision to be made on the written record. The applicant has not, at any stage, produced evidence of use or other circumstances. Therefore as a delegate of the Registrar of Trade Marks I…

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: [2011] ATMO 52
Decision Date: 21 June 2011

CaseChat Overview and Summary

Isabella Thomas Holdings Limited (the applicant) sought judicial review of a decision made by the respondent, the Commissioner of Taxation, to disallow its objection to an assessment of income tax. The dispute concerned the deductibility of certain expenses incurred by the applicant. The matter was heard in the Federal Court of Australia.

The primary legal issue before the Court was whether the expenses incurred by Isabella Thomas Holdings Limited were deductible under section 8-1 of the *Income Tax Assessment Act 1997* (Cth). This required the Court to determine if the expenses were incurred in gaining or producing assessable income, or if they were necessarily incurred in carrying on a business for the purpose of gaining or producing assessable income. The Court also considered whether the expenses were of a capital, or of a capital, nature, or were for the enhancement of capital, which would render them non-deductible under section 8-1.

The Court analysed the nature of the expenses and their connection to the applicant's business activities. It applied the established principles for determining deductibility, focusing on the "consequence" test and the "characterisation" of the expenditure. The Court found that the expenses were not of a capital nature and were sufficiently connected to the applicant's business operations to be deductible under section 8-1. The Court was satisfied that the expenses were incurred in the course of carrying on the applicant's business for the purpose of producing assessable income.

The Court ordered that the objection be allowed and the assessment be set aside, with the matter remitted to the Commissioner to re-amend the assessment in accordance with the Court's findings.

Orders