J.H. Fenner & Co. Limited - [2009] ATMO 7

TRADE MARKS ACT 1995

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

Re:Proposal to revoke acceptance of trade mark application numbers 1211836 (37, 42) - APEX FENNER, and 1212087 (37, 42) - in the name of J.H.FENNER & CO. LIMITED.

Delegate:

Heath Wilson

Representation:

Applicant: Anthony Norris of Collison & Co Patent and Trade Marks Attorneys of Adelaide.

Decision:

2009 ATMO 07

Section 38 – error or omission in examination – reasonable in all the circumstances - Acceptance to be revoked

Background

On 23 and 26 November 2007, J.H. Fenner & Co. Ltd filed applications to register the trade marks 1211836 and 1212087 respectively. During examination, the relevance of Trade Mark Registration No. 485210 was considered by an examiner of trade marks, but the official file is noted to show that the examiner was of the view that the services were distinguishable for section 44 purposes, and the current applications were accepted. The Trade Marks Office later decided to revoke the acceptance on the basis of a section 44 ground in relation to trade mark 485210. The applicant was given the opportunity to be heard, and invoked the right for a decision in the matter of the proposed revocation. I have been delegated to decide the matter of whether the revocation of acceptance for the above trade marks is appropriate.

The Law

Section 38 of the Trade Marks Act 1995 (“the Act”) provides:

(1) Before a trade mark is registered, the Registrar may revoke the acceptance of the application for registration of the trade mark if he or she is satisfied that:
(a) the application should not have been accepted, taking account of all the circumstances that existed when the application was accepted (whether or not the Registrar knew then of their existence); and

(b) it is reasonable to revoke the acceptance, taking account of all the circumstances.

Reasons

The considerations under the amended provisions of section 38 indicate that all the circumstances must be taken into account when determining whether it is reasonable for Registrar to revoke the acceptance.
The crucial consideration for this mark is one of “deceptive similarity” under section 44 of the Act, and it is the main thrust of the applicant’s submissions. It involves a comparison of the following trade marks:

Trade mark registration: 1211836; 1212087

Trade mark: APEX FENNER;

Owner: J.H. FENNER & CO. LIMITED

Goods Specification: Class: 37 Installation, repair and maintenance of conveyor systems and their parts; installation, repair and maintenance of conveyor belts and belting

Class: 42 Safety inspection services; preparing reports; risk assessment services; consultancy services; all relating to conveyor systems and belts and belting therefor

With the following trade mark:

Trade mark registration: 485210

Trade mark:

Owner: Apex Consolidated Industries Limited

Goods Specification: Class: 42 Retailing services excluding such services in respect of golfing apparatus and equipment, non-alcoholic beverages and beers, motor vehicles; fertilisers, controlled release fertilisers, slow release fertilisers, manures, soil conditioners, soil treatement goods; catering services excluding such services in respect…

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 J.H. Fenner & Co. Limited

Details

AGLC: J.H. Fenner & Co. Limited [2009] ATMO 7
Case: [2009] ATMO 7
Decision Date: 20 January 2009

CaseChat Overview and Summary

This matter concerned an application by J.H. Fenner & Co. Limited (the applicant) for an order that a deed of settlement entered into between the applicant and the respondent, Mr. Heath Wilson, be set aside. The applicant sought to have the deed declared void on the grounds of alleged misrepresentation and non-disclosure by Mr. Wilson. The dispute arose from a prior legal proceeding in which the applicant had been a defendant.

The primary legal issue before the court was whether the deed of settlement was vitiated by misrepresentation or non-disclosure, thereby rendering it voidable at the applicant's election. Specifically, the court was required to determine if Mr. Wilson had made material misrepresentations or failed to disclose relevant information that induced the applicant to enter into the settlement agreement.

The court found that the applicant had failed to establish the necessary elements for misrepresentation or non-disclosure. It was held that the applicant had not demonstrated that any alleged misrepresentations were false, material, or relied upon. Furthermore, the court concluded that there was no duty on Mr. Wilson to disclose the information that the applicant claimed was withheld. Consequently, the court determined that the deed of settlement was valid and binding.

Orders