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John Weeks Pty Ltd v Foodland Association Ltd

John Weeks Pty Ltd v Foodland Association Ltd

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Case Copied 10 October 1986 9 min read

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Re: JOHN WEEKS PTY. LTD.
And: FOODLAND ASSOCIATED LIMITED; RONALD MULLIGAN; JOSEPH GUIPPA and NEVILLE
GALE
No. WA G50 of 1986
Trade Marks

COURT

IN THE FEDERAL COURT OF AUSTRALIA

WESTERN AUSTRALIA DISTRICT REGISTRY
GENERAL DIVISION
Toohey J.

CATCHWORDS

Trade Marks - application under Trade Practices Act to restrain use of name and mark - prior application for removal for non-use pending before Registrar of Trade Marks - application by respondents for stay of Federal Court proceedings until disposal of trade marks application - Federal Court proceedings unlikely to proceed to hearing after resolution of trade marks matter - considerations of time, cost and convenience relevant to question of stay

Trade Marks Act 1955 ss.21, 23(3A)

Trade Marks Regulations Pt VII Div.2

HEARING

PERTH

#DATE 10:10:1986

ORDER

Until further order all proceedings in relation to this application be stayed pending disposal of the first respondent's application dated 25 October 1985 pursuant to sub-s.23(3A) of the Trade Marks Act 1955 that the applicant's trade mark No. B370430 be removed from the Register in respect of all of the services in respect of which it is registered so far as the state of Western Australia is concerned.

Note: Settlement and entry of orders is dealt

with in Order 36 of the Federal Court Rules.

JUDGE1

This is a motion by all respondents seeking an order that proceedings in relation to this application be stayed pending disposal of the first respondent's application under sub-s.23(3A) of the Trade Marks Act 1955 for the removal of the applicant's trade mark No. B370430 from the Register of Trade Marks in respect of all of the services for which it is registered, so far as Western Australia is concerned.

The background to this motion is set out in reasons for judgment I delivered on 4 July 1986 and I shall not repeat what is said there, except to the extent that it is necessary for an understanding of the matter now before the Court.
The applicant is the registered proprietor of trade mark No. B370430 consisting of the trade mark Bi-Lo registered in Part B of the Register of Trade Marks in respect of retailing through supermarkets, being services included in Class No. 42. Registration of the mark was granted to the applicant on 20 December 1984 and subsists for a period of seven years from 14 January 1982.
The applicant was incorporated in South Australia and it has carried on business in that state since May 1979. The first respondent was incorporated in Western Australia and it has registered the name Bi-Lo under the provisions of the Business Names Act 1962 of this state. It has used the name Bi-Lo in the course of its business and it has, by franchise agreements, given the other respondents the right to use that name.
The applicant has brought proceedings against the respondents, pursuant to s.52 of the Trade Practices Act 1974, seeking to restrain them from using the name Bi-Lo in their businesses and in particular to restrain…

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: [1986] FCA 443
Decision Date: 10 OCTOBER 1986

CaseChat Overview and Summary

John Weeks Pty Ltd brought an action against Foodland Association Ltd, seeking an injunction to restrain the use of a name and mark. The case was heard in the Federal Court of Australia. The dispute centred on the alleged use of a trade mark by the respondents which was claimed to infringe upon the applicants' rights under the Trade Practices Act. In addition to the Federal Court proceedings, a separate application had been lodged with the Registrar of Trade Marks, requesting the removal of the contested trade mark from the Register due to non-use. The respondents applied for a stay of the Federal Court proceedings until the trade marks matter was resolved.

The court was tasked with determining whether the Federal Court proceedings should be stayed pending the outcome of the trade marks application. The key legal issue was whether the considerations of time, cost, and convenience justified a stay of the Federal Court action. The court had to balance the urgency and importance of the Federal Court proceedings with the potential for resolution of the trade marks issue to obviate the need for the Federal Court to proceed.

In its reasoning, the court held that the Federal Court proceedings were unlikely to proceed to a hearing if the trade marks matter was resolved. The court considered that a stay was appropriate given the potential for significant time and cost savings if the trade marks issue was resolved first. The court also noted that a stay would promote convenience for the parties by avoiding duplicative litigation. Consequently, the court ordered that all proceedings in relation to the application be stayed until the disposal of the respondents' trade marks application. This decision was made to ensure efficiency and to avoid unnecessary costs and delays.

Orders

Orders of the court

Until further order all proceedings in relation to this application be stayed pending disposal of the first respondent's application dated 25 October 1985 pursuant to sub-s.23(3A) of the Trade Marks Act 1955 that the applicant's trade mark No. B370430 be removed from the Register in respect of all of the services in respect of which it is registered so far as the state of Western Australia is concerned.

Note: Settlement and entry of orders is dealt

with in Order 36 of the Federal Court Rules.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

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