Kies Pty Ltd v Martin Cellars Pty Ltd - [1993] ATMO 71

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS
Re:Opposition by Martin Cellars Pty Ltd to the registration of Trade Mark application number 533734 in the name of Kies Pty Ltd.

Background
This issue arises for my decision out of the application, on 7 June 1990, by the above mentioned applicant, of Hoffnungsthal Road, Lyndock, South Australia, for the registration of the trade mark RED GUM in respect of, inter alia, "Wines" in class 33.
Acceptance of the application was advertised on 31 October 1991 in the Official Journal. On 15 November 1991, as allowed under section 49 of the Act, the above-named opponent, of C/- Hincks & Smith, of 4 Robe Terrace, Medindie, South Australia, lodged Notice of Opposition to the registration of the application. The grounds stated in the Notice of Opposition are that:

.The applicant is not the proprietor of the Trade Mark REDGUM under the provisions of Section 40(1)
.The applicant is not entitled to use or register the subject trade mark in respect of goods for which registration is sought in the present application.
.Any use of the subject trade mark would be contrary to law and therefore the subject trade mark should not be registered.
.Registration of the subject mark should be refused on the grounds that it is not clear that confusion or deception would not arise and as the burden of proof is on the Applicant, such burden has not been discharged.
.The subject trade mark would otherwise not be entitled to protection in a Court of Justice and should therefore not be registered.
.The Registrar should, in the public interest, withdraw acceptance of this application No A533734
.The Opponent asks for refusal of the application and costs in the matter of this opposition.

The hearing of this issue was before me in Adelaide. The applicant was represented by Ken Maddern and the opponent was represented by Dr Paul Wyk. And, rather than discussing the submissions of the attorneys, it will be of assistance if I dwell on the evidence in some detail. The issue is, I believe, both unusual, and unusually complex. One of the grounds for my decision relates in part to the complexity of the issues involved.

Evidence

The evidence consists of:

. Evidence in Support

Statutory Declaration by Fernando Martin
(the "Martin 1 declaration")

Exhibit FM-1
Exhibit FM-2
Exhibit FM-3

Statutory Declaration by Alan Barry Chinner
(the "Chinner declaration")

Exhibit BAC-1

. Evidence in Answer

Statutory Declaration by James Gilmour Irvine
(the "Irvine 1 declaration")

Exhibit JGI1
Exhibit JGI2

Statutory Declaration by Richard Kenneth Maddern
(the "Maddern declaration")

Exhibit RKM1
Exhibit RKM2
Exhibit RKM3
Exhibit RKM4
Exhibit RKM5
Exhibit RKM6
Exhibit RKM7
Exhibit RKM8
Exhibit RKM9
Exhibit RKM10

Statutory Declaration by Helen Margarat Napier
(the "Napier Declaration")

Exhibit HMN1
Exhibit HMN2
Exhibit HMN3
Exhibit HMN4
Exhibit HMN5
Exhibit HMN6
Exhibit HMN7
Exhibit HMN8
Exhibit HMN9
Exhibit HMN10
Exhibit HMN11

Statutory Declaration by Kenneth Ivan Kies
(the "Kies declaration")

Exhibit KIK1
Exhibit…

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: [1993] ATMO 71
Decision Date: 19 August 1993

CaseChat Overview and Summary

This matter concerns an opposition by Martin Cellars Pty Ltd to the registration of the trade mark RED GUM by Kies Pty Ltd for wines. Martin Cellars Pty Ltd contended that Kies Pty Ltd was not the proprietor of the trade mark, was not entitled to register it, that its use would be contrary to law, and that registration should be refused due to the likelihood of confusion and because the mark would not be entitled to protection in a court of justice. The opposition was lodged under section 49 of the relevant Act.

The delegate was required to determine whether Kies Pty Ltd was the proprietor of the trade mark RED GUM at the time of its application for registration on 7 June 1990. This involved assessing whether any prior use or assignment of the mark by Kies Pty Ltd had divested it of proprietorship, particularly in light of its dealings with Regional Vineyards (SA) Pty Ltd and the subsequent sale of the winery business to Martin Cellars Pty Ltd. The delegate also considered whether the marks and goods were the same and who had the first use of the mark.

The delegate reasoned that while Kies Pty Ltd likely had the first use of the mark, its proprietorship had been called into serious doubt. The evidence suggested that Kies Pty Ltd had acquiesced in the use of the mark by Regional Vineyards (SA) Pty Ltd for a significant period, effectively transferring proprietorship to that entity. The delegate noted that proprietorship could be lost through intentional abandonment or acquiescence, though not mere disuse. While not concluding that proprietorship had passed to the opponent, Martin Cellars Pty Ltd, the delegate found that Kies Pty Ltd's claim to proprietorship was sufficiently undermined by the evidence of its dealings with Regional Vineyards (SA) Pty Ltd.

The delegate decided that the opposition must succeed, finding that Kies Pty Ltd had not discharged the burden of proof to establish its proprietorship of the trade mark RED GUM. Consequently, the application for registration of the trade mark was refused.

Orders