Kraft General Foods Incorporated v Gaines Pet Foods Corporation

[1995] FCA 767

JUDGMENT NO, .m, , - , . , . 767 j?S nn....n..

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NEW SOUTH W E S DISTRICT REGISTRY	) No. G630 of 1995
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BETWEEN : FT

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28 SEP 1995	Applicant
FEDERAL COURT OF

AUSTRALIA	AND :	F A I N E S	P E T	F O O D S
PRINCIPAL
CORPORATION

Respondent

8 SEPTEMBER 1995

- R

JJOCKHART J,

This is an application for leave to appeal from the judgment of a judge of the Court given on 28 July 1995. The proceeding before the learned primary judge was in the nature of an appeal from a decision of the delegate of the Registrar of Trademarks, given on 2 September 1993, in relation to an application by the applicant to remove certain registered trademarks pursuant to S. 23 of the Trademarks Act 1955.

The applicant's application for removal did not succeed before the registrar. The applicant appealed to the Court. Leave to appeal from the decision of a single judge of the Court to a Full Court of the Court is required by reason of S. 114(2). I do not find it necessary to recite all the relevant facts or principles. They have been carefully referred to by counsel for each party in their respective written outlines of argument and have been spoken to.

His Honour's findings were largely findings of fact; but also, his Honour did express a view with respect to the meaning of the expression "a person aggrieved" within the meaning of S. 23 of the Trademarks Act. It is that section which empowers the registrar on application by a person aggrieved to order the removal of a trademark from the register, in respect of the goods or services in respect of which it is registered, on the grounds set out in that section.

The question which arose before the registrar and before the primary judge was whether the applicant was a person aggrieved within the meaning of S. 23(1). His Honour expressed the view that where an applicant for a trademark in fact uses that mark, or intends to use the mark, despite the registration of the trademark by another, the applicant will be a person aggrieved within the meaning of S. 23(1).

He went on to say that if, however, a person is merely an applicant for a trademark but neither uses the mark nor intends to use it in the future, the mere fact that the person is an applicant would not result in the conclusion the person was a person aggrieved.

His Honour found on the facts that in the light of that

principle the applicant was not a person aggrieved and

therefore dismissed the application. In my view his Honour's

reasons do reflect a construction of the expression "a person aggrieved" within the meaning of S. 2 3 ( 1 ) which raises a question of some degree of importance in the law of trade marks. It may be, as counsel for the applicants submits, that his Honour's findings will affect the practice of the registrar of trademarks. In addition, the issues to be raised on the appeal would be of importance for the applicant in this case.

Overall I am satisfied that it is a proper case for the grant of leave to appeal to a Full Court. The respondent who opposes the motion has said that if the application for leave succeeds, it wishes to have leave to file and serve a notice of cross-appeal out of time, because his Honour noted certain submissions of counsel for the respondent with respect to ss. 3 3 and 40 of the Trade Marks A c t . It is doubtful that his Honour in fact made findings with respect to those submissions, although there is one passage in his reasons for judgment that would suggest that he certainly expressed a view with respect to one of the two sections. Nevertheless, it would be wrong for the Court to shut out the respondent from seeking to argue whatever it wished on a cross-appeal.

Accordingly, the Court grants leave to the applicant to appeal from a judgment of Hill J. on 2 8 July 1995 in this matter. But I do not think that leave to extend time to file a cross-appeal is necessary for the respondent. It will have

a right to cross-appeal once the applicant files and serves

its notice of appeal.

As to costs I do not think the opposition to the application by the respondent has been unreasonable. In my view the costs of the application should be costs in the appeal. Accordingly the order of the Court is that the costs of the application be costs in the appeal.

I certify that this and the

preceding three (3) pages are a true copy of the reasons for judgment herein of the Honourable Justice Lockhart.

Dated: 8 bepLe&er 1995

Counsel for the Applicant	D M Yates
Solicitors for the Applicant :	Sprusons
Counsel for the Respondent	G McGowan
Solicitors for the Respondent :	Davies Ryan de Boos
Date of Hearing	8 September 1995
Date of Judgment	8 September 1995