Larry John Powell v Glow Zone Products Pty Ltd - [1996] FCA 1021

CATCHWORDS

TRADE MARKS - applicant registered proprietor of trade mark "CAPS THE GAME" - mark registered in relation to goods in Class 28 - mark intended to be used and later used in connection with discs used by children in connection with a game known variously as "caps", "milkcaps" and "POGS" - respondent marketing similar products using the mark "GLO-CAPS" - respondent's product all "glow in the dark" products, i.e. they exhibit a luminescence when in darkness - whether two marks substantially identical - whether two marks deceptively similar - discussion of principles applicable in relation to the determination of these questions - whether registration of applicant's mark valid - whether applicant's mark capable of being distinctive of its goods - whether the word "caps" was a word which was used generically in the relevant context or was likely to become used by the trade and persons purchasing the goods as generally descriptive of them - discussion of evidence and of relevant principles - whether "CAPS", after the registration of the applicant's mark, was used as the name or description of the goods in question - significance for this case of conclusion that it was - discussion of implications of s.56 of Trade Marks Act 1955 and of relevant principles.

Trade Marks Act 1955, ss.6, 22, 24, 26, 28, 32, 56, 62, 64.
Trade Marks Act 1995, ss.2, 24, 87, 250, 252, 255.
Evidence Act 1995, ss.76, 135, 136.

LARRY JOHN POWELL v GLOW ZONE PRODUCTS PTY LIMITED

No. NG 907 of 1994

CORAM:    SHEPPARD J
PLACE:    SYDNEY
DATE:     25 NOVEMBER 1996

IN THE FEDERAL COURT OF AUSTRALIA )
  )
NEW SOUTH WALES DISTRICT REGISTRY )    No. NG 907 of 1994
  )
GENERAL DIVISION                 )

BETWEEN:LARRY JOHN POWELL
Applicant

AND:GLOW ZONE PRODUCTS PTY LIMITED
Respondent

CORAM: SHEPPARD J

PLACE: SYDNEY

DATE: 25 NOVEMBER 1996

REASONS FOR JUDGMENT

HIS HONOUR: In this action the applicant seeks injunctive and other relief against the respondent to restrain the alleged infringement of a trade mark which is owned by the applicant. The certificate of registration of the trade mark is dated 5 December 1994. The mark in question is "CAPS THE GAME". The mark is registered in Part A of the Register of Trade Marks in respect of games and amusement goods in Class 28; components of games sold individually or in a set such as discs and playing boards, but not including any goods which use toy percussion caps such as cap pistols. Class 28 comprises games and playthings; gymnastic and sporting articles not included in other classes; and decorations for Christmas trees.

The allegedly infringing mark is "GLO-CAPS". The respondent has applied for the registration of that mark but the application has not been dealt with and remains pending.

The issues in the case involve the question of infringement and also a number of questions arising from matters relied upon by the respondent concerning the validity of the applicant's mark.

The Act which applies to the…

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: [1996] FCA 1021
Decision Date: 25 NOVEMBER 1996

CaseChat Overview and Summary

Larry John Powell brought an action against Glow Zone Products Pty Ltd seeking injunctive and other relief to restrain the alleged infringement of a trade mark which Powell owned. Powell's mark, "CAPS THE GAME", was registered in relation to games and amusement goods in Class 28. Glow Zone Products Pty Ltd was marketing similar products using the mark "GLO-CAPS". Powell claimed that Glow Zone Products Pty Ltd was infringing his trade mark. Glow Zone Products Pty Ltd raised a number of defences, including that Powell's mark was not validly registered and that it was not distinctive of Powell's goods. The court found that the marks were not substantially identical or deceptively similar and that the registration of Powell's mark was invalid. The court found that the word "caps" was not distinctive of Powell's goods and that the registration of the mark should be expunged from the Register. The court did not find that Powell had acted in a blameworthy manner and declined to make orders for the expungement of the mark from the Register.

Orders