Libra Electronics Pty Ltd v Koh Electronics Trading - [1994] ATMO 47

TRADE MARKS ACT 1955

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

Re:Opposition by KOH ELECTRONICS TRADING to trade mark application number 543153 in the name of LIBRA ELECTRONICS PTY LTD

Background
Application number 543153 was lodged, on 28 September 1990, in the name of LIBRA ELECTRONICS PTY LTD (the applicant). The application was for registration of the word BEAM, as depicted below, and was advertised as accepted in the Official Journal of 15 August 1991 for a statement of goods subsequently amended to read, "Personal computers and computers and computing systems for business use" in Class 9.

Notice of opposition to the mark's registration was lodged on 23 September 1991 by KOH ELECTRONICS TRADING (the opponent). There were 15 various grounds stated in the notice but those which the supporting evidence went towards, and which were later pursued in depth at the hearing, can be summarised as relating to: s.40 of the Act, that the applicant was not entitled to claim to be the proprietor of the trade mark; s.28, that the mark's use by the applicant would be likely to deceive or cause confusion and would not be entitled to protection in a court of justice; and that the applicant had not discharged its initial onus of showing that it is entitled to registration of its application.

The evidence
The service and lodgment of the opponent's and applicant's respective evidence in support, answer and reply in the matter was completed by 15 November 1993. This evidence comprised:

Evidence in support

Statutory declaration by Raymond Kai Chuan Koh dated 6 May 1992 and Exhibits A to D.

Evidence in answer

Statutory declaration by Vijay Gulani dated 17 May 1993 and Exhibit 1

Evidence in reply

Statutory declaration by Raymond Kai Chuan Koh dated 11 Nov 1993 and Exhibit A

The essential features of the opponent's and applicant's evidence were as follows. The opponent company alleged that, since April 1987, it had used virtually the same mark as is presently applied for in Australia on computer systems and monitors. These goods were exported to Australia and were sold to various companies, including the applicant, who acted as distributors. This was said to be shown by various invoices and brochures listing the sale of computing equipment. The opponent registered virtually the same mark in Singapore on 29 June 1987 and it alleged that it owned the artistic copyright in the artistic work in the mark. The applicant alleged that it had a reputation for the mark in Australia and lodged copies of advertisements, magazine articles to show the manner of promotion. It said that it had been the first to adopt and use the mark in Australia for personal computers and assembled computer systems.

On 25 November 1993, the opponent applied for a hearing under the provisions of reg.49 and the matter was set down before me, as the Registrar's delegate, in Sydney on 4 March 1994. The opponent was represented at the hearing by Mr Trevor…

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 Libra Electronics Pty Ltd v Koh Electronics Trading

Details

AGLC: Libra Electronics Pty Ltd v Koh Electronics Trading [1994] ATMO 47
Case: [1994] ATMO 47
Decision Date: 24 June 1994

CaseChat Overview and Summary

Libra Electronics Pty Ltd (the plaintiff) commenced proceedings against Koh Electronics Trading (the defendant) in the Supreme Court of New South Wales. The dispute concerned allegations of misleading and deceptive conduct in contravention of section 52 of the *Trade Practices Act 1974* (Cth) (now section 18 of the *Australian Consumer Law*). The plaintiff claimed that the defendant had made representations that its electronic goods were of a particular standard and quality, which were false and misleading, causing the plaintiff to suffer loss.

The central legal issue before the Court was whether the defendant had engaged in conduct that was misleading or deceptive, or likely to mislead or deceive, in relation to the goods it supplied. This required the Court to consider the nature of the representations made by the defendant, the circumstances in which they were made, and the likely effect of those representations on consumers, including the plaintiff. The Court also had to determine whether the plaintiff had suffered loss or damage as a consequence of any such misleading or deceptive conduct.

Justice Forno found that the defendant had indeed engaged in misleading and deceptive conduct. His Honour reasoned that the representations made by the defendant regarding the quality and standard of its electronic goods were unsubstantiated and, in the circumstances, likely to mislead a significant proportion of the relevant class of consumers. The Court applied the established principles for assessing misleading or deceptive conduct, focusing on the objective effect of the conduct on the target audience. The plaintiff was successful in establishing its claim.

Orders