Lomas v Winton Shire Council

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FEDERAL COURT OF AUSTRALIA

Lomas v Winton Shire Council [2002] FCAFC 413

TRADE MARKS – application for registration of – grounds for rejection of – conditions or limitations upon grant of – nature of proceedings of an opposition to grant of – similarity to opposition proceedings under the Patents Act1990 (Cth) - quasi summary nature of an opposition proceeding against a grant of – what constitutes “use” of – what constitutes intention to use, prior to priority date – role of appellant court

The Constitution, s 75
Federal Court of Australia Act 1976 (Cth) s24(1A)
Patents Act 1990 (Cth)
Trade Marks Act 1995 (Cth), ss 27(1), 41, 42, 43, 46, 52, 54(1), 55, 56, 57, 58, 59, 60, 61, 62, 191(2), 193, 195, 197.

Imperial Chemical Industries PLC v EI Dupont De Nemours & Co [2002] FCAFC 264, followed.
Moorgate Tobacco Co Ltd v Phillip Morris Ltd and Anor [No. 2] (1984) 156 CLR 414, cited.
SAP Australia Pty Ltd v Sapient Australia Pty Ltd [1999] FCA 1821, followed.
Shell Company of Australia Ltd v Rohm and Haas Company & Anor (1949) 78 CLR 60, followed.
Re Hicks’ Trademark (1897) 22 VLR 636, followed.
Aston v Harlee Manufacturing Company (1960) 103 CLR 391, followed.

BRENDA MAURICEEN LOMAS v WINTON SHIRE COUNCIL & THE WALTZING MATILDA CENTRE LTD
Q98 OF 2002

COOPER, KIEFEL & EMMETT JJ
11 DECEMBER 2002
BRISBANE

IN THE FEDERAL COURT OF AUSTRALIA

QUEENSLAND DISTRICT REGISTRY

Q98 OF 2002

ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA

BETWEEN:

BRENDA MAURICEEN LOMAS
APPELLANT

AND:

WINTON SHIRE COUNCIL
FIRST RESPONDENT

THE WALTZING MATILDA CENTRE LTD
SECOND RESPONDENT

JUDGES:

COOPER, KIEFEL & EMMETT JJ

DATE OF ORDER:

11 DECEMBER 2002

WHERE MADE:

BRISBANE

THE COURT ORDERS THAT:

1.        The appeal be upheld.

2.        The orders of Spender J made on 31 May 2002 be set aside.

3.        The appeal from the decision of the Registrar of Trade Marks be dismissed.

4.        The applicant pay the respondent’s costs of the proceedings and the appeal.

Note:   Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA

QUEENSLAND DISTRICT REGISTRY

Q98 OF 2002

ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA

BETWEEN:

BRENDA MAURICEEN LOMAS
APPELLANT

AND:

WINTON SHIRE COUNCIL
FIRST RESPONDENT

THE WALTZING MATILDA CENTRE LTD
SECOND RESPONDENT

JUDGE:

COOPER, KIEFEL & EMMETT JJ

DATE:

11 DECEMBER 2002

PLACE:

BRISBANE

REASONS FOR JUDGMENT

THE COURT:

  1. By application dated 21 June 2002, the applicant, Ms Brenda Mauriceen Lomas (“Ms Lomas”), seeks leave to appeal, pursuant to s 195(2) of the Trade Marks Act 1995 (Cth) (“the Act”), from orders made by a judge of the Court on 31 May 2002. On 31 July 2002, the primary judge extended the time for filing an application for leave to appeal to 25 June 2002 and ordered that the application for leave to appeal and, if that application is successful,…

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Details
Case
[2002] FCAFC 413
Decision Date

CaseChat Overview and Summary

In Lomas v Winton Shire Council, the dispute centered around the ownership of the trade mark "Waltzing Matilda" and its use in relation to a proposed country kitchen at the Waltzing Matilda Centre in Winton, Queensland. The respondent, Winton Shire Council, argued that it had prior use of the trade mark, thereby establishing its ownership, while the applicant, Ms Lomas, contended that she was the rightful owner. The Full Court of the Federal Court was tasked with determining whether the primary judge had erred in his decision to uphold the respondent's opposition to the applicant's trade mark application.

The central legal issue was whether the primary judge correctly applied the law in concluding that the respondent had prior use of the trade mark "Waltzing Matilda" in relation to the proposed country kitchen, thereby establishing its ownership. The Full Court needed to assess if the primary judge had made any errors in his interpretation of the Trade Marks Act 1995 (Cth) and whether the respondent's use of the trade mark was sufficient to establish ownership.

The Full Court found that the primary judge had correctly determined that the respondent had prior use of the trade mark "Waltzing Matilda" in relation to the proposed country kitchen. The Court reasoned that the use of the trade mark in the respondent's advertising and promotional materials demonstrated a genuine intention to offer or supply goods bearing the mark in trade. The Court rejected the applicant's argument that the trade mark used by the respondent was "Waltzing Matilda Country Kitchen" rather than simply "Waltzing Matilda." The Court held that the respondent's use of the trade mark was sufficient to establish its ownership and that the primary judge's decision was correct. Therefore, the appeal was dismissed, and the orders of the primary judge were affirmed.

The Full Court's decision underscores the importance of prior use in establishing ownership of a trade mark. The Court emphasised that an unsuccessful opponent in a trade mark opposition proceeding always has the opportunity to bring an expungement proceeding if the opposition fails, where the validity of the trade mark can be fully explored. The Full Court's ruling ensures that the quasi-summary nature of opposition proceedings is maintained, preventing duplicative litigation over the validity of a trade mark.

Orders

Orders of the court

1. The appeal be upheld.

2. The orders of Spender J made on 31 May 2002 be set aside.

3. The appeal from the decision of the Registrar of Trade Marks be dismissed.

4. The applicant pay the respondent’s costs of the proceedings and the appeal.

Background

Background to the litigation

Thus, it would be inappropriate for there to be a full exploration of the validity of the trade mark in two separate proceedings in the Court, first in an appeal in an opposition proceeding and then, subsequently, if the opposition proceeding failed, in an expungement proceeding. Those considerations emphasise the need for the Full Court, before refusing leave to appeal pursuant to s 195(2) of the Act, to be satisfied that a decision by a single judge upholding an opposition is undoubtedly correct. THE FACTUAL BACKGROUND In April 1895 the song “Waltzing Matilda” (“the Song”), the words of which were written by A.B. “Banjo” Patterson, was first performed in the town of Winton. The words to the Song had been composed at Dagworth Station, about 100 kilometres from the town of Winton. In April 1995 Winton hosted celebrations, in the town of Winton, of the centenary of the first performance of the Song. The celebrations consisted of a programme of special events, entertainment, historical displays and exhibitions over twelve days. The programme featured different elements of the themes of the Song, its history and the connection between the Song and the town of Winton. A central feature of the marketing and publicity campaign for the celebration was the use of a logo as follows:The logo shows a figure of a swagman with an animal over his shoulder in a swag, with the words “1895 Waltzing Matilda Centenary 1995” in a scroll across the figure of the swagman, the words “Waltzing Matilda Centenary” above the logo and the words “Winton Queensland” and the date “6 April 1995” below it. Food and beverages provided during the celebrations included damper, billy tea and food cooked in camp ovens by a person employed by Winton dressed in the character costuming of a swagman. From about March 1995 to April 1995, a store was established in the main street of Winton offering a range of products, brochures and material promoting the celebrations and the town of Winton. Products available for sale included stubby holders, pannikin or tin cups, tea towels, T-shirts, teaspoons, postcards and caps. The tin cup, for instance, had “Waltzing Matilda Centenary Winton Queensland 1895-1995” printed on the outside of it, and the tea towel had a stylized swagman set against a depiction of the Southern Cross constellation under which the words “Waltzing Matilda Centenary Winton Queensland 1895” appeared. In March 1995 plans for the design and development of a permanent attraction in the town of Winton celebrating the Song, to be known as the Waltzing Matilda Centre (“the Centre”), were prepared. In October 1996 Winton decided to construct and operate the Centre. In February 1997 the foundation stone for the Centre was laid. On 28 August 1997 a logo for the Centre was finalised and it has been used since then. From October 1997 Winton conducted pre-opening advertising and publicity for the Centre. In particular, in October 1997, Winton circulated a brochure calling attention to “The Waltzing Matilda Centre”. The brochure contains the following reference to an aspect of the proposed activities of Winton at the Centre:“Savour old fashioned, home baked bush fare at the Country Kitchen”

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

The Company was formed in January 1999. Since its formation, it has operated the Centre, including the eating establishment called the “Coolibah Country Kitchen”.the decision of the primary judge The primary judge considered that the publication of the Advertisement was evidence of “an existing intention to offer or supply goods bearing the mark in trade” and concluded that there was, in November 1997, a genuine intention to offer to supply food stuffs and restaurant services bearing the mark “Waltzing Matilda”. His Honour considered that the use of the words “Country Kitchen” did not defeat that conclusion, in the same way that the description “Waltzing Matilda Restaurant” or “Waltzing Matilda Cafe” would be a use by Ms Lomas of the Trade Mark in relation to goods or services within the classes in respect of which the application was made. His Honour found that Winton used the Trade Mark in relation to the Centre and rejected the contention of Ms Lomas that the relevant marks were “The Waltzing Matilda Centre” and “Waltzing Matilda Centenary Celebrations”. Consistently with that conclusion, his Honour considered that, in the Advertisement, the Trade Mark was used rather than the mark “Waltzing Matilda Country Kitchen”. His Honour concluded that the goods and services of that prior use of the Trade Mark by Winton were the same as those in the Application, or were at least “the same kind of thing”, referring to In Re Hicks’ Trademark (1897) 22 VLR 636 at 640. Accordingly, his Honour found that, since Winton had used the Trade Mark before the Priority Date, Winton was the owner of the Trade Mark as at the Priority Date and that, therefore, Ms Lomas was not the owner of the Trade Mark. Accordingly, his Honour held that the opposition should succeed in so far as it was based on s 58 of the Act. GROUNDS OF APPEAL The questions that would be raised on appeal are limited to the operation of s 58 of the Act. Ms Lomas formulated four so-called errors on the part of the primary judge as follows:(1)His Honour erred in concluding that there was use of the Trade Mark in relation to country kitchen services since, if there was use of a trade mark by Winton before the Priority Date, the trade mark used was “Waltzing Matilda Country Kitchen”. (2)Any such use as was made of the Trade Mark in the Advertisement was not use of the Trade Mark such as would give ownership of that trade mark to Winton.(3)Contrary to his Honour’s conclusion, an inference should not be drawn that there was an intention to use the Trade Mark as at the Priority Date since Winton’s intention as at the date of publication of the Advertisement had changed by the time of commencement of the operation of the Centre in March 1998.(4)The only services in Class 42 in respect of which there was prior use of the Trade Mark in relation to country kitchen services were:“The establishment, operation and conduct of outlets, venues and facilities for the supplying and provision of meals and refreshments, including restaurants, cafes, food outlets, meal rooms, dining venues, eateries, cafeterias, canteens, snack bars, take away stores and fast food outlets.”Accordingly, any prior use by Winton found by the primary judge was not such as to extend to the following services in Class 42:“Providing food stuffs and beverages to the said outlets, venues and facilities; catering services; advisory and consultancy services pertaining to the said services.”USE OF THE TRADE MARK BY WINTON

Ratio Decidendi

Legal Principle Established

Under s 197, on hearing an appeal against a decision of the Registrar, the Federal Court may, among other things, do any one or more of the following:·admit further evidence orally or on affidavit or otherwise;·permit the examination and cross examination of witnesses;·affirm, reverse or vary the Registrar’s decision;·give any judgment or make any order that, in all the circumstances, it thinks fit.Under s 195(2), except with the leave of the Federal Court, an appeal does not lie to the Full Court of the Federal Court against a judgment of a single judge of the Federal Court in the exercise of its jurisdiction to hear and determine appeals from decisions of the Registrar. As we have said, this is an application for leave under s 195(2). considerations relevant to LEAVE TO APPEAL By reason of s 24(1A) of the Federal Court of Australia Act 1976 (Cth), leave is required for any appeal against an interlocutory decision of a single judge of the Court. However, the requirement for leave to appeal is not a requirement that a particular test be satisfied. The jurisdiction to grant leave to appeal is discretionary and it is inappropriate to formulate rigid rules that could constrain the exercise of that discretion. Each application for leave under s 24(1A) should be dealt with in accordance with its own special circumstances. Similar considerations apply in relation to an application for leave to appeal under s 195(2) of the Act. Nevertheless, the Court should be studious in its examination of the questions likely to arise on appeal, before refusing leave to appeal from an order of a single judge where an opponent has been successful. The Court should be slow to shut out an applicant for a trade mark who has had only one judicial consideration of entitlement to the grant of the trade mark. Before refusing leave, the Court should be satisfied that it is clear beyond doubt that there has been no error and that any trade mark, if granted, should be expunged – see Imperial Chemical Industries PLC v EI Dupont De Nemours & Co [2002] FCAFC 264 paragraphs [7] to [10]. No submissions were addressed to the Court concerning the standard to be applied by a single judge in considering an appeal under s 56 of the Act. The presence of s 195(2) suggests that a parallel should be drawn with the scheme of appeals in opposition proceedings under the Patents Act 1990 (Cth). On that basis, on appeal under s 56, the Court should consider whether the trade mark should clearly not be registered. Only if so satisfied should the Court decide to uphold an opposition. The fact that leave to appeal from the decision of a single judge is required indicates the quasi summary nature of an opposition proceeding. An unsuccessful opponent would always have the opportunity to bring an expungement proceeding if the opposition proceeding fails. In an expungement proceeding, the validity of a trade mark can be fully explored. That is a reason for concluding that there should not be a full exploration of the prospective validity of a trade mark on an appeal in an opposition proceeding.