Mantra IP Pty Ltd v Spagnuolo

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FEDERAL COURT OF AUSTRALIA

Mantra IP Pty Ltd v Spagnuolo [2012] FCA 769

Citation: Mantra IP Pty Ltd v Spagnuolo [2012] FCA 769
Appeal from: Danilo Spagnuolo v Mantra IP Pty Ltd [2010] ATMO 110
Parties: MANTRA IP PTY LTD ACN 129 980 981 v DANILO SPAGNUOLO AND REGISTRAR OF TRADE MARKS
File number: QUD 505 of 2010
Judge: REEVES J
Date of judgment: 19 July 2012
Catchwords:

TRADE MARKS – appeal from a decision of a delegate of the Registrar of Trade Marks under s 56 Trade Marks Act 1995 (Cth) – consideration of whether a word mark is capable of distinguishing designated services from the services of others – consideration of whether a word mark is inherently adapted to distinguish designated services – effect of use of the word mark by appellant and predecessors in title

TRADE MARKS – consideration of whether a word mark connotes an iconic building or geographical location such that its use in respect of the designated services would be likely to deceive or cause confusion

TRADE MARKS – trade mark not to be registered if use of trade mark would be contrary to law – consideration of whether the use of a word mark would be contrary to s 18 Australian Consumer Law in that it would be likely to mislead or deceive

TRADE MARKS – consideration of whether appellant is the owner of a word mark under s 58 Trade Marks Act 1995 (Cth)

TRADE MARKS – onus of proof in the determinations required under s 41 Trade Marks Act 1995 (Cth) – effect of the presumption of registrability in s 33 Trade Marks Act 1995 (Cth) – reconciliation of presumption of registrability and steps under s 41 in an appeal under s 56 Trade Marks Act 1995 (Cth)

Legislation: Trade Marks Act 1995 (Cth)
Place Names Act 1994 (Qld)
Cases cited: Advanced Hair Studio of America Pty Ltd v Registrar of Trade Marks (1988) 12 IPR 1
Bayer Pharma Pty. Ltd v Farbenfabriken Bayer Aktien-Gesellschaft (1965) 120 CLR 285
BlountInc v Registrar of Trade Marks (1998) 83 FCR 50
Chancellor, Masters and Scholars of the University of Oxford (trading as Oxford University Press) v Registrar of Trade Marks (1990) 24 FCR 1
Chocolaterie Guylian NV v Registrar of Trade Marks (2009) 180 FCR 60; [2009] FCA 891
Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511
Health World Ltd v Shin-Sun Australia Pty Ltd (2005) 64 IPR 495; [2005] FCA 5
Jafferjee v Scarlett (1937) 57 CLR 115
Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks (2002) 122 FCR 494; [2002] FCAFC 273
Lomas v Winton Shire Council (2003) AIPC 91-839; [2002] FCAFC 413
Mantra Group Pty Ltd v Tailly Pty Ltd (No 2) (2010) 183 FCR 450; [2010] FCA 291
Mark Foy’s Limited v Davies Coop and Company Limited (1956) 95 CLR 190
McCorquodale v Masterton (2004) 63 IPR 582; [2004] FCA 1247
MID Sydney Pty Ltd v Australian…
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Details
Case
[2012] FCA 769
Decision Date

CaseChat Overview and Summary

The appeal in Mantra IP Pty Ltd v Spagnuolo involved a dispute over the registration of the word mark "Q1" in relation to various classes of designated services. The case was heard by the Federal Court of Australia, where the appellant, Mantra IP, sought to overturn a decision by the Registrar of Trade Marks that had rejected their applications to register the "Q1" mark. The central legal issues revolved around the distinctiveness and registrability of the "Q1" mark, the potential for deception or confusion due to its use, and the onus of proof in opposition proceedings. The court also had to consider whether the "Q1" mark was inherently adapted to distinguish the services and if its use would be contrary to the Australian Consumer Law.

In its decision, the court examined whether the "Q1" mark was capable of distinguishing the appellant's services from those of others. It found that the word mark was inherently adapted to distinguish the designated services and that there were no grounds for rejecting the applications. The court also determined that the appellant had established prior use of the mark, thus satisfying the requirements for claiming prior use. Furthermore, the court considered whether the use of the mark would be likely to deceive or cause confusion, and concluded that it would not. The onus of proof in opposition proceedings and the reconciliation of the presumption of registrability with the steps required under the Trade Marks Act 1995 were also examined.

The court's reasoning led to the conclusion that the "Q1" mark was inherently adapted to distinguish the services and that there were no valid grounds for opposition. Consequently, the court ordered the reversal of the Registrar's decision and the dismissal of the opposition notices. The court also considered the form of orders to be made, taking into account the unresolved opposition proceedings. It was decided that the registration of the "Q1" mark would proceed conditionally, pending the resolution of other opposition proceedings. This approach ensured that the court's decision would not foreclose on the other ongoing oppositions.

The final orders of the court included setting aside the Registrar's decision, proceeding with the registration of the "Q1" mark in specified classes on condition that all pending oppositions be withdrawn or dismissed, and directing the respondent to pay the costs of the proceedings. This decision ensured that the appellant's applications would proceed while considering the context of the unresolved oppositions.

Orders

Orders of the court

1. The decision of the Registrar of Trade Marks of 5 November 2010, in the opposition by the respondent to the “Q1” trade mark applications in the name of the appellant, be set aside.

2. Australian Trade Mark Application 1228706 for the word mark “Q1” in class 36 proceed to registration, conditional on the withdrawal or dismissal of all pending opposition proceedings in relation to that application.

3. Australian Trade Mark Application 1228707 for the word mark “Q1” in class 39 proceed to registration, conditional on the withdrawal or dismissal of all pending opposition proceedings in relation to that application.

4. Australian Trade Mark Application 1228708 for the word mark “Q1” in classes 35 and 43 proceed to registration, conditional on the withdrawal or dismissal of all pending opposition proceedings in relation to that application.

5. The respondent pay the costs of the Registrar of Trade Marks for complying with the Court’s direction set out in the Order dated 12 August 2011 on a party/party basis.

6. The respondent pay the appellant’s costs of the proceedings and costs of the opposition proceedings below, on a party/party basis.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

Based on this evidence, I find that Sunleisure made sufficient use of the “Q1” word mark, as a trade mark, prior to the priority date of 10 March 2008, to establish a claim to prior use as an owner for the purposes of s 58 of the Act. It follows that I do not consider that this ground of opposition provides any basis for rejecting Mantra IP’s applications.CONCLUSION In summary, I have concluded that the word mark “Q1” is alone inherently adapted to distinguish Mantra IP’s Designated Services and there is no other ground for the rejection of Mantra IP’s applications to register the “Q1” word mark in relation to its Designated Services. I therefore propose to make appropriate orders to reverse the delegate’s decision and dismiss Mr Spagnuolo’s notices of opposition to Mantra IP’s application.THE APPROPRIATE FORM OF THE ORDERS During the course of these proceedings, it emerged that there were a number of other unresolved notices of opposition to Mantra IP’s applications, apart from Mr Spagnuolo’s notices. This gave rise to a question about the form of the orders I should make, should Mr Spagnuolo be unsuccessful in these proceedings. This issue arose because of a perceived tension between the provisions of ss 55(1) and 197 of the Act. Section 55(1) provides as follows:(1)Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:(a)to refuse to register the trade mark; or(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;having regard to the extent (if any) to which any ground on which the application was opposed has been established.… Section 197 provides as follows:On hearing an appeal against a decision or direction of the Registrar, the Federal Court may do any one or more of the following:(a)admit evidence orally, or on affidavit or otherwise;(b)permit the examination and cross-examination of witnesses, including witnesses who gave evidence before the Registrar;(c)order an issue of fact to be tried as it directs;(d)affirm, reverse or vary the Registrar’s decision or direction;(e)give any judgment, or make any order, that, in all the circumstances, it thinks fit;(f)order a party to pay costs to another party. The concern was that this appeal should be disposed of in a way that would not foreclose on the unresolved notices of opposition currently before the Registrar. Because this concern may have been affected by the practice adopted within the Trade Marks Office, I requested the Registrar to make submissions on the issue. Among other things, those submissions set out the approach the Registrar had adopted in the past when there were such multiple notices of opposition to an application. The Registrar’s submissions rightly pointed out that:… Where there [are] multiple oppositions still to be decided and the Court decides to reverse the reviewable decision, the terms of that decision should be sensitive to the context. Where the Registrar’s decision refusing to register (i.e. upholding an opposition) is reversed, the only alternative decision available under s 55(1) is to decide to register the trade mark. In light of the outstanding oppositions, that decision to register needs to be conditional upon the resolution of those other opposition proceedings.

Ratio Decidendi

Legal Principle Established

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