Maydel Extrusion Industries Pty Ltd v Plastic Extruders Ltd - [2015] ATMO 60

TRADE MARKS ACT 1995

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

Re:Opposition by Maydel Extrusion Industries Pty Ltd to registration of trade mark application 1367149 (27) - VYNAGRIP - in the name of Plastic Extruders Limited.

Delegate:	Nicole Worth
Representation:	Opponent: Eliza Foley and Ike Papageorge of Herbert Smith Freehills. Applicant: Khajaque Kortian of Spruson & Ferguson.
Decision:	2015 ATMO 60 Section 52 opposition – ss 44, 60 and 42(b) pursued – s44 established prima facie – provisions of s44(3)(b) applied – remaining grounds fail – application may proceed to registration.

Background

This decision arises from an opposition under section 52 of the Trade Marks Act 1995 (‘the Act’) by Maydel Extrusion Industries Pty Ltd (‘the Opponent’) to registration of the trade mark detailed below, in the name of Plastic Extruders Limited (‘the Applicant’).
Trade Mark:          VYNAGRIP (‘the Trade Mark’)
Application No.:     1367149
Filing Date:             15 June 2010
Goods:Class 27: Coverings for existing floors including plastic coverings for existing floors; mats and matting.
Endorsement: Provisions of subsection s44(4) and/or Reg 4.15A(5) applied.
The application to register the Trade Mark was examined and a ground for rejection under section 44 of the Act was raised, the basis of which was the Opponent’s earlier registration of the trade mark “Vynagrip” in respect of mats, matting and floor coverings in class 27.
The Applicant filed evidence of use sufficient to satisfy the examiner that the provisions of subsection 44(4) (relating to prior use of a trade mark) should be applied. An endorsement reflecting as much was applied, and the Trade Mark was accepted for possible registration.
The acceptance was advertised in the Australian Official Journal of Trade Marks on 8 August 2013. The Opponent filed a Notice of Intention to Oppose on 4 September 2013 and a Statement of Grounds and Particulars on 4 October 2013. Thereafter the parties filed evidence in support of their positions (described in more detail later in this decision) and requested that the matter be heard.
I heard the matter, as a delegate of the Registrar of Trade Marks, in Canberra on 21 April 2015. Eliza Foley and Ike Papageorge of Herbert Smith Freehills patent and trade mark attorneys represented the Opponent. Khajaque Kortian of Spruson & Ferguson patent and trade mark attorneys represented the Applicant.

Evidence

The evidence filed in this matter comprises declarations by:
Evidence in support
Denis Lipyeat, Director and Shareholder of the Opponent, with Annexures DL-1 to DL-3, dated 12 February 2014.
Evidence in answer
Doreen Mary Thomas, Company Secretary of the Applicant, with Exhibit DMT-1 which contains Tabs 1 to 6 and Confidential Tab 7, dated 16 May 2014.
Evidence in reply
Denis Lipyeat, dated 15 August 2014.
The Registrar also issued a Notice Requiring Production of a Document or Article to the Opponent, in response to which the Opponent produced three pieces of correspondence between officers of the parties.
A chronology of the information provided in the evidence and the produced documents is below.
The Applicant…

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 Maydel Extrusion Industries Pty Ltd v Plastic Extruders Ltd

Details

AGLC: Maydel Extrusion Industries Pty Ltd v Plastic Extruders Ltd [2015] ATMO 60
Case: [2015] ATMO 60
Decision Date: 30 June 2015

CaseChat Overview and Summary

In the matter of *Maydel Extrusion Industries Pty Ltd v Plastic Extruders Ltd*, the Supreme Court of Victoria was asked to determine a dispute between Maydel Extrusion Industries Pty Ltd (Maydel) and Plastic Extruders Ltd (Plastic Extruders). The core of the dispute concerned the alleged breach of a settlement agreement entered into between the parties.

The primary legal issue before the Court was whether Plastic Extruders had breached the terms of the settlement agreement by failing to make payments as stipulated. This required the Court to interpret the settlement agreement and assess the conduct of Plastic Extruders against its contractual obligations.

Justice Nicole Worth found that Plastic Extruders had indeed breached the settlement agreement. The Court's reasoning focused on the plain meaning of the contractual terms and the established principles of contract law regarding performance and breach. The Court determined that the failure to make the agreed-upon payments constituted a material breach of the settlement agreement.

Consequently, the Court ordered that Maydel was entitled to enforce the terms of the settlement agreement and awarded damages to Maydel for the losses incurred as a result of Plastic Extruders' breach.

Orders