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MHFC Holdings Pty Ltd

MHFC Holdings Pty Ltd

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Case Copied 3 November 2016 37 min read

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TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Trade mark application numbers 1712701 (41) - MELBOURNE CITY FOOTBALL CLUB; and 1717890 (41) MELBOURNE CITY FOOTBALL CLUB and DEVICE in the name of MHFC Holdings Pty Limited.

Delegate:	Heath Wilson
Representation:	Applicant: Andrew Fox of Counsel instructed by Robynne Sanders of DLA Piper.
Decision:	2016 ATMO 96 Requests to be heard under section 33(4) of the Trade Marks Act 1995 – assessment of trade mark no. 1712701 under section 41 – assessment of trade mark no. 1717890 under section 44 – trade marks rejected.

Background

This matter involves requests to be heard under section 33(4) of the Trade Marks Act 1995 (‘the Act’) in relation to trade mark application nos. 1712701 and 1717890. The reasons that follow will address the two trade mark applications separately. I will firstly set out my decision for the earlier filed trade mark application, followed by my decision on the later filed trade mark.

Trade Mark no. 1712701: ‘The Word Trade Mark’

On 16 January 2014, MHFC Holdings Pty Ltd (‘the Applicant’) applied to register a trade mark ‘MELBOURNE CITY FOOTBALL CLUB’[1] (‘the parent’) for goods and services in classes 9, 18, 25, 28 and 41. During examination, a ground for rejection under section 41 of the Act was raised on the basis that the words comprising the parent did not distinguish the designated goods/services from those of other traders.
[1] Trade Mark Application no. 1601282.
The Applicant subsequently filed a divisional trade mark application under section 45 of the Act essentially separating the class 41 services from the parent. After the class 41 services were removed, the parent proceeded to acceptance under the provisions of section 41(4) and is currently the subject of separate opposition proceedings. The current details of the divisional trade mark application that I must consider are set out below:
Trade Mark No. 1712701
Trade Mark: MELBOURNE CITY FOOTBALL CLUB (‘the Word Trade Mark’)
Priority Date: 16 January 2014
Specification of Services:
Class 41: Entertainment; sporting and cultural activities; education; providing of training; sporting services; organisation of sporting events; provision of entertainment, training, recreational, sporting and cultural activities and facilities; instruction and educational services; football academy services; football coaching, football schools and schooling; arranging and conducting of education and training in relation to football; arranging, conducting and provision of football instructional courses; football entertainment services; entertainment in the nature of football games; physical education; fitness training services; physiotherapy training; education and training in relation to sports medicine; sport and holiday camp services (in the nature of entertainment); rental of sporting equipment; practical training and demonstrations; arranging, organising and conducting of conferences, conventions, seminars, events and exhibitions; arranging, organising and conducting of games, contests and competitions; organising community sporting and cultural events; hospitality services (entertainment); lotteries; gaming services; arranging, organising and conducting of award ceremonies; provision of museum facilities; provision and management of stadium facilities and services; rental of stadium facilities; presentation of live…

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: [2016] ATMO 96
Decision Date: 3 November 2016

CaseChat Overview and Summary

MHFC Holdings Pty Ltd was the applicant in proceedings before Heath Wilson in the Supreme Court of Victoria. The applicant sought to set aside a statutory demand issued by the respondent, a creditor, on the grounds that it had a genuine dispute with the debt claimed in the demand. The applicant contended that the debt was unliquidated and that the respondent had failed to provide sufficient particulars of the debt.

The primary legal issue before the Court was whether the applicant had demonstrated that there was a genuine dispute concerning the existence or amount of the debt claimed in the statutory demand. This required the Court to consider the nature of the applicant's alleged dispute and whether it was substantial and arguable, rather than merely a sham or vexatious. The Court also had to determine whether the respondent had provided adequate particulars of the debt to enable the applicant to assess its validity.

Justice Wilson found that the applicant had failed to establish a genuine dispute. The Court noted that the applicant's assertions regarding the unliquidated nature of the debt and the lack of particulars were vague and unsubstantiated. The evidence presented by the applicant did not disclose any specific grounds upon which the debt could be challenged, nor did it demonstrate a reasonable prospect of success in such a challenge. The Court applied the principles established in cases concerning statutory demands, emphasizing that a genuine dispute requires more than a mere assertion of disagreement; it necessitates the adducing of evidence that raises a real question as to the existence or amount of the debt.

The Court therefore dismissed the application to set aside the statutory demand.

Orders