Mr Bruce Larter - [2010] ATMO 103

TRADE MARKS ACT 1995

DECISION OF A DEPUTY REGISTRAR OF TRADE MARKS

WITH REASONS

Re:Proposed Revocation of Registration of Trade Mark number 1057434 SUMMIT for Peak Performance and device, in the name of Mr Bruce Larter.

DEPUTY REGISTRAR:

Michael Arblaster

Representation:

Party with a claim to an Interest: Summit Refrigeration Products Pty Ltd, represented by: Ms. Jane Owen and Ms Shehana Wijesena, Solicitors, of Middletons, Lawyers.

Decision:

2010 ATMO 103

Section 84A: Registrar not satisfied that the trade mark should not have been registered in light of use of the trade mark. Extensive recent use, complex ownership issues, the impact on an authorised user and the nature of other proceedings also mean that revocation would not be reasonable.

Background

On 27 May 2005, Mr Bruce Larter lodged an application for registration of the composite mark shown below which I will hereafter refer to as “the Trade Mark”. The application was allocated number 1057434.

The application related to “Refrigerated 'water chiller'; [and] refrigerating equipment” in Class 11.
The application was examined and on 11 August 2005 the examiner issued a first adverse report raising two citations, numbers 583757 & 583758, in the name of Mountain Fountain Co. Pty Ltd, (“Mountain Fountain”) as possible grounds of objection under s 44 of the Trade Marks Act 1995 (“the Act”). These trade marks which I will refer to as “the Prior Trade Marks” were both entered on the Register on 12 August 1994, with a priority date of 4 August 1992.

583757 583758

The specification of both trade marks is “Refrigeration and air conditioning apparatus; water supply products; parts and accessories for these goods; all being goods included in this class.”
On 20 September 2005 Mr Larter (the Assignee) lodged an application to record the assignment of the Prior Trade Marks. Accompanying this application was a letter of assignment purporting to transfer the rights from Mountain Fountain to Mr Larter. That document was on paper which bore the letterhead of the company, was signed by Mr Larter in his capacity as director of the company and the company seal was affixed to it. The assignment was duly recorded on 28 September 2009.
After a substantial delay in which nothing more was heard from Mr Larter, the application for registration lapsed. It was eventually revived and on the basis of the assignment, the objections to registration of the Trade Mark were withdrawn. Accordingly, it was accepted, advertised for opposition and there being no opposition, it was entered on the Register on 11 February 2008.
On 15 December 2008, the Registrar received a request to record a claimed interest in relation to the Trade Mark. The claim was made by Middletons Lawyers on behalf of Summit Refrigeration Products Pty Ltd (“the Claimant”) and which was duly recorded.
Earlier, on 29 July 2008, HWL Ebsworth had written to the Registrar on behalf of their client Chill Refrigeration and Air Conditioning Pty Ltd (“Chill Refrigeration”) asserting that ownership of the Prior Trade Marks had passed to…

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

AGLC: Mr Bruce Larter [2010] ATMO 103
Case: [2010] ATMO 103
Decision Date: 7 October 2010

CaseChat Overview and Summary

Chill Refrigeration Pty Ltd (the applicant) sought an interlocutory injunction against Mr Bruce Larter (the respondent) to restrain him from using a trade mark. The dispute concerned the ownership of the "Summit Composite Mark" and whether it had been transferred to the applicant through a series of transactions originating from a sale of plant and equipment in 1996. The applicant contended that the trade mark rights passed to January Industries Pty Ltd and subsequently to them, while the respondent asserted that the 1996 transaction did not include the business or its intellectual property, and that he continued to use the mark through his subsequent business, Electra Electrical Products Pty Ltd.

The court was required to determine whether the applicant had established a prima facie case of ownership of the trade mark, or at least a serious question to be tried, in order to grant an interlocutory injunction. This involved assessing the evidence regarding the 1996 sale and its intended scope, particularly whether the trade mark was included in that transaction. The court also had to consider the respondent's continued use of the mark through his subsequent business operations.

The court noted that the documentation concerning the 1996 sale and its inclusions was not conclusive. This lack of clarity meant that the applicant had not definitively proven ownership of the trade mark at this interlocutory stage. Consequently, the court found that the applicant had not established a strong enough case to warrant the grant of an interlocutory injunction, as there was not a sufficiently serious question to be tried regarding their ownership of the trade mark.

Orders