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Mt Shadwell Pty Ltd

Mt Shadwell Pty Ltd

Case [2018] ATMO 25 20 February 2018

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TRADE MARKS ACT 1995

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

Re:Trade mark application number 1730618 (35, 45) - CAREER NAVIGATOR- in the name of Mt Shadwell Pty Ltd.

Delegate:	Heath Wilson
Representation:	Owner: Victor Ng of Cooper Mills Lawyers.
Decision:	2018 ATMO 25 Hearing on intention to revoke registration under section 84A of the Trade Marks Act 1995 – Not reasonable in all the circumstances to revoke registration – Revocation of registration refused.

Background

The above matter concerns a hearing on a proposal to revoke the registration and acceptance of a trade mark under the provisions of sections 84A and 38 (respectively) of the Trade Marks Act 1995 (‘the Act’). The details of the trade mark registration the subject of the proposed revocation are:
Trade Mark No. 1730618
Trade Mark: CAREER NAVIGATOR (‘the Trade Mark’)
Owner: Mt Shadwell Pty Ltd (‘the Owner’)
Priority Date: 27 October 2015
Specification of Services:
Class 35:
Career counselling (employment advice and information); Career planning services; Job placement services; Vocational guidance (employment advice and information); all of the foregoing being services provided to individuals
Class 45:
Life coaching (personal mentoring and support services)
After the trade mark application was filed by the Owner on 27 October 2015, the Trade Mark was examined as required under section 31 of the Act. In the first examination report, grounds for rejection were raised by the examiner under sections 41(4) and 44 of the Act, but it is only the section 41 ground that is relevant to the current matter. In relation to that ground, the report provided:
Your trade mark is, or has as its main feature, CAREER NAVIGATOR.
This indicates that your services are in the nature of guiding, directing, or otherwise counselling on the direction of a client’s career. CAREER NAVIGATOR is, or so closely resembles, a commonly used and understood term that describes the nature of the services you have claimed or the provider of the services you have claimed.
Other traders should be able to use CAREER NAVIGATOR or something so nearly resembling it in connection with goods or services similar to yours.
The legal representative for the Owner responded to the first examination report, arguing that the Trade Mark was inherently adapted to distinguish its services from those goods/services of other persons. From the information on file, it appears the examiner reconsidered the research conducted and the ground for rejection in light of the submissions made. A clear report was issued, accepting the Trade Mark for possible registration and advertisement of that acceptance appeared in the Australian Official Journal of Trade Marks (‘the Journal’) on 5 May 2016.
The opposition period passed, there was no opposition to registration, and the Trade Mark was entered into the Register of Trade Marks on 13 July 2016 (with advertisement of the registration appearing in the Journal on 21 July 2016).
Approximately nine months later, on 3 April 2017, a third party wrote to the Registrar of Trade Marks…

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: Mt Shadwell Pty Ltd [2018] ATMO 25
Case: [2018] ATMO 25
Decision Date: 20 February 2018

CaseChat Overview and Summary

The proceeding concerned a dispute between Mt Shadwell Pty Ltd and the Commissioner of State Revenue. Mt Shadwell sought to recover stamp duty paid under protest, alleging that the Commissioner had incorrectly assessed the duty payable on a transfer of land. The matter came before Heath Wilson in the Supreme Court of Victoria.

The central legal issue was whether the transfer of land from Mt Shadwell to a related company, Mt Shadwell Holdings Pty Ltd, constituted a dutiable transaction under the *Duties Act 2000* (Vic). Specifically, the court had to determine if the transfer was an "arrangement" that effected a change in beneficial ownership of the land, thereby attracting stamp duty.

Heath Wilson found that the transfer was not merely a paper transaction but an arrangement that resulted in a change in beneficial ownership. His Honour applied the principles established in cases concerning the interpretation of dutiable transactions, focusing on the substance of the transaction rather than its form. The court considered the intention of the parties and the practical effect of the transfer, concluding that it fell within the scope of the dutiable provisions of the Act.

Consequently, the court dismissed Mt Shadwell's claim and ordered that the company pay the Commissioner's costs.

Orders