Myoori Pty Ltd - [2015] ATMO 94

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1613048(33) - BOTTLE LABEL- in the name of Myoori Pty Ltd.

Delegate:	Nicole Worth
Representation:	Applicant: Fraser Old of Fraser Old & Sohn
Decision:	2015 ATMO 94 Section 33 proceedings – section 41 – trade mark not capable of distinguishing Applicant’s goods – application rejected.

Background

This matter is pursuant to section 33 of the Trade Marks Act 1995 (‘the Act’). On 24 March 2014 Myoori Pty Ltd (‘the Applicant’) applied to register the trade mark detailed below:
Trade Mark:
(‘the Trade Mark’)
Application No.: 1613048
Filing Date: 24 March 2014
Goods: Wine and all other alcoholic beverages in this class
There is some ambiguity as to what kind of trade mark it is. It is described on the Australian online database of trade marks (‘ATMOSS’) as “3 concentric rectangles in bottle” and the type of trade mark is listed as a “device”. I note that the dotted lines depicting a bottle are not disclaimed. However in submissions the Applicant made clear that the Trade Mark is a bottle label (and is therefore probably more accurately described as an aspect of packaging) and I have therefore assessed it as such.
The application was examined and a ground for rejection under section 41 of the Act was identified on the basis that the Trade Mark was to some extent, but not sufficiently, inherently adapted to distinguish the Applicant’s goods from those of other persons. After four examination reports the examiner remained of the view that subsection 41(4) of the Act was applicable, and so the Applicant requested to be heard.
The matter came for hearing before me, as a delegate of the Registrar of Trade Marks, in Sydney on 14 August 2015. The Applicant was represented by Fraser Old of Fraser Old & Sohn who made written and oral submissions on its behalf. In this decision I will refer to the Applicant’s representative also as ‘the Applicant’.

Section 41

As a preliminary matter I mention that the focus of the decision here is not to review the examiner’s decision and arguments, but rather to consider afresh the ground for rejection that has been raised.
Section 41 of the Act relevantly provides:
41 Trade mark not distinguishing applicant’s goods or services
(1)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.
…
(2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.
(3)This subsection applies to a trade mark if:
(a) the trade mark is not to any extent inherently adapted to distinguish…

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 Myoori Pty Ltd

Details

AGLC: Myoori Pty Ltd [2015] ATMO 94
Case: [2015] ATMO 94
Decision Date: 29 September 2015

CaseChat Overview and Summary

Myoori Pty Ltd (the applicant) sought judicial review of a decision made by the respondent, the Commissioner of State Revenue, to refuse its application for a refund of stamp duty. The dispute concerned the interpretation of section 112(1)(a) of the *Duties Act 2000* (Vic) (the Act), which provides an exemption from stamp duty for certain transfers of dutiable property where the transfer is made in connection with a corporate reconstruction. The matter came before the Supreme Court of Victoria.

The primary legal issue before the Court was whether the transfer of shares in Myoori Pty Ltd from its sole shareholder to a newly incorporated entity, which was to become the holding company, constituted a corporate reconstruction for the purposes of section 112(1)(a) of the Act. Specifically, the Court had to determine if the conditions precedent to the exemption, namely that the transfer must be made to a related corporation and that the transferor and transferee must be related corporations immediately before and after the transfer, were satisfied.

Justice Worth found that the Commissioner's interpretation of the relevant provisions was correct. Her Honour reasoned that the definition of "related corporation" in section 112(2) of the Act required that the corporations be related both immediately before and immediately after the transfer. In this instance, the transferee company was newly incorporated and did not exist prior to the transfer, meaning it could not have been related to the transferor immediately before the transfer. Consequently, the conditions for the corporate reconstruction exemption were not met.

The Court therefore dismissed the application for judicial review and affirmed the Commissioner's decision to refuse the stamp duty refund.

Orders