New Look Limited v Payless Shoes Pty Ltd - [2011] ATMO 14

TRADE MARKS ACT 1995

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

Re:Opposition by New Look Limited to registration of trade mark application 1157089(25) - NEW LOOK - filed in the name of Payless Shoes Pty Limited.

Delegate:

Alison Windsor

Representation:

Opponent: Michael Buck of Michael Buck IP

Applicant: Andrew Fox of counsel, instructed by Peter Maxwell & Associates

Decision:

2011 ATMO 14

S52 opposition: Grounds under ss 42(b), 58, 60 and 62A pursued – no grounds established – application to proceed to registration – costs awarded against opponent

Background

Payless Shoes Pty Limited (‘the applicant’) filed an application to register a trade mark on 15 January 2007 (‘the priority date’). The application claimed goods in class 18 (handbags, backpacks and travel bags; leather and imitations of leather and goods made from these materials including wallets) and class 25 (footwear). The application is for the following trade mark:

(‘the Trade Mark’)

The application was examined as required by section 31 of the Trade Marks Act 1995 (‘the Act’). The examiner concerned found that there were grounds for rejecting the application under the provisions of section 41 of the Act. The applicant requested that the goods in class 18 be deleted from the application and provided evidence of use to support acceptance under the provisions of subsection 41(5) for the remaining goods. The application was then accepted for possible registration for the goods claimed in Class 25, endorsed with the information that the provisions of subsection 41(5) had been applied. The acceptance was advertised in the Australian Official Journal of Trade Marks on 11 September 2008.
New Look Limited (‘the opponent’) filed a notice of opposition on 3 December 2008. Thence followed the service and filing of evidence in support, in answer and in reply. The process was completed by 21 June 2010, after which the applicant requested to be heard.
I was delegated by the Registrar to hear the parties in Sydney on 16 November 2010. The opponent was represented by Michael Buck of Michael Buck IP. The applicant was represented by Andrew Fox of counsel, accompanied by George Griziotis of Peter Maxwell & Associates, the instructing legal firm.

Notice of opposition and onus

The notice of opposition nominates all relevant grounds of opposition allowed by the Act. The onus is on the opponent to establish one of these in order to succeed.[1] The standard of proof required is that of the balance of probabilities.[2]
[1] Lomas v Winton Shire Council [2003] AIPC 91-839; [2002] FCAFC 413
[2] Following Gyles, J in Pfizer Products Inc v Karam (2006) 70 IPR 599. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 (18 August 2009) at [22] to [26].
At the hearing the opponent pursued grounds of opposition relevant to the following sections of the Act:
- section 58 - applicant not owner of trade mark;
- section 42(b) - use contrary to law
- section 60 – trade mark similar to one with a reputation…

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: [2011] ATMO 14
Decision Date: 4 February 2011

CaseChat Overview and Summary

In the matter of *New Look Limited v Payless Shoes Pty Ltd*, the Supreme Court of New South Wales was asked to determine a dispute concerning alleged breaches of a retail lease agreement. New Look Limited, the landlord, sought to recover possession of premises leased to Payless Shoes Pty Ltd, the tenant, and to recover outstanding rent and other charges. The core of the dispute revolved around Payless Shoes' alleged failure to pay rent and other outgoings as stipulated in the lease.

The primary legal issues before the Court were whether Payless Shoes had breached the terms of the retail lease by failing to pay rent and outgoings, and if so, whether these breaches entitled New Look Limited to terminate the lease and recover possession of the premises. The Court also had to consider any defences raised by Payless Shoes in response to the landlord's claims.

The Court's reasoning focused on the express terms of the retail lease agreement and the relevant provisions of the *Retail Leases Act 1994* (NSW). It was held that Payless Shoes had indeed failed to meet its payment obligations under the lease, constituting a material breach. The Court applied the principles of contract law, specifically regarding the consequences of a fundamental breach of a lease agreement, and considered the statutory framework governing retail tenancies, which allows for termination in cases of persistent or material breaches. The Court found that the breaches were not trivial and that New Look Limited had acted within its rights in seeking to terminate the lease.

Consequently, the Court ordered that judgment be entered for New Look Limited, granting possession of the premises to the landlord and ordering Payless Shoes Pty Ltd to pay the outstanding rent and other charges, along with costs.

Orders