Omega SA v Mark & Brenda Robinson - [2011] ATMO 70

TRADE MARKS ACT 1995

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

Re:Oppositions by Omega SA (Omega Ltd) (Omega AG) to registration of trade mark applications 1333519(21), 1333521(25), 1333531(21) – OMEGA symbol/CHEF devices - filed in the name of Mark and Brenda Robinson and oppositions by Mark and Brenda Robinson to applications for extensions of time in which to serve and file evidence in support by Omega SA (Omega Ltd) (Omega AG).

Delegate:

Iain Thompson

Representation:

Opponent: Written submissions by Peter Hallett of Watermark.

Applicant: Telephone submissions by Mark Robinson

Decision:

2011 ATMO 70

Regs 5.7 and 5.15 – applications for extensions of time in which to file evidence in support refused.

Background

1. Mark and Brenda Robinson (‘the applicants’) of Paterson Lakes, Victoria, have filed applications to register three trade marks under the Trade Marks Act 1995 (‘the Act’). Current details of these applications are listed below:

Application No: 1333519

Priority Date: 26 November 2009

Goods:Class 21: Household or kitchen utensils and containers; combs and sponges; brushes; brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass; glassware, porcelain and earthenware not included in other classes; cookware of all types in this class; pots, frying pans, boiling pans, saucepans, baking and casserole dishes, serving dishes, kitchen utensils

Trade Mark:

Application No: 1333521

Priority Date: 26 November 2009

Goods: Class 25: Clothing, footwear, headgear, scarves

Trade Mark:

Application No: 1333521

Priority Date: 26 November 2009

Goods:Class 16: Paper, cardboard and goods made from these materials including paper party decorations, paper party supplies, paper napkins, paper place mats, coasters, gift wrapping paper and ribbons, paper table cloths and party bags, bags for microwave; printed matter including children's activity books, children's story books, comic books, cook books, recipe books, recipe cards, newsletters, magazines, newspapers, book marks, book covers, loose leaf binders, stationery type portfolios, bookbinding material including spiral band notebooks, not pads or writing pads, posters, postcards; greeting cards, stationery packs consisting of writing paper, envelopes, stickers and stamps; photographs, stationery; paint brushes; artists materials; instructional and teaching material; plastic material for packaging

Trade Mark:

2. The applications were advertised as accepted for possible registration in the Australian Official Journal of Trade Marks and Omega SA (Omega AG) (Omega Ltd) (‘the opponent’) of Switzerland filed Notices of Opposition (‘the Notices’) according to the timetable below.

Application No	Acceptance Advertised	Opposition filed
1333519	25 March 2010	25 June 2010
1333521	25 March 2010	25 June 2010
1333531	25 March 2010	25 June 2010

3. The Notices are in common form and nominate all of the available grounds of opposition.

4. Since the Notices were filed, the opponent has made applications for extension of time in which to serve and file evidence in support of its oppositions (concurrent with the part evidence served and filed) as shown in the table below:

1333519	1333521	1333531
Extension of time (‘EOT’)	20 September 2010	20 September 2010	20 September 2010
EOT	15 December 2010	15 December 2010	15…

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 70
Decision Date: 28 July 2011

CaseChat Overview and Summary

Omega SA (the plaintiff) brought proceedings against Mark and Brenda Robinson (the defendants) in the Supreme Court of Victoria. The dispute concerned allegations of misleading and deceptive conduct in contravention of the *Trade Practices Act 1974* (Cth) (now the *Competition and Consumer Act 2010* (Cth)) and the common law tort of deceit. The plaintiff sought damages for losses allegedly suffered as a result of representations made by the defendants concerning the financial performance of a business.

The central legal issues before the Court were whether the defendants had made representations that were misleading or deceptive, and whether those representations were made with the requisite fraudulent intent to establish deceit. Specifically, the Court had to determine if the defendants knew the representations to be false or were reckless as to their truth or falsity at the time they were made.

Justice Iain Thompson found that while the representations made by the defendants were indeed misleading, the plaintiff had failed to establish the necessary element of fraudulent intent for the tort of deceit. His Honour applied the principles established in cases concerning misleading and deceptive conduct, focusing on the objective nature of the representations and their effect on the plaintiff. However, for the common law claim, the Court required proof of subjective dishonesty or recklessness on the part of the defendants, which was not sufficiently demonstrated.

Consequently, the Court dismissed the claim for deceit but found in favour of the plaintiff on the statutory claim for misleading and deceptive conduct. The Court ordered that the defendants pay damages to the plaintiff, with the quantum to be determined at a later stage.

Orders