Overdrive Holdings Pty Ltd v Bram Lagrou - [2011] ATMO 72

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Potential opposition by Overdrive Holdings Pty Ltd to registration of trade mark application 1366301(41) - XSELL PARTNERS INTERNATIONAL - filed in the name of Bram Lagrou.

Delegate:

Heath Wilson

Representation:

Potential Opponent: Rohan Wallace of Rohan Wallace Patent and Trademark Services.

Applicant: No appearance.

Decision:

2011 ATMO 72

Regulation 5.2(2)(b) of the Trade Marks Regulations 1995 – Application for an extension of time to file a notice of opposition – application refused.

Background
1. Bram Lagrou (‘the Applicant’) applied on 20 June 2010 for registration of the following trade mark no. 1366301:

Class: 41 Adult training; arranging and conducting of workshops (training); business training consultancy services; business training services; commercial training services; conducting training seminars; conducting workshops (training); mentoring (training); personal development training; providing courses of training; staff training services; training consultancy

2.     Following examination, the trade mark was advertised as accepted in the Australian Official Journal of Trade Marks on 21 October 2010. The ensuing three month opposition period elapsed on 21 January 2011.
3.     On 15 March 2011, Overdrive Holdings Pty Ltd (‘the Potential Opponent’) filed an application for an extension of time of two months in which to file a notice of opposition to the registration of the above trade mark.
4.     The ground under which the application is made is that contained within regulation 5.2(2)(b) of the Trade Marks Regulations 1995 (‘the Regulations’). Regulation 5.2(2) provides:
(2)An application for an extension of time may be made within the period for filing a notice of opposition referred to in regulation 5.1 on 1, or more than 1, of the following grounds and on no other ground:
(a)an error or omission by an employee;
(b)an error or omission by the person applying for the extension of time, or by the person’s agent;
(c)circumstances beyond the control of the person applying for the extension of time;
(d)the conduct of genuine negotiations between that person and the applicant for registration;
(e)the undertaking of genuine research to decide:
(i)whether opposition is justified; or
(ii)on the grounds of opposition.

5. Anna Zammit, Director of the Potential Opponent explains that the existence of the Applicant’s trade mark came to her attention after the statutory opposition period had ended. Ms Zammit declares:
I had cause to meet with Rohan Wallace, Patent and Trade Marks Attorney of Rohan Wallace Patent and Trademark Services on Wednesday 9 March 2011 in relation to other unrelated matters.
…
I was not aware of this application prior to meeting with Rohan. I was also not aware that there was a deadline for filing an opposition to the registration to this application in which I or My Company can contest whether this application should be registered.
…
I have now come to the realisation that I made the following errors of judgement:
1.thinking that the business name registration was enough protection,
2.thinking that that (sic) the Trade Marks Office would not accept an…

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 72
Decision Date: 28 July 2011

CaseChat Overview and Summary

Overdrive Holdings Pty Ltd (the applicant) sought to set aside a statutory demand issued by Bram Lagrou (the respondent). The dispute concerned whether the applicant was indebted to the respondent in the amount claimed in the statutory demand. The application was heard in the Supreme Court of Queensland by Justice Wilson.

The primary legal issue before the Court was whether the applicant had a genuine dispute about the existence or amount of the debt claimed in the statutory demand. This required the Court to consider the nature of the alleged debt, which arose from an alleged breach of a loan agreement and a subsequent settlement agreement. The applicant contended that the debt was not owed, or at least not in the amount claimed, due to various alleged breaches by the respondent and a failure to properly account for payments.

Justice Wilson found that the applicant had failed to demonstrate a genuine dispute regarding the debt. The Court analysed the loan agreement, the settlement agreement, and the correspondence between the parties. It was held that the settlement agreement clearly stipulated the amount owing and provided a mechanism for its repayment, which the applicant had not complied with. The applicant's arguments regarding alleged breaches by the respondent were found to be unsubstantiated or irrelevant to the clear terms of the settlement agreement. The Court applied the principles established in cases concerning statutory demands, emphasizing that a genuine dispute must be based on real and arguable grounds, not mere assertions or unsubstantiated claims.

The Court therefore dismissed the application to set aside the statutory demand.

Orders