Pacific Satellite Holdings Ltd v Pacific Satellite (Aust) Pty Ltd

[2003] ATMO 56

TRADE MARKS ACT 1995

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

Date of Decision:	29 September 2003
Delegate:	Ian Thompson
Representation:	Opponent: Brian Elkington of Blake Dawson Waldron. Applicant: Unrepresented.
Decision:	S 52 opposition: s58 ground established – opponent owner of trade mark.

Re:Opposition by Pacific Satellite Holding Ltd to registration of trade mark application 907939(9), (37) – Pacific Satellite – Words & Logo - filed in the name of Pacific Satellite (Aust) Pty Ltd.

Background

1. In this matter, Pacific Satellite (Aust) Pty Ltd, (“the applicant”), of Coopers Plains, Queensland, has filed application to register the trade mark, details of which appear below:

   Appn Number:           907939
   Priority Date:             2 April 2002

   Services:Class: 9  Satellite TV equipment such as satellite dishes or antennas, satellite receivers, low noise block downconverters with feedhorns (LNBFs), satellite positioners, actuators and other accessories

   Class: 37  Satellite TV, cable TV, terrestrial TV and broad band system installation, maintenance and service

   Trade Mark:  

   Advertised:1 August 2002: Australian Official Journal of Trade Marks

2. On 8 August 2002, Pacific Satellite Holding of Hong Hong Limited (“the opponent”) filed Notice of Opposition (“the Notice”) to the registration of the trade mark.  The Notice claims most of the available grounds of opposition under the Trade Marks Act 1995 (‘the Act’).

3. As a delegate of the Registrar of Trade Marks, I heard the matter in Sydney on 22 July 2003.  The opponent was represented by Brian Elkington of Blake Dawson Waldron.  The applicant was not represented, did not appear and did not put in written submissions.

   The Evidence

4. The opponent has served and filed evidence in support as detailed below:

Declarant:	Known as/ /Position:	Date Made:	Exhibits:
Joseph Yeung	Yeung Director of opponent	23 October 2002	Annexures A – D

1. There is no evidence in answer

   Yeung

2. A large part of Mr Yeung’s declaration goes to the conduct of the applicant in the prosecution of two earlier applications, one of which is identical to this one.  The applicant did not pay registration fees on those applications.  That aspect of the alleged conduct of the applicant is not relevant to my decision and reasons therefore and so I omit comment on that part of the evidence.

3. The balance of the evidence shows that the opponent first used a trade mark which is identical to that which is opposed in 1990 in Hong Kong.  In 1996, the opponent exported goods bearing the trade mark to Australia for distribution and sale by the applicant, which was formed for that purpose.  The opponent has furnished receipts bearing the trade mark and yearly revenue received from the sales of goods bearing the trade mark – these are of a moderate amount.  The goods and/or services in respect of which the opponent has used its trade mark are the same, or the same kind of thing as the goods and/or services in respect of which the opposed application seeks registration.

   Decision

4. The grounds argued by Mr Elkington at the hearing go to sections 42, 58, 60 and 62 of the Act. Although I believe that each of the grounds is supported by the evidence, I am satisfied that the opposition is most readily decided under section 58 and hence any discussion and decision under those other grounds would be redundant.

   Section 58

5. Section 58 of the Act provides:

   58    Applicant not owner of trade mark

   The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

   Note:For applicant see section 6.

6. An opposition may be established on this ground if an opponent evidences use of a trade mark in Australia which is at least substantially identical to the opposed trade mark, used in respect of the same kind of thing, before the first use of the opposed trade mark (or the priority date of the opposed application) – whichever is the earlier.  See re Hicks' Case (1897) 22 VLR 636, per Holroyd J and Carnival Cruise Lines Inc. v. Sitmar Cruises Limited 31 IPR 375 per Gummow J.

7. The evidence puts this application squarely within the type of circumstances that were present in Settef v. Riv-Oland Marble Co (Vic) Pty Ltd.(1986) 10 IPR 402. As such, the opponent has established the ground under section 58 of the Act.

   Conclusion/Decision

8. Section 55 of the Act provides:

   55  Decision

   Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

   Note:For limitations see section 6.

9. I refuse to register application 907939.

   Costs

10. The opponent has succeeded in establishing its opposition.  I therefore order costs against the opponent.

    Ian Thompson
    Hearing Officer
    Trade Marks Hearings

    29 September 2003