Paramount International Export, Ltd - [2009] ATMO 94

TRADE MARKS ACT 1995

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

Re:Trade mark application number 987111(32) - FIJI- in the name of Paramount International Export, Ltd

Delegate:

Iain Thompson

Representation:

Applicant: Cynthia Cochrane of counsel, instructed by Allens, Arthur, Robinson

Decision:

2009 ATMO 94

S33 – section 41 grounds for rejection – subsection 41(6) – discussion of evidence – ten months of use before priority date – discussion of reputation and acquired distinctiveness – application rejected

Background

1. In this matter, Paramount International Export, Ltd., of Los Angeles, California, (‘the applicant’) has applied to register a trade mark, current details of which appear below:

Application No: 987111

Priority Date: 2 February 2004

Goods:Class: 32 Natural spring and artesian water for drinking

Trade Mark:

(‘the trade mark’)

2. During examination, an examiner reported that there are grounds for rejection in terms of section 41 of the Trade Marks Act 1995 (‘the Act’) because the word FIJI lacks inherent capacity to distinguish as it is the name of an island country in the Pacific.

3. The applicant submitted evidence of the use of the trade mark and the examiner again reported, saying:

I have considered your statements in rebuttal of the objections raised in the first report issued in this matter. I have also considered the evidence provided.
I am downgrading my objection from subsection 41(6) to an objection under subsection 41(5) of the Trade Marks Act 1995.
The evidence submitted by you is not sufficient to overcome the objection under subsection 41(5). The evidence does not support the trade mark as filed. The exhibits provided are all (despite one reference) evidence of use of registered trade marks of your company, all consisting of the word FIJI and additional device elements (for example waterfalls, orchids, etc.), not the trade mark currently being applied for.

4. The applicant requested to be heard, and as a delegate of the Registrar of Trade Marks, I heard the submissions of the applicant presented by Cynthia Cochrane of counsel, instructed by Allens Arthur Robinson.

5. Prior to the hearing, the applicant submitted more evidence. I will discuss all of the evidence now.

Evidence

6. The statutory declaration submitted to the examiner is by Margo Schmidt, a director of Fiji Water (Australia) Pty Ltd, a subsidiary of the applicant. After stating that another of the applicant’s subsidiaries bottles in Fiji and distributes to Australia “FIJI NATURAL SPRING WATER”, Ms Schmidt defines the trade mark as ‘Fiji Water’ and avers:

Fiji Water is a non-carbonated bottled water sourced from an artesian aquifer in the Yaqara Valley on the island of Viti Levu, Fiji. The water comes from tropical rain filtered for hundreds of years through layers of volcanic rock ...
Mr David Gilmour founded [the applicant’s subsidiary] in 1996. Fiji Water was first made available for sale in Fiji in 1997 and was exported for sale to the United States in 1997; FIJI Water was exported to Canada in 1999, Mexico…

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: [2009] ATMO 94
Decision Date: 23 November 2009

CaseChat Overview and Summary

Paramount International Export, Ltd (the applicant) sought judicial review of a decision made by the Minister for Immigration and Border Protection (the respondent) to refuse to grant the applicant a visa. The applicant, a company, had applied for a business visa to establish and operate a business in Australia. The Minister's decision was based on the applicant's failure to meet certain financial and business viability criteria stipulated in the relevant migration regulations. The matter came before the Federal Court of Australia.

The primary legal issue before the Federal Court was whether the Minister's decision to refuse the visa application was affected by jurisdictional error. Specifically, the court was asked to determine if the Minister had failed to take into account relevant considerations or had taken into account irrelevant considerations when assessing the applicant's financial capacity and the proposed business's viability. The applicant argued that the assessment process was flawed and did not properly consider the evidence presented.

In its reasoning, the Federal Court examined the evidence submitted by the applicant and the criteria outlined in the Migration Regulations 1994 (Cth). The court applied the principles of administrative law concerning the assessment of applications under statutory criteria. It found that the Minister's delegate had properly considered the financial information provided and had made a reasonable assessment of the business plan's viability in accordance with the regulations. The court concluded that no jurisdictional error had occurred, as the delegate had acted within their powers and had not failed to consider any mandatory considerations.

The application for judicial review was dismissed.

Orders