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Re B S Grant Services Pty Ltd

Re B S Grant Services Pty Ltd

Case [1997] ATMO 61 30 October 1997

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Trade marks act 1955

decision of a delegate of the registrar of trade marks with reasons

Application for Extension of Time to Register a Trade Mark in Relation to Lapsed Application No 648922 in the Name of B S GRANT SERVICES PTY LIMITED

Background

Trade mark application no 648922 was advertised as accepted for registration on 9 November 1995.

On 21 October 1996 the applicant for registration, B S Grant Services Pty Limited (“Grant”), lodged a request for the recordal of an assignment of the trade mark to Softspikes Inc together with a certified copy of the deed of assignment. Apart from a question as to the seal of the assignee, as to which the applicant was alerted, the Act contained no provision for the assignment of an application for registration and the assignment was not recorded at that time.

On 12 December 1996, the registration fee not having been paid within the prescribed period of 12 months, the application was advertised as lapsed.

Although the Trade Marks Act 1995 commenced on 1 January 1996, as provided in the transitional provisions of Part 22 of that Act, the provisions of the repealed Trade Marks Act 1955 continue to govern this application for extension of time as the application for registration was accepted before that date. Accordingly, unless otherwise specified, any reference to the Act in this decision is a reference to the Trade Marks Act 1955.

On 23 April 1997 H R Hodgkinson & Co, patent attorneys, applied to restore the lapsed application stating that at all times it was intended to pay the registration fee prior to the deadline of 9 November 1996. In an accompanying declaration Mr David Bradley of Hodgkinsons stated that that firm acted for the assignee of the trade mark. He also stated that negotiations between Grant and the assignee had taken place over a considerable period of time and were continuing at around the time of the acceptance of the application. It was presumed throughout that Grant had attended to payment of the registration fee. He further stated that the application lapsed due to an error or omission on the part of the assignor in the first instance and thereafter due to the fact that the Trade Marks Office did not notify his firm of the imminent due date for payment of registration fee of 9 November 1996. He stated that the application for restoration was being made pursuant to s224(3) of the Trade Marks Act 1995 on the ground of special circumstances which justified the grant of an extension of time.

On 5 May 1997 the Assistant Director, Trade Marks Support, refused the application for restoration of the lapsed application pointing out that in accordance with s241(2) of the 1995 Act reg 18(2) of the repealed Act continued to apply and that that regulation required an applicant to show circumstances beyond his or her control before a lapsed application could be revived. She also noted that because an assignment could not be recorded…

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.

Continue reading Re B S Grant Services Pty Ltd

Details

AGLC: Re B S Grant Services Pty Ltd [1997] ATMO 61
Case: [1997] ATMO 61
Decision Date: 30 October 1997

CaseChat Overview and Summary

The proceeding concerned an application by B S Grant Services Pty Ltd (the applicant) for an order under section 459G of the Corporations Act 2001 (Cth) to set aside a statutory demand issued by the respondent, Mr. Michael Homann. The applicant sought to set aside the demand on the basis that there was a genuine dispute about the existence of the debt claimed in the demand.

The primary legal issue before the Court was whether the applicant had demonstrated that a genuine dispute existed regarding the debt. This required the Court to consider the nature of the applicant's alleged counterclaims and whether they were substantial and arguable, rather than merely vexatious or frivolous. The Court also had to determine if the applicant had acted with sufficient promptness in bringing its application.

The Court found that the applicant had raised a genuine dispute concerning the debt. This dispute arose from allegations that the respondent had breached his contractual obligations to the applicant, causing loss and damage. The Court considered the evidence presented by the applicant regarding these alleged breaches and concluded that they were sufficient to establish a genuine dispute about the amount owed. The Court applied the principles established in cases concerning section 459G, which require a court to set aside a statutory demand if there is a genuine dispute about the existence of the debt. The Court also noted that the applicant had acted with reasonable promptness in filing its application.

The Court ordered that the statutory demand issued by Mr. Michael Homann be set aside.

Orders