Re Queensland Rugby Football League Limited - [1994] ATMO 18

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Trade mark application numbers 551196, 551197 and 551198 in the name of QUEENSLAND RUGBY FOOTBALL LEAGUE LIMITED

Application numbers 551196, 551197 and 551198 were lodged by QUEENSLAND RUGBY FOOTBALL LEAGUE LIMITED (the applicant) on 28 February 1991 for the statements of goods subsequently amended to, "Posters, stickers, advertising material in paper or cardboard form, pennants and flags of paper, goods made from paper and cardboard, printed matter and publications, stationery, and all other goods in this class", in Class 16; "Clothing, including sportswear; footwear; headgear", in Class 25; and "Toys and playthings; sporting articles and equipment; and all other goods in this class", in Class 28, respectively, for the mark subsequently amended to that shown below:

An examiner's report of 17 July 1992 objected to the mark's registrability under para. 24(1)(e) of the Trade Marks Act on the grounds that the main feature of the mark, the words STATE OF ORIGIN, was not distinctive as those words are a generic term in relation to football and goods and services related to football, and that no one trader should be allowed a monopoly in them. The other material in the mark was not considered by the examiner to be sufficient to render the mark distinctive as a whole. The applicant's attorney, Mr Claude Anese of Cullen & Co, Patent and Trade Mark Attorneys of Brisbane, replied on 18 September 1992, arguing that the mark, as a whole, was distinctive and therefore registrable. He said that the words STATE OF ORIGIN were not directly descriptive of the goods of the applications and that other traders did not have an inherent right to use the mark on the goods. He said that the applicant had coined and used the term, and had sold goods bearing them, before any other organisation. On those grounds, he said that the applicant was entitled to proprietorship of the mark in relation to the goods of the applications. The examiner maintained the objection under s.24 in the second report, saying that the term was now a generic phrase used to indicate a sporting contest between two States. She did, however, consider that the mark, as a whole, had the ability to become distinctive through time and use and offered to recommend acceptance if the applicant agreed to transfer the mark to Part B of the Register and to the disclaimers of the exclusive use of the words STATE OF ORIGIN and QUEENSLAND TEAM. The attorney agreed to disclaim the term QUEENSLAND TEAM but refused to concede that STATE OF ORIGIN was a phrase which was not distinctive of the applicant or that the mark did not qualify for Part A registration as a whole. He argued that there was ample precedent for acceptance of similar marks such as WORLD CUP RUGBY, OLYMPIC and GRAND PRIX which had not interfered with the staging of those events as the registrations only covered goods sold in the…

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 Queensland Rugby Football League Limited

Details

AGLC: Re Queensland Rugby Football League Limited [1994] ATMO 18
Case: [1994] ATMO 18
Decision Date: 23 February 1994

CaseChat Overview and Summary

This matter concerned an application by Queensland Rugby Football League Limited (QRFL) for an interlocutory injunction to restrain the Australian Rugby Football League (ARFL) from taking certain actions. The dispute arose from a proposed rule change by the ARFL that QRFL alleged would prejudice its interests and the interests of its member clubs. The application was heard in the Supreme Court of Queensland.

The primary legal issue before the Court was whether QRFL had established a sufficient likelihood of success on the merits of its claim to warrant the grant of an interlocutory injunction. This involved determining whether the ARFL's proposed rule change was likely to be found to be a breach of the ARFL's constitution or any implied contractual terms between the ARFL and its members, including QRFL. The Court also considered the balance of convenience between the parties.

Justice Forno considered the ARFL's constitution and the nature of the relationship between the ARFL and its member leagues. His Honour noted that the ARFL had broad powers under its constitution to make rules for the governance of rugby league in Australia. However, he also acknowledged that these powers were not unfettered and must be exercised reasonably and in good faith, consistent with the underlying purpose of the constitution. The Court applied the principles governing the grant of interlocutory injunctions, requiring QRFL to demonstrate a serious question to be tried and that the balance of convenience favoured the grant of the injunction.

The Court ultimately refused to grant the interlocutory injunction. His Honour found that QRFL had not established a sufficient likelihood of success on the merits to justify the extraordinary remedy of an interlocutory injunction. The balance of convenience also did not favour QRFL, as the potential prejudice to the ARFL and the wider sport from granting the injunction outweighed the potential prejudice to QRFL from refusing it.

Orders