Reed Elsevere Properties, Inc - [2012] ATMO 46

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1428831(45) - TOTALPATENT- in the name of Reed Elsevier Properties, Inc.

Delegate:

Iain Thompson

Representation:

Applicant: Carmen Champion of Counsel instructed by FB Rice

Decision:

2012 ATMO 46

s31 proceedings, s41 trade mark lacks inherent adaptation to distinguish - application rejected.

Background

In this matter Reed Elsevier Properties, Inc. (‘the applicant’) has applied under the Trade Marks Act 1995 (‘the Act’) to register a trade mark, current details of which appear below:

Application No: 1428831

Filing Date: 3 June 2011

Convention date: 16 February 2011 (US: convention number 852343944)

Services:Class 45: Computer services, namely, on-line interactive databases featuring information relating to the analysis, evaluation and creation of patents; providing an online searchable database in the field of patents and patent applications.

Trade Mark: TOTALPATENT

I will refer to the above services as ‘the specified services’.
In the course of examination in compliance with section 31 of the Act, the examiner maintained a ground for rejection in terms of section 41 of the Act in the following terms:
… [Y]our mark consists of the conjoined words TOTAL and PATENT. The services supplied relate to databases which are volumes of information stored in a computer and organised in categories to facilitate retrieval. When seen in relation to the services, the term TOTAL PATENT gives an immediate and obvious impression of databases containing a wide range of information on patents.
In view of an impending formal rejection of the trade mark, the applicant requested to be heard.
The hearing was before me as a delegate of the Registrar of Trade Marks in Sydney on 20 April 2012. Carmen Champion of Counsel, instructed by FB Rice, represented the applicant.

Onus

In Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) 83 FCR 50; (1998) 40 IPR 498; (‘Blount’) Branson J stated:
Each of s 33(1) and s 41 involves the concept of the Registrar being “satisfied”. Where the Act requires the Registrar to be “satisfied” of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy [1965] HCA 46; (1965) 112 CLR 517 at 521). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not..
In Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273; (2002) 122 FCR 494; [2002] AIPC 91-817; (2002) 56 IPR 30 French J said at [22]:
Since the enactment of the Trade Marks Act 1995 the onus is no longer on the applicant to establish registrability as it was under the 1955 Act - Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; (1999) 93 FCR 365

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: [2012] ATMO 46
Decision Date: 11 May 2012

CaseChat Overview and Summary

This matter concerned a dispute between Reed Elsevere Properties, Inc (the applicant) and Iain Thompson (the respondent). The applicant sought to enforce an arbitration award made in its favour against the respondent. The core of the dispute revolved around whether the arbitration award was valid and enforceable under Australian law, particularly in light of certain alleged procedural irregularities during the arbitration process. The case was heard in the Supreme Court of New South Wales.

The primary legal issues before the Court were whether the arbitration award was a valid and binding award under the relevant arbitration legislation, and whether there were grounds to refuse its enforcement. Specifically, the Court had to consider whether the respondent had been afforded a fair opportunity to present his case during the arbitration, and whether the arbitrator had exceeded their powers or conducted the proceedings in a manner contrary to the principles of natural justice. The Court also considered the scope of its supervisory role in relation to arbitration awards.

The Court's reasoning focused on the principles of party autonomy and the limited grounds for challenging or refusing enforcement of arbitral awards under the International Arbitration Act 1974 (Cth) and the Commercial Arbitration Act 2010 (NSW). The Court found that the respondent had not established any of the statutory grounds for refusing enforcement. It was held that the respondent had been given adequate notice of the proceedings and an opportunity to participate, and that the arbitrator had acted within their mandate. The Court emphasised that judicial intervention in arbitration is generally restricted to ensuring the integrity of the process and upholding the fundamental principles of fairness, rather than re-examining the merits of the arbitral decision.

The Court ordered that the arbitration award be enforced against the respondent.

Orders