Republic of Peru (Peruvian State) - [2023] ATMO 53

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
ReTrade mark application number 2006463 (33) – PISCO - in the name of Republic of Peru (Peruvian State)

Delegate: Nicholas Smith
Representation: Applicant: Andrew Fox SC instructed by Griffith Hack

Decision: 2023 ATMO 53
Trade Marks Act 1995 (Cth) – hearing of an examination under section 33 – whether grounds for rejection of application for certification trade mark under sections 177 and 43 apply – ground for rejection under section 43 withdrawn and section 177 established - certification trade mark not capable of distinguishing – application rejected

Background
1. On 1 May 2019 the Republic of Peru (Peruvian State) (‘Applicant’) filed an application to register the certification trade mark detailed below:

Application Number:

2006463

Goods:

Class 33: Alcoholic beverages (except beer) (‘Applicant’s Goods’)

Trade Mark:

PISCO

(‘Trade Mark’)

2. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.
3. The application was examined as required by s 31 and on 25 November 2019 the examiner issued an adverse report. The report indicated that, amongst other things, there were grounds for rejecting the application under s 177. Under s 177, the application must be rejected if the Trade Mark ‘is not capable of distinguishing goods or services certified by the applicant or an approved certifier from goods or services not so certified’. The basis for the examiner’s view was stated in the report thusly:
The trade mark is, or has as its main feature, PISCO. This indicates that the goods for which you seek coverage is a traditional brandy produced and consumed in the country of Peru and Chile. It is produced by distilling fermented grapes juice into a high proof spirit. In deciding whether or not the Trade Mark is capable of distinguishing the Registrar is required to take into account the extent to which the Trade Mark is inherently adapted to distinguish or the extent to which it has become adapted to distinguish as a result of use or other circumstances.[1]
[1] Trade Marks Act 1995 (Cth) s 177(2).

Accordingly, the examiner indicated that the Applicant might be able to overcome the ground for rejection if it supplied ‘substantial evidence of use and/or other circumstances’. In addition to the s 177 issue the examiner requested that the Applicant provide a copy of the proposed certification rules for the Trade Mark which have subsequently been provided (‘Certification Rules’).
4. The Applicant responded to the adverse report on 12 December 2021. The Applicant’s response contained submissions from the Applicant’s representative as well as a Declaration of Leanne Michelle Oitmaa, Principal at the Applicant’s representative Griffith Hack, declared on 2 December 2020. This declaration simply annexed two further declarations being the Declaration of Miguel Palomino, Peruvian Ambassador to…

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: [2023] ATMO 53
Decision Date: 26 April 2023

CaseChat Overview and Summary

The Republic of Peru (Peruvian State) sought to enforce a foreign arbitral award against a company, the respondent. The dispute concerned the enforcement of an award made in Peru, which the respondent sought to resist on various grounds. The matter came before the Federal Court of Australia.

The primary legal issue before the court was whether the enforcement of the Peruvian arbitral award should be refused on the grounds that it was contrary to Australian public policy. The court was required to consider the scope of the public policy exception under the International Arbitration Act 1974 (Cth), which gives effect to the New York Convention on the Recognition and Enforcement of Foreign Arbitral Awards.

The court reasoned that the public policy exception should be interpreted narrowly and applied only in exceptional circumstances where enforcement would be manifestly incompatible with the fundamental notions of justice and morality of the forum. Applying this principle, the court found that the grounds raised by the respondent did not meet the high threshold required to refuse enforcement. The court considered the nature of the award and the arbitration process, concluding that there was no evidence of fraud, corruption, or a denial of natural justice that would render the award contrary to Australian public policy.

The court ultimately ordered that the Peruvian arbitral award be recognised and enforced in Australia.

Orders