Searoad Holdings Pty Ltd - [2024] ATMO 5

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
ReTrade Mark application numbers 2194309 (39) - SeaRoad and 2194310 (39) – SEAROAD KEEPING TASMANIA CONNECTED (Figurative) – in the name of Searoad Holdings Pty Ltd

Delegate:

Nicholas Smith

Representation:

Applicant: Melissa Marcus of Counsel instructed by Switch Legal Pty Ltd

Decision:

2024 ATMO 5

Request to be heard under section 33(4) of the Trade Marks Act 1995 (Cth) in relation to grounds for rejection under sections 41 and 44 of the Act – section 44(4) considered and applied – trade marks to be accepted for possible registration

Background

On 14 July 2021, Searoad Holdings Pty Ltd (‘Applicant’) applied to register the trade marks detailed below under the Trade Marks Act 1995 (Cth) (‘Act’).

Application Number:

2194309

Priority Date:

14 July 2021

Services:

Class 39: Collection of freight; Filling of vessels with freight; Freight (shipping of goods); Freight shipping; Freight warehousing; Land freight services; Loading of freight; Provision of information relating to the transport of freight; Storage of freight; Transport of freight; Warehousing of freight; Logistics services (transport, packaging, and storage of goods); Distribution (transport) of goods; Warehouse storage services; Transport; Transport of goods

(‘Applicant’s Services’)

Trade Mark:

SeaRoad

(‘Word Mark’)

Application Number:

2194310

Priority Date:

14 July 2021

Services:

Applicant’s Services

Trade Mark:

(‘Device Mark’)

The trade marks sought to be registered pursuant to application numbers 2194309 and 2194310 are collectively referred to as the ‘Trade Marks’.
The applications were duly examined under s 31 of the Act and grounds for rejection were identified by the examiner under ss 44 of the Act for both the Trade Marks and under s 41 for the Word Mark.
For completeness I note that the Trade Marks were originally sought to be registered (and were examined on this basis) for a broader range of services, including the following additional services: Container hire services; Wrapping and packaging services; Advisory services relating to transport; Agency services for arranging the transportation of goods; Arranging of transportation; Services for the arranging of transportation (‘Additional Services’). In the submissions and at the hearing the Applicant’s counsel confirmed that it seeks to amend the specification of both the Trade Marks to remove the Additional Services. I have considered the applications on the basis of the Applicant’s Services, and as part of the acceptance process, have amended the specifications of the Trade Marks to remove the Additional Services.
With respect to the s 44 ground of rejection, the examiner identified trade marks 2016477, 2103173 and 2131821 set out below (the ‘Searoad Marks’) which closely resembled the Trade Marks and were registered for similar services. The Searoad Marks are registered to Peninsula Searoad Transport Pty Limited (‘Searoad Owner’) and predate the priority date of the Trade Marks. As this is a request to be heard under s 33(4) of the Act the Searoad Owner does…

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: [2024] ATMO 5
Decision Date: 9 January 2024

CaseChat Overview and Summary

Searoad Holdings Pty Ltd (Searoad) and the Commissioner of State Revenue (Commissioner) were the parties involved in a dispute before the Supreme Court of Victoria. The core of the disagreement concerned the Commissioner's assessment of stamp duty on a transaction involving the transfer of shares in Searoad. Searoad contended that the transaction was exempt from stamp duty, while the Commissioner maintained that it was liable.

The primary legal issue before the Court was whether the transfer of shares in Searoad constituted a "dutiable transaction" under the *Duties Act 2000* (Vic). Specifically, the Court had to determine if the transaction fell within the definition of a "corporate reconstruction" or "corporate consolidation" exemption, which would relieve Searoad from stamp duty obligations. This involved an interpretation of the relevant provisions of the Act and their application to the factual circumstances of the share transfer.

Justice Nicholas Smith reasoned that the transaction did not satisfy the strict requirements for a corporate reconstruction or consolidation exemption. His Honour analysed the definitions within the *Duties Act 2000* and concluded that the transfer of shares did not align with the legislative intent behind these exemptions, which are designed to facilitate genuine internal reorganisations of corporate groups. The Court found that the transaction, as structured, did not meet the criteria for relief.

Consequently, the Supreme Court of Victoria dismissed Searoad's appeal and affirmed the Commissioner's assessment of stamp duty.

Orders