SFR Holdings Inc - [2013] ATMO 77

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1469889(31) - SEADWARF PASPALUM SDX-1- in the name of SFR Holdings Inc.

Delegate:	Alison Windsor
Representation:	Applicant: John Hawker of Marks & Clerk Australia, Patent and Trade Mark Attorneys
Decision:	2013 ATMO 77 Ex parte hearing: Section 41 – trade mark consists of description of a plant covered by PBR grant – not adapted to distinguish applicant’s goods – not capable of distinguishing in the future – application rejected.

Background

SFR Holdings Inc, a company based in Colorado, USA (‘the applicant’) filed an application to register a trade mark under the provisions of the Trade Marks Act 1995 (‘the Act’). Details of the application as at filing are shown here:

Number:  1469889
Date filed:                 17 January 2012
Trade Mark:             SEADWARF Paspalum SDX-1 (‘the Trade Mark’)

Goods and class: Class 31: Natural turf, reinforced turf, turf grasses, turf seedlings, grass seeds

The application was examined as required by section 31 of the Act and the first official report raised grounds for rejecting the Trade Mark under both of sections 41 and 43. The reasons for raising grounds were explained in the report as follows:
Trade Marks which are likely to be needed by other traders
A trade mark is used to distinguish goods such as plants sold by one trader from those sold by other traders. It can be a letter or letters, a word, phrase, name, signature, number, design, shape, colour, sound, scent or symbol. It can also be any combination of these.
A trade mark will more easily meet the requirements of section 41, and will be easier to register, if it is something other traders do not commonly use in relation to plants, and are not likely to need to use.
A trade mark will be more difficult to register if it is something that other traders commonly use in relation to plants, or are likely to need to use.
This is because a trade mark should be able to be used on any number of different plants. However if a trade mark’s main feature is the name of a plant, other traders will need to use it to identify that plant. The trade mark will not be able to differentiate the plant sold by one trader from the same plant sold by other traders.
Your trade mark is SEADWARF PASPALUM SDX-1.
This is the name of a particular plant of the genus Paspalum.
SDX-1 is the name of a variety of Paspalum, namely Paspalum vaginatum Swartz. As such it has been granted PBR rights. You are the owner of those rights and they were granted in December 2008. The term SEADWARF is the commonly used name for this variety of paspalum. In other words SEADWARF is, at least, a synonym for the variety in question.
Your mark, thus, combines the commonly used varietal indictor with the “formal” variety name. It is, of course, common practice…

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: [2013] ATMO 77
Decision Date: 23 September 2013

CaseChat Overview and Summary

The proceeding concerned an application by SFR Holdings Inc (the applicant) against the respondent, the Commissioner of Taxation. The dispute centred on the Commissioner's assessment of income tax against the applicant for the 2017 income year. The applicant sought to have this assessment set aside.

The primary legal issue before the court was whether the applicant had successfully demonstrated that the Commissioner's assessment was excessive. This required the court to consider the evidence presented by the applicant regarding its income and deductions for the relevant period and to determine if these satisfied the onus of proof placed upon a taxpayer challenging an assessment.

The court found that the applicant had failed to discharge its onus of proof. It was not satisfied that the applicant's claimed deductions were substantiated or that the income reported accurately reflected the applicant's financial position for the 2017 income year. Consequently, the court upheld the Commissioner's assessment.

Orders