Sharon Macnay v Hamilton Delius Pty Limited - [1994] ATMO 23

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Intention to refuse a late application for an extension of time to serve evidence in support of an opposition by HAMILTON DELIUS PTY LIMITED to registration of trade mark application number 596827 in the name of SHARON MACNAY

Background to the matter

Application number 596827 was lodged on 24 February 1993 in the name of SHARON MACNAY (the applicant). The application was for registration of the word mark FUSS SALONS in a slightly stylised form and was advertised as accepted in the Official Journal of 3 June 1993 for the statement of services: "Beauty salon services, including all nail care and beautification" in Class 42.

Notice of opposition to the mark's registration was lodged on 9 August 1993 by HAMILTON DELIUS PTY LIMITED (the opponent). The main grounds of opposition, as stated in the notice, may be summarised as relating to claims that the applicant did not own the sole right to the word FUSS pursuant to a Deed of Partition between the applicant and the opponent; and that registration of the mark by the applicant would be likely to cause deception and confusion.

There was some confusion as to when service of the notice of opposition was made on the agents for the applicant. However, the Trade Mark regulations state that evidence in support of an opposition must be served on an applicant within three months after the notice of opposition has been lodged at the Trade Marks Office - in this case, 9 August 1993. Therefore, this point does not appear to be critical, as it is the latter date which is critical in determining the date on which the evidence is due to be served on the applicant. Consequently, the opponent's evidence in support was due to be served on the applicant by 9 November 1993. As no evidence was served by the due date, an Official Notice was sent to the opponent on 18 November 1993 noting this and advising that it was now open to the applicant to seek a hearing under reg. 49(2) to determine the matter. The opponent's attorney, Gye Perkes & Stone, then lodged, on 7 January 1994, a letter and Statutory Declaration by Paul Raymond Stone, dated 5 January 1994, seeking approval for an extension of time to serve the evidence in support. The application and Declaration did not specify a date to when the extension was sought but, as it was accompanied by the scheduled late fee and two months extension fees, I presume the date to which the extension was sought was 9 January 1994. The reason given for seeking the application was:

From 9 August, 1993 to 22 November, 1993, much correspondence has been entered into between the solicitors for the Applicant and Opponent. During that time, evidence on behalf of the Opponent was not filed in accordance with the Trade Marks Regulations. This was an oversight.

The reason given for seeking the extension…

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: [1994] ATMO 23
Decision Date: 15 March 1994

CaseChat Overview and Summary

In the matter of *Sharon Macnay v Hamilton Delius Pty Limited*, the applicant, Sharon Macnay, brought proceedings against the respondent, Hamilton Delius Pty Limited, concerning a dispute arising from a contract for the sale of land. The case was heard by Justice Forno in the Supreme Court of Queensland.

The central legal issue before the Court was whether the respondent had validly terminated the contract for the sale of land due to the applicant's alleged failure to comply with a notice to complete. Specifically, the Court had to determine if the notice to complete was valid and effective in law, and consequently, whether the termination of the contract by the respondent was justified.

Justice Forno's reasoning focused on the requirements for a valid notice to complete under Queensland contract law. The Court considered the terms of the contract, the correspondence between the parties, and the relevant legal authorities. His Honour found that the notice to complete issued by the respondent was defective because it did not provide the applicant with a reasonable period within which to complete the purchase. As a result, the notice was ineffective, and the subsequent termination of the contract by the respondent was therefore unlawful.

Consequently, the Court ordered that the termination of the contract by Hamilton Delius Pty Limited was invalid and of no effect. The parties were directed to take steps to complete the sale of the land in accordance with the original terms of the contract.

Orders