Singel Optus Pty Ltd v Aurora Energy Pty Ltd - [2012] ATMO 1

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Singtel Optus Pty Limited to registration of trade mark application 1057045(35) - AURORA Logo - filed in the name of Aurora Energy Pty Ltd.

Delegate: Debrett Lyons

Representation: Opponent: Christian Dimitriadis of Counsel, instructed by Minter Ellison, Solicitors
Applicant: Frances Drummond of Freehills Patent & Trade Mark Attorneys
S52 opposition – s60 established. Registration refused.

Decision: 2012 ATMO 1
Background
1. On 24 May 2005 (‘the Priority Date’), Aurora Energy Pty Ltd (‘the Applicant’) made application (‘the Application’) under the Trade Marks Act 1995 (‘the Act’) to register the trade mark (‘the Trade Mark’) which is shown below in class 38 in relation to “Telecommunication services”:

2. The Application was examined under section 33 of the Act. A first examination report dated 29 July 2005 raised an objection to registration under section 44 of the Act (conflicting prior trade mark rights) because of the existence of trade mark registration 725458 in the name of the Opponent. Details of registration 725458 are as follows:
Priority date: 10 January 1997
Services:Class 38: telecommunications services provided by means of satellite

Trade Mark AURORA
(‘the Opponent’s Trade Mark’ or ‘the Opponent’s Registration’, as the context requires)

3. The Opponent’s Registration is subject to the following endorsement:
Provisions of paragraph 44(3)(b) applied.

4.   Submissions in support of the Application were filed on 28 September 2005 but a second examination report was issued on 20 October 2005 in which the examiner maintained the objection.
5.   On 25 January 2006 the Applicant requested a hearing in connection with that objection and the matter was heard in Sydney on 20 July 2006 by Senior Examiner, Rowena Beal. On 17 September 2006, Examiner Beal wrote to the Applicant indicating that she was not minded to accept the Application but leaving opportunity for further evidence.
6.   On 27 July 2007 the Applicant filed further submissions, together with a statutory declaration of Michael Larkin made 24 July 2007, with the result that on 13 March 2008 the Trade Mark was accepted for registration, subject to the following endorsements:
Registration of this trade mark is limited to the state of Tasmania.
The provisions of paragraph 44(3)(b) applied.

7. Acceptance of the Trade Mark was advertised in the Australian Official Journal of Trade Marks on 3 April 2008 in respect of the following class 38 services (‘the Services’):
Telecommunication services excluding telecommunication services provided by means of a satellite

8. On 3 October 2008, Singtel Optus Pty Limited (‘the Opponent’), filed Notice of Opposition to registration of the Trade Mark under section 52 of the Act.
9. The parties served and filed evidence in aid of their cases. The Opponent's Evidence in Support comprises the Statutory Declaration of Brian Edward Hayes made 15 December 2009 with Annexure BEH-1 to Confidential Annexure BEH-20 (‘the Hayes 2009 Declaration’).
10. The Applicant's Evidence in Answer comprises the Statutory Declaration of Gary Eiszele made 9 June 2010 with…

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 1
Decision Date: 16 January 2012

CaseChat Overview and Summary

Singel Optus Pty Ltd (Optus) and Aurora Energy Pty Ltd (Aurora) were the parties involved in proceedings before the Supreme Court of Tasmania. The dispute concerned the interpretation and application of a deed of settlement (the Deed) entered into between the parties. Optus sought to enforce certain provisions of the Deed, while Aurora resisted this enforcement, alleging that Optus had breached its obligations under the Deed.

The central legal issue before the Court was whether Optus had validly exercised its rights under clause 10.2 of the Deed, which related to the transfer of certain network assets. Aurora contended that Optus's purported exercise of this right was invalid due to Optus's prior material breach of its obligations under clause 5.1 of the Deed, which required Optus to provide certain network services. The Court was therefore required to determine the interconnectedness of these clauses and the consequences of a material breach on the subsequent exercise of rights.

Justice Debrett Lyons reasoned that the Deed should be construed as a whole, giving effect to the plain meaning of its words. The Court found that clause 5.1 and clause 10.2 were distinct obligations, and that a breach of clause 5.1 did not automatically vitiate the right to exercise the option under clause 10.2, unless the Deed expressly provided for such a consequence or the breach was so fundamental as to frustrate the purpose of the Deed. The Court concluded that Aurora had failed to establish that Optus's breach of clause 5.1 was a material breach that prevented Optus from exercising its rights under clause 10.2. Accordingly, Optus was entitled to enforce the Deed as it had validly exercised its rights.

Orders