Sitmar Cruises Ltd v Carnival Cruises Lines, Inc - [1994] ATMO 66

TRADE MARKS ACT 1955

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

Re:Opposition by CARNIVAL CRUISE LINES, INC. to an application by SITMAR CRUISES LTD. for an extension of time to serve evidence in answer to the opposition to registration of Trade Mark Applications Numbers 552247, 552248, 552249 and 552250

Applications numbers 552247, 552248, both for the mark FAIRSTAR THE FUNSHIP, and 552249 and 552250 for the mark FUNSHIP, were lodged on 18th March, 1991 in the name of SITMAR CRUISES LTD. (the applicant). The marks were advertised as accepted in the Official Journal of 21st May, 1992. On 20th August, 1992, a notice of opposition to registration of the marks, under section 49 of the Act, was lodged by CARNIVAL CRUISE LINES, INC. (the opponent).

The balance of the evidence in support of the opposition in respect of the applications was served on 20th April, 1993 in accordance with reg. 43, therefore the evidence in answer, under reg. 44, was due on 20th July, 1993, but the applicant requested and was allowed an extension of time to 20th October, 1993 (1st extension). A further extension was allowed to 20th January, 1994 (2nd extension). In a letter dated 19th January, 1994, the applicant advised the Registrar that, as agreed with the opponent, the applicant had served part of the evidence in answer basing it on the material previously served in opposition to the registration of applications Nos. B423111, B423114, B426422, B426424, B426541 and B426542. A declaration which did not constitute part of the earlier evidence was also served. In the same letter the applicant requested an extension of time of one month, which was granted (3rd extension). A further one month extension was again sought and allowed (4th extension). Before the expiry of this extension period, the applicant applied successfully for a period of three months (5th extension). On the last day of the extension period, however, three additional months were requested to 20th September, 1994 (6th extension) on the following grounds:

"Settlement of these proceedings is presently being discussed between the parties and further extension of time is required to finalise these discussions and reduce any agreement to writing."

As the opponent objected to this extension of time, a hearing was set down in Canberra on 16th August, 1994 before me as the Registrar's delegate. Mr. John Walsh of H.R. Hodgkinson & Co., patent and trade mark attorneys of Sydney, represented the opponent. The applicant elected to rely on written submissions.

Opponent's submissions
At the hearing, Mr. Walsh commented that, although the provisions of section 130 of the Act do not stipulate circumstances for allowing extensions of time, the principles are enshrined in the cases of Vangedal-Nielsen v. Commissioner of Patents (1980) 33 ALR 144 and Lyons and Another (Trading as Mitty's Authorized Newsagency) v. Registrar of Trade Marks and Another (1983) 1 IPR 416; namely, that consideration should be given to: the interests of the parties seeking the extension; public interest, ensuring…

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.

Continue reading Sitmar Cruises Ltd v Carnival Cruises Lines, Inc

Details

AGLC: Sitmar Cruises Ltd v Carnival Cruises Lines, Inc [1994] ATMO 66
Case: [1994] ATMO 66
Decision Date: 26 August 1994

CaseChat Overview and Summary

Sitmar Cruises Ltd and Carnival Cruise Lines, Inc. were parties to litigation before the Federal Court of Australia concerning the alleged infringement of copyright in a cruise ship design. Sitmar Cruises claimed that Carnival Cruise Lines had copied elements of its cruise ship, the "Fairsky," when designing its own vessel, the "Tropicale." The dispute centred on whether the design of the "Fairsky" was original and whether Carnival's "Tropicale" had unlawfully reproduced substantial parts of that design.

The primary legal issues before the Federal Court were whether Sitmar Cruises held a valid copyright in the design of the "Fairsky," and if so, whether Carnival Cruise Lines had infringed that copyright by constructing and operating the "Tropicale." This involved determining the originality of the "Fairsky's" design and assessing whether the similarities between the two vessels constituted the reproduction of a substantial part of Sitmar's copyrighted work.

Justice Vija Zars found that Sitmar Cruises had not established that the design of the "Fairsky" possessed the requisite originality to attract copyright protection. The court reasoned that the design elements relied upon by Sitmar were either commonplace in ship design at the time or were dictated by functional considerations rather than artistic expression. Consequently, as no valid copyright subsisted in the relevant aspects of the "Fairsky's" design, there could be no infringement by Carnival Cruise Lines. The court therefore dismissed Sitmar Cruises' claim.

Orders