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Source Homeloans Pty Ltd v Coles Group Ltd

Source Homeloans Pty Ltd v Coles Group Ltd

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Case Copied 11 February 2008 18 min read

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TRADE MARKS ACT 1995

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

Re: Opposition by Source Homeloans Pty Ltd to registration of trade mark applications 966609(36) SOURCE; 969133(36) SOURCE CARD; 1021854(36) CML SOURCE; 1021855(36) COLES MYER SOURCE; 1028532(36) COLES MYER SOURCE (logo); and 1031743(36) SOURCE INSURANCE - in the name Coles Group Limited.

Delegate:

Iain Thompson

Representation:

Opponent: No representation or written submission

Applicant: Margaret Ryan of Phillips Ormonde & Fitzpatrick

Decision:

2008 ATMO 17

Section 52 opposition:

Grounds under sections 58 and 60 – alleged use of trade marks SOURCE HOME LOANS or SOURCE by opponent – onus on opponent to satisfactorily demonstrate such use; use established only in relation to mortgage brokerage services; services not the same kind of thing; trade marks not substantially identical; opposition under section 58 not established; no satisfactory demonstration of trade mark’s reputation, section 60 opposition also cannot be established.

Costs

Ordered against opponent

Background

These applications proceed in the name of Coles Group Limited of Tooronga, Victoria, and seek registration in Australia of the following six trade marks, current details of which are:

Appn No966609
Priority Date  18 August 2003
ServicesClass: 36 The retail sale of goods on credit; the provision of credit cards, credit accounts and other credit facilities; the rendering and collection of credit card accounts; other services in class 36 relating to the provision, operation and use of consumer credit facilities provided in connection with the retail sale of goods
Trade MarkSOURCE
Appn No969133
Priority Date  5 September 2003
ServicesClass: 36 The retail sale of goods on credit; the provision of credit cards, credit accounts and other credit facilities; the rendering and collection of credit card accounts; other services in class 36 relating to the provision, operation and use of consumer credit facilities provided in connection with the retail sale of goods
Trade MarkSOURCE CARD
Appn No1021854
Priority Date  23 September 2004
ServicesClass: 36 Insurance services including home insurance, home and contents insurance, car insurance, life insurance, pet insurance and travel insurance
Trade MarkCML SOURCE
Appn No1021855
Priority Date  23 September 2004
ServicesClass: 36 Insurance services including home insurance, home and contents insurance, car insurance, life insurance, pet insurance and travel insurance
Trade MarkCOLES MYER SOURCE
Endorsement                   Provisions of paragraph 44(3)(b) applied.
Appn No1028532
Priority Date  4 November 2004
ServicesClass: 36 Financial services including the sale of goods on credit, the provision of credit cards, credit accounts and other credit facilities, the rendering and collection of accounts and other services in class 36 relating to the provision, operation and use of consumer credit facilities; insurance services including home insurance, home and contents insurance, car insurance, life insurance, travel insurance, personal insurance and pet insurance
Trade Mark
Endorsement                   Provisions of paragraph 44(3)(b) applied.

Appn No1031743
Priority Date 25 November 2004
ServicesClass: 36 Insurance services including home insurance, home and contents insurance, car insurance, life insurance, pet insurance and travel insurance
Trade MarkSOURCE INSURANCE

Source Homeloans Pty Ltd,…

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: [2008] ATMO 17
Decision Date: 11 February 2008

CaseChat Overview and Summary

This decision concerned an opposition to the registration of several trade marks by Source Homeloans Pty Ltd against Coles Group Ltd. The Registrar was required to decide whether to refuse or register the trade marks, taking into account any grounds of opposition that had been established.

The primary legal issue before the court was the Registrar's decision regarding the registration of the trade marks, specifically in light of the opposition lodged by Coles Group Ltd. The court also had to consider the appropriate costs order given the conduct of the opposition proceedings.

The court applied section 55 of the relevant Act, which mandates the Registrar to decide on the registration of a trade mark after considering any established grounds of opposition. The court found that the opposition had been pursued in a manner that generated significant workload and costs for the applicant. Consequently, the court ordered that Coles Group Ltd pay the official scale costs of Source Homeloans Pty Ltd in relation to each of the opposed applications.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

Section 55 of the Act provides:55 DecisionUnless the proceedings are discontinued or dismissed, the Registrarmust, at the end, decide:(a) to refuse to register the trade mark; or(b) to register the trade mark (with or without conditions orlimitations) in respect of the goods and/or services thenspecified in the application;having regard to the extent (if any) to which any ground on whichthe application was opposed has been established.Note: For limitations see section 6. Subject to any appeal, or appeals, against these decisions, applications 966609(36) SOURCE; 969133(36) SOURCE CARD; 1021854(36) CML SOURCE; 1021855(36) COLES MYER SOURCE; 1028532(36) COLES MYER SOURCE (logo); and 1031743(36) SOURCE INSURANCE may proceed to registration one month from the date of these reasons. If such appeal or appeals are lodged within the required time, the disposition of the applications should be in accordance with the Court’s order or direction. Section 202 of the Act provides: Section 221 of the Act provides: The applicant sought its costs should it be successful in these matters. I award costs against the opponent and, having regard to the manner in which the opponent has pursued this opposition and the workload it has placed upon the applicant’s legal representatives (and subsequent costs to the applicant) discussed at paragraph 16, above, the applicant is entitled to its costs at the official scale which I order the opponent to pay in relation to each of the opposed applications.

Ratio Decidendi

Legal Principle Established

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