South Cone Inv v Reg Barton Spencer - [2007] ATMO 43

TRADE MARKS ACT 1995

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

Re:Opposition by South Cone Inc to registration of trade mark application 1010666(25) - REEF HUNTER - filed in the name of Spencer Reg Barton.

Delegate:

Rachel Dunn

Representation:

Opponent

Robin Kelly of Fisher Adams Kelly.

Decision:

S52 Opposition – sections 44 and 60 established, registration refused.

Background

Mr Spencer Reg Barton (the applicant) applied on 13 July 2004 for the plain word trade mark “REEF Hunter” for the goods of clothing in Class 25. On 25 November 2004 the application was advertised as accepted without an objection being raised by the Trade Marks Office (TMO).
South Cone Inc (the opponent) filed a notice of opposition to this application on 25 May 2005 after an extension of time was granted for the purposes of negotiation and research. The negotiations appear to have consisted of a suggestion by the opponent’s representatives that the applicant withdraw his application. As this suggestion was unsuccessful, the notice was filed listing the following grounds under the Trade Marks Act 1995 (the Act): sections 58, 59, 60, 41, 42, 43 and 44. In regards to the section 44 ground of opposition, there were nine trade marks incorporating the word REEF and owned by the opponent listed in the notice. Once the notice of opposition was formally filed and served the applicant chose to obtain legal representation.
Evidence in support of the opposition was served and filed in several parts, requiring an extension of time. Shortly after the evidence in support had been served, the applicant’s representatives noted that one of the opponent’s statutory declarations was headed with an incorrect trade mark number – 947859 instead of 1010666; and referred to an applicant who was not the applicant in this matter. The opponent’s representatives argued that these were merely typographical errors, not of great factual substance, as the body of the statutory declaration clearly referred to the correct details, including the trade mark number, trade mark itself and the correct applicant. A senior examiner working in the hearings section assessed this matter and concluded that the statutory declaration could be relied upon in this opposition as the errors were not of a substantial nature. Very shortly after this conclusion the applicant’s representatives advised the TMO and the opponent that they no longer acted for the applicant. They provided a PO Box in the name of the applicant as the applicant’s new address for service in this matter.
The time for service of the applicant’s own evidence, in answer to the evidence in support and the notice of opposition, passed with no correspondence from the applicant. The TMO sent notices regarding the overdue evidence, and what the applicant would need to do if he wished to serve evidence. Unfortunately, these notices were sent to the applicant’s previous representatives, and there is no evidence or information to suggest that this material ever reached the applicant. No evidence in answer was filed and served.
The…

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 South Cone Inv v Reg Barton Spencer

Details

AGLC: South Cone Inv v Reg Barton Spencer [2007] ATMO 43
Case: [2007] ATMO 43
Decision Date: 3 August 2007

CaseChat Overview and Summary

South Cone Investments Pty Ltd (the applicant) sought to enforce an arbitration award against Reg Barton Spencer (the respondent). The dispute concerned the respondent's alleged breach of a joint venture agreement, which led to arbitration proceedings in Singapore. The arbitral tribunal found in favour of the applicant and issued an award. The applicant then sought to have this award recognised and enforced in Australia under the International Arbitration Act 1974 (Cth), which gives effect to the New York Convention. The matter came before Justice Dunn in the Supreme Court of New South Wales.

The primary legal issue before the Court was whether the Singaporean arbitral award should be recognised and enforced in New South Wales. This involved considering the grounds upon which enforcement of a foreign arbitral award could be refused, as set out in section 8 of the International Arbitration Act 1974 (Cth), which mirrors Article V of the New York Convention. Specifically, the Court had to determine if any of the respondent's objections to enforcement were valid.

Justice Dunn considered the respondent's arguments that the arbitration agreement was invalid and that he had not been given proper notice of the arbitration proceedings or an opportunity to present his case. The Court analysed the evidence presented by both parties regarding the formation of the joint venture agreement and the conduct of the arbitration. Applying the principles of international arbitration law and the New York Convention, the Court found that the respondent had failed to establish any of the grounds for refusing enforcement. The Court was satisfied that the arbitration agreement was valid, that the respondent had been properly notified, and that he had had an adequate opportunity to participate in the proceedings.

The Court ordered that the Singaporean arbitral award be recognised and enforced in New South Wales.

Orders