Spagnuolo v Mantra IP Pty Ltd - [2012] FCA 1038

FEDERAL COURT OF AUSTRALIA
Spagnuolo v Mantra IP Pty Ltd [2012] FCA 1038

Citation: Spagnuolo v Mantra IP Pty Ltd [2012] FCA 1038

Appeal from: Application for extension of time: Mantra IP Pty Ltd v Spagnuolo [2012] FCA 769
Application for leave to appeal: Mantra IP Pty Ltd v Spagnuolo [2012] FCA 769

Parties: DANILO SPAGNUOLO v MANTRA IP PTY LTD ACN 129 980 981 and REGISTRAR OF TRADE MARKS

File number: QUD 385 of 2012

Judge: LOGAN J

Date of judgment: 10 September 2012

Catchwords:
PRACTICE AND PROCEDURE – appeal – leave to – where leave to appeal not obtained within time provided pursuant to r 35.13 of the Federal Court Rules 2011 (Cth)– consideration of where interests of justice lie – whether particular point raises a question of general importance to the parties and more widely – leave to appeal outside of time granted

INTELLECTUAL PROPERTY – trade marks – whether leave to appeal pursuant to s 195 of the Trade Marks Act 1995 (Cth) should be granted – occasion for appellate scrutiny of evidentiary case if leave granted – leave to appeal warranted

INTELLECTUAL PROPERTY – trade marks – where leave to appeal pursuant to s 195 of the Trade Marks Act 1995 (Cth) is granted – whether a stay of the orders of the Court should be granted – where applicant’s opposition to the registration of the respondent’s trade mark was successful before the Registrar for Trade Marks though unsuccessful before single Judge of the Court – potential for mischief in the marketplace if stay not ordered prior to final judgment – stay of orders granted

Legislation: Trade Marks Act 1995 (Cth) ss 41, 195
Federal Court Rules 1979 (Cth) O 52 r 5
Federal Court Rules 2011 (Cth) r 35.13

Cases cited: Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511 considered
Jess v Scott (1986) 12 FCR 187 followed
Mantra IP Pty Ltd v Spagnuolo [2012] FCA 769 cited
MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236 considered
Scotch Whisky Association v De Witt (2008) 75 IPR 280 distinguished
Spagnuolo v Mantra IP Pty Ltd (2010) 90 IPR 413 cited

Date of hearing: 10 September 2012

Place: Brisbane

Division: GENERAL DIVISION

Category: Catchwords

Number of paragraphs: 24

Counsel for the Applicant: Mr R Webb SC with Mr T Houghton

Solicitor for the Applicant: Gold IP Lawyers

Solicitor for First Respondent: King & Wood Mallesons

Solicitor for the Second Respondent: The Second Respondent did not appear

IN THE FEDERAL COURT OF AUSTRALIA

QUEENSLAND DISTRICT REGISTRY

GENERAL DIVISION

QUD 385 of 2012

BETWEEN:
DANILO SPAGNUOLO
Applicant

AND:
MANTRA IP PTY LTD ACN 129 980 981
First Respondent

REGISTRAR OF TRADE MARKS
Second Respondent

JUDGE:

LOGAN J

DATE OF ORDER:

10 SEPTEMBER 2012

WHERE MADE:

BRISBANE

THE COURT ORDERS THAT:
1.The time within which leave to file the application for leave to appeal is extended to 8 August 2012, the date upon which the application was filed electronically in…

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] FCA 1038
Decision Date: 10 September 2012

CaseChat Overview and Summary

Spagnuolo v Mantra IP Pty Ltd was a case involving a dispute over the registration of a trade mark. The applicant, Spagnuolo, opposed the registration of a trade mark by the respondent, Mantra IP Pty Ltd. The case was heard in the Federal Court of Australia, where the primary judge dismissed the applicant's opposition to the registration of the trade mark. The applicant subsequently sought leave to appeal the decision, but the application was filed outside the time limit set out in the Federal Court Rules 2011 (Cth).

The legal issues in the case centred around the grant of leave to appeal, both under the Federal Court Rules and the Trade Marks Act 1995 (Cth). The court had to consider whether the interests of justice required it to grant leave to appeal despite the late filing of the application, and whether the appeal raised a question of general importance. The court also had to consider whether a stay of the orders of the Court should be granted pending the determination of the appeal.

The court found that the interests of justice did require it to grant leave to appeal, as the appeal raised a question of general importance to the parties and more widely. The court also found that a stay of the orders of the Court should be granted pending the determination of the appeal, as there was a potential for mischief in the marketplace if the stay was not ordered. The court therefore granted leave to appeal and stayed the orders of the Court made on 19 July 2012 pending the hearing and determination of the appeal. The applicant was ordered to pay the costs of the respondent.

Orders

Orders of the court

1. The time within which leave to file the application for leave to appeal is extended to 8 August 2012, the date upon which the application was filed electronically in the Court’s registry.

2. Leave to appeal against the judgment given on 19 July 2012, on the grounds set out in the draft Notice of Appeal as exhibited to the affidavit of Mr Goldschmied, is granted.

3. The orders of the Court made on 19 July 2012 are stayed pending the hearing and determination of the appeal, or further earlier order.

4. The applicant to pay the first respondent’s costs of and incidental to the application to be taxed if not agreed.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

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Citation:		Spagnuolo v Mantra IP Pty Ltd [2012] FCA 1038
Appeal from:		Application for extension of time: Mantra IP Pty Ltd v Spagnuolo [2012] FCA 769 Application for leave to appeal: Mantra IP Pty Ltd v Spagnuolo [2012] FCA 769
Parties:		DANILO SPAGNUOLO v MANTRA IP PTY LTD ACN 129 980 981 and REGISTRAR OF TRADE MARKS
File number:		QUD 385 of 2012
Judge:		LOGAN J
Date of judgment:		10 September 2012
Catchwords:		PRACTICE AND PROCEDURE – appeal – leave to – where leave to appeal not obtained within time provided pursuant to r 35.13 of the Federal Court Rules 2011 (Cth)– consideration of where interests of justice lie – whether particular point raises a question of general importance to the parties and more widely – leave to appeal outside of time granted INTELLECTUAL PROPERTY – trade marks – whether leave to appeal pursuant to s 195 of the Trade Marks Act 1995 (Cth) should be granted – occasion for appellate scrutiny of evidentiary case if leave granted – leave to appeal warranted INTELLECTUAL PROPERTY – trade marks – where leave to appeal pursuant to s 195 of the Trade Marks Act 1995 (Cth) is granted – whether a stay of the orders of the Court should be granted – where applicant’s opposition to the registration of the respondent’s trade mark was successful before the Registrar for Trade Marks though unsuccessful before single Judge of the Court – potential for mischief in the marketplace if stay not ordered prior to final judgment – stay of orders granted
Legislation:		Trade Marks Act 1995 (Cth) ss 41, 195 Federal Court Rules 1979 (Cth) O 52 r 5 Federal Court Rules 2011 (Cth) r 35.13
Cases cited:		Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511 considered Jess v Scott (1986) 12 FCR 187 followed Mantra IP Pty Ltd v Spagnuolo [2012] FCA 769 cited MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236 considered Scotch Whisky Association v De Witt (2008) 75 IPR 280 distinguished Spagnuolo v Mantra IP Pty Ltd (2010) 90 IPR 413 cited
Date of hearing:	10 September 2012
Place:	Brisbane
Division:	GENERAL DIVISION
Category:	Catchwords
Number of paragraphs:	24
Counsel for the Applicant:	Mr R Webb SC with Mr T Houghton
Solicitor for the Applicant:	Gold IP Lawyers
Solicitor for First Respondent:	King & Wood Mallesons
Solicitor for the Second Respondent:	The Second Respondent did not appear

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY
GENERAL DIVISION	QUD 385 of 2012

JUDGE:	LOGAN J
DATE OF ORDER:	10 SEPTEMBER 2012
WHERE MADE:	BRISBANE