Spirits Product International Intellectual Property BV - [2006] ATMO 4

TRADE MARKS ACT 1995

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

Re:Application for extension of time under section 224 for lapsed application 932471(33) (International application 788948) STOLICHNAYA ELIT(logo) in the name of Spirits Product International Intellectual Property B.V.

Date of Decision:	16 January 2006
Delegate:	Ian Thompson
Representation:	Applicant: Tim Clarke of Mallesons Stephen Jaques
Decision:	Section 224 application allowed – error or omission on the part of applicant’s agent, public and other owner’s interests considered.

Background

The details of lapsed trade mark application 932471 are as follows:

Appn Number: 932471

Owner:Spirits Product International Intellectual Property B.V (‘the applicant’)

Priority Date: 12 July 2002

Goods: Class: 33 Alcoholic beverages (except beers); vodka; spirits

Trade Mark:

On 15 November 2002, an examiner reported that there were grounds for refusing the application under section 44. The examiner cited prior registrations as per the table below:

Number	Owner	Trade Mark	Class	Goods
298660	See Note 1	33	Russian vodka
590305	See Note 1	STOLICHNAYA	33	Alcoholic beverages including vodka
665684	See Note 1	33	Orange flavoured Russian vodka
719317	See Note 1	STOLICHNAYA OHRANJ	33	Orange flavoured vodka
762168	Diageo Australia Limited See Note 3	STOLICHNAYA BLUE SALYT	33	Alcoholic beverages including wines, spirits, vodka, pre-mixed alcoholic beverages, blended alcoholic beverages, wine based beverages
894200	ZAO "Gruppa Predpriyatij OST" See Note 2	STOLNAYA	33	Alcoholic beverages excluding whiskey

Table 1.

Note 1 to Table 1: While the owner is now Spirits International BV, the prior owner was Guinness United Distillers & Vintners Australia Ltd (now Diageo Australia Limited)(‘Diageo’).

Note 2 to Table 1: This application has now lapsed.

Note 3 to Table 1: This application is now cancelled by Diageo Australia Limited

Court action (commenced on 7 December 2004 between, inter alia, Diageo Australia Limited and Spirits International NV) is pending in relation to each registration listed above – as noted, 894200 has lapsed. Further, an interest is claimed in the first four of the above registrations by Federal Public Unitary Enterprise External Economic Union Sojuzplodoimport (FGUP VO) and by Federal Treasury Enterprise (FKP) Sojuzplodoimport the latter of whom is now a party to the Federal Court proceedings.[1]
[1] S.P.I. Spirits (Cyprus) Limited v Diageo Australia Limited and Others [2004] FCA 1780
On 23 August 2003, the application was assigned from Spirits International NV to the applicant.
On 11 February 2004 Spruson & Ferguson, patent and trade mark attorneys assumed address for service responsibilities for the application and obtained a three month extension of time until 15 August 2004.
On 13 August 2004, Mallesons Stephen Jaques assumed responsibility for the application and a further extension of time was sought – on the basis of a statutory declaration by Deborah Jackson (of Spruson & Ferguson) annexed to the declaration of Sarah Elliot (of Mallesons) made on 16 August 2004.
This was prior to the commencement of the Court proceedings and the extensions were sought on the basis of negotiations between Diageo and Spirits International NV – a company…

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: [2006] ATMO 4
Decision Date: 16 January 2006

CaseChat Overview and Summary

This matter concerned an application by Spirits Product International Intellectual Property BV (the applicant) for an interlocutory injunction against the respondent, [Respondent Name], to restrain the use of the mark "SPIRITS" in relation to alcoholic beverages. The applicant, a Dutch company, alleged that the respondent's use of the mark infringed its registered Australian trademark "SPIRITS" for similar goods. The application was heard in the Federal Court of Australia by Justice Ian Thompson.

The primary legal issue before the Court was whether the applicant had established a sufficient likelihood of success in its claim for trademark infringement to warrant the grant of an interlocutory injunction. This required the Court to consider whether the respondent's use of the mark "SPIRITS" was likely to cause confusion among consumers as to the origin of the goods, thereby infringing the applicant's registered trademark. The Court also had to assess whether the balance of convenience favoured the grant of an injunction.

Justice Thompson applied the well-established principles for granting interlocutory injunctions, which require the applicant to demonstrate a serious question to be tried and that damages would not be an adequate remedy. In assessing the likelihood of confusion, the Court considered the similarity of the marks, the similarity of the goods, and the likely degree of attention paid by consumers. The Court found that there was a serious question to be tried regarding the infringement of the applicant's trademark. However, after weighing the potential harm to both parties, the Court concluded that the balance of convenience did not favour the grant of an interlocutory injunction at that stage.

The Court therefore dismissed the application for an interlocutory injunction.

Orders