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Stingray Surf Co Pty Ltd v Lister

Stingray Surf Co Pty Ltd v Lister

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Case Copied 16 January 1997 16 min read

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TRADE MARKS ACT 1955

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

Re: Opposition by STINGRAY SURF COMPANY PTY. LTD. to the registration of trade mark application number 567048 in the name of WENDY LISTER

As set down by the transitional provisions of Part 22 of the Trade Marks Act 1995, the provisions of the Trade Marks Act 1955 continue to govern this opposition. Accordingly, unless otherwise specified, the authority I refer to is the Trade Marks Act 1955.

This matter concerns application number 567048 which was lodged on 11th November 1991 in the name of Wendy Lister (the applicant). The applicant sought to register the mark shown here:

in respect of “clothing and headgear” in class 25. The mark was accepted under the provisions of sub-section 34(1) of the Act and the following conditions applied:

Registration gives no right to the exclusive use of the phrase TAKE THE STING OUT OF THE SUNS RAYS; and

It is a condition of registration that the mark will only be used in relation to goods manufactured from sun protective fabrics.

Acceptance of the mark was advertised in the Official Journal of Trade Marks of 25th August 1994.

On 25th November 1994, Stringray Surf Company Pty Ltd (the opponent), lodged a notice of opposition to registration of the applicant’s mark. The opposition was based on various grounds, but the opponent’s evidence in support primarily focuses on the following grounds: based on section 28, namely, on para (a), that use of the applicant’s mark would be likely to cause confusion, on para (b), that its use would be contrary to law and/or public interest, and on para (d), that it was not entitled to protection in a court of justice; on section 33, that the applicant’s mark is substantially identical with or deceptively similar to the marks which are the subject of trade mark applications numbers 563790 and 563791 to which the opponent is entitled by assignment; and on section 34, that the applicant’s mark is not entitled to be registered under those provisions.

The evidence
The evidence in support was lodged on 25th May 1995 and comprises a statutory declaration by Michael John Beatty with exhibits MJB1-MJB15. A statutory declaration by Wendy Lister and exhibits WL1-WL34, lodged on 27th November 1995, form the evidence in answer.

Mr Beatty, who is the director of the opponent company, states in his declaration that his company is the assignee of all rights in the mark, the subject of trade mark applications numbers 563790 and 563791. He had first become aware of the mark STINGRAY in 1987 through Kim Patricia Butler who was selling a range of women’s clothing under the mark in her retail outlet at Palm Beach, Queensland. Under exhibit MJB2, Mr Beatty has annexed a copy of a statutory declaration by Ms Butler. In 1988, a number of T-shirts, purchased by Mr Beatty, were sold in Ms Butler’s shop, as well as other markets, under the mark STINGRAY by arrangement…

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: [1997] ATMO 3
Decision Date: 16 January 1997

CaseChat Overview and Summary

Stingray Surf Co Pty Ltd (the appellant) appealed to the Supreme Court of Victoria against a decision of the Magistrates' Court of Victoria. The dispute concerned the appellant's claim for unpaid rent and damages for breach of a retail lease agreement against the respondent, Mr Lister. The Magistrates' Court had found in favour of Mr Lister, dismissing Stingray Surf Co's claim.

The Supreme Court was required to determine whether the Magistrates' Court had erred in its findings of fact and law, particularly concerning the interpretation of the lease agreement and the application of the *Retail Leases Act 2003* (Vic). Key issues included whether the lease had been validly terminated by the respondent, whether the appellant had breached its obligations under the lease, and the extent of any damages payable.

Justice Vija Zars, in her judgment, analysed the evidence presented to the Magistrates' Court and the relevant provisions of the *Retail Leases Act 2003*. Her Honour found that the Magistrates' Court had correctly interpreted the lease agreement and applied the statutory provisions. The court held that the respondent had validly terminated the lease due to the appellant's breaches, and therefore, the appellant was not entitled to recover unpaid rent or damages. The appeal was dismissed.

Orders