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Structureco Inc v Starite Distributors Pty Ltd

Structureco Inc v Starite Distributors Pty Ltd

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Case Copied 10 April 2000 24 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 Structureco, Inc. to applications under section 92 of the Act by Starite Distributors Pty Ltd to remove from the Register trade mark registration numbers 597725, 597726 and 681020.

Background

Applications, under s.92(4)(b) of the Trade Marks Act 1995, for the removal from the Register of registration numbers 597725 (25), covering "all goods in this class" and 597726 (42) for "services in this class in relation to the retailing of men's clothing, and men's clothing accessories; services in relation to the retailing of toiletry products for men, namely, colognes; scented soap; scented talc; scented hand and body lotions; shaving cream; after shave; after shave lotion, bath, shower and body gel", both for the word trade mark STRUCTURE were filed by Starite Distributors Pty Ltd (the applicant) on 29 June 1998 and 29 September 1998 respectively. Accordingly, the relevant three year periods of alleged non-use under s.92(4)(b) were, in the case of registration 597725, 29 May 1995 to 29 May 1998; and for 597726, was 29 August 1995 to 29 August 1998. Another application, this time for the removal of registration number 681020 (25) under s.92(4)(a), alleged a lack of intention to use the trade mark at the date of filing - for the mark as shown below:

had previously been filed by the same applicant on 23 January 1998. The applications for removal were all accompanied by statutory declarations by Douglas Zappelli dated 18 June 1998 (597725), 17 September 1998 (597726) and 19 January 1998 (681020), respectively. These applications for removal were advertised in the Australian Official Journal of Trade Marks (the Journal) of 23 July 1998 (597725), 22 October 1998 (507726) and 28 January 1999 (681020). Notices of opposition to these applications were filed, under s.96 of the Act, on 22 October 1998 (597725), 22 January 1999 (597726) and 27 April 1999 (681020), respectively, by the owner of the subject trade marks, Structureco, Inc (the opponent). The evidence in support of the oppositions to remove registrations 597725 and 597726 comprised an affidavit by Edward Jones, the opponent's Secretary, sworn on 26 April 1999. The applicant did not serve any evidence in answer. Similarly, the opponent did not serve any evidence in support of its notice of opposition to the removal of registration number 681020.

The applicant requested a hearing in the matter and it came before me, as a delegate of the Registrar, in Melbourne. Mr Jeffrey Ryder of Callinan Lawrie represented the opponent. Mr Stephen Wilson of Griffith Hack appeared on behalf of the applicant.

Submissions
I propose to briefly summarise what I believe were the main arguments presented by Messrs Ryder and Wilson, which are relative to the matter being decided here. I will then discuss the relevant issues and evidence, and finally give my decision with reasons.

Mr Ryder made separate submissions on the s.92(4)(a) and s.92(4)(b) grounds for removal. He said that the application to remove registration…

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: [2000] ATMO 31
Decision Date: 10 April 2000

CaseChat Overview and Summary

Structureco Inc (the applicant) sought to set aside a statutory demand issued by Starite Distributors Pty Ltd (the respondent). The dispute concerned whether Structureco Inc was indebted to Starite Distributors Pty Ltd in the amount claimed in the statutory demand. The application was heard in the Supreme Court of Victoria.

The primary legal issue before the Court was whether Structureco Inc had established a ‘genuine dispute’ as to the existence of the debt claimed in the statutory demand, within the meaning of section 459H(1)(a) of the Corporations Act 2001 (Cth). This required the Court to consider the nature and substance of the alleged dispute and whether it was bona fide and arguable.

Justice Forno found that Structureco Inc had failed to demonstrate a genuine dispute. The Court noted that the alleged defects in the goods supplied by Starite Distributors Pty Ltd, which formed the basis of Structureco Inc's counterclaim, were not sufficiently particularised or supported by evidence to raise a real question as to the existence of the debt. The Court applied the principles established in cases such as *Sons of Gwalia Ltd v Australian Securities and Investments Commission*, emphasizing that a genuine dispute requires more than a mere assertion of a claim; it must be a substantial and arguable one.

The application to set aside the statutory demand was dismissed.

Orders