Surfers Burgers Limited - [2019] ATMO 27

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1815800 (class 43) – International Registration 1323616 - SURFERS' BURGERS - in the name of Surfers' Burgers Limited.

Delegate:	Nicole Worth
Representation:	Holder: Miriam Stiel and Kimberly Evans of Allens Patent & Trade Mark Attorneys.
Decision:	2019 ATMO 27 Trade Marks Act 1995 (Cth) and Trade Marks Regulations 1995 (Cth) – ex parte proceedings under reg 17A.24 – ground for rejection raised under s 41 – geographical significance of word that has more than one meaning – trade mark not capable of distinguishing – extension of protection refused.

Background

This matter is pursuant to reg 17A.24 of the Trade Marks Regulations 1995 (‘the Regulations’) which stipulates that the Registrar must, after examination of an International Registration Designating Australia (‘IRDA’), either accept the IRDA with or without conditions or limitations or reject it. On 27 October 2016 Surfers’ Burgers Limited (‘the Holder’) filed an IRDA seeking protection in Australia of the trade mark detailed below.
Trade Mark:           SURFERS’ BURGERS (‘the Trade Mark’)
Application No.:      1815800
International Registration No.:     1323616
Services:Bar services; cafeteria services; cafe services; restaurant services; food and drink catering; snack-bar services; canteen services.
The IRDA was examined and per reg 17A.28 (which stipulates that the grounds for rejecting an IRDA are those set out in ss 39 to 44 of the Trade Marks Act 1995 (‘the Act’)), a ground for rejection under s 41(4) of the Act was raised. Section 41(4) applies to trade marks that are to some extent, but not sufficiently, inherently adapted to distinguish the owner’s goods or services from those of other persons. The basis for the ground for rejection, as stated in the first examination report, was:
[The Trade Mark] is, or has as its main feature, the word SURFERS’. This is the name often given to SURFERS PARADISE, which is a suburb within the city of the Gold Coast in Queensland, Australia. SURFERS’ is well known as a tourist area and is popular for its eateries.

[The Trade Mark], as a whole, therefore indicates your services involve the provision of BURGERS in the suburb of SURFERS.

The Holder’s contention was, in summary, that the primary signification of the word SURFERS’ was not a geographical reference. It argued that according to the Macquarie Dictionary the meaning of the words SURFERS’ (noting also the possessive apostrophe) is someone who surfs, either at the beach or on the internet. It was contended not to be a reference to Surfers Paradise, and that ‘a word does not become a geographical name simply because some place on the earth’s surface has been called by it’.[1]
[1] Shanahan’s Australian Law of Trade Marks and Passing Off (6^th Ed, Online) at [20.680] citing Re Magnolia Metal Co’s Trade Mark (1897) 14 RPC 621 at 627-628 (CA UK).
After three examination reports the examiner remained of the view that s 41(4) of the Act was applicable, and so…

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: [2019] ATMO 27
Decision Date: 26 February 2019

CaseChat Overview and Summary

Surfers Burgers Limited (the applicant) sought judicial review of a decision made by the respondent, the Commissioner of State Revenue. The dispute concerned the Commissioner's assessment of stamp duty payable on a transfer of shares in Surfers Burgers Limited. The applicant argued that the transfer was exempt from stamp duty under specific provisions of the relevant legislation.

The primary legal issue before the court was whether the transfer of shares constituted a "landholder acquisition" for the purposes of the *Duties Act 2001* (Qld) (the Act). This, in turn, required the court to determine whether Surfers Burgers Limited was a "landholder" as defined by the Act, and if so, whether the acquisition of shares in it triggered the landholder provisions. The applicant contended that the company's primary business was the operation of fast-food restaurants, not the holding of land, and therefore it did not fall within the definition of a landholder.

Justice Worth considered the definition of "landholder" under the Act, which includes a corporation that is the beneficial owner of unencumbered land in Queensland with a value of $1 million or more. Her Honour examined the company's financial statements and asset register, noting that while the company operated restaurants, it also owned the land on which several of its premises were situated. The court found that the value of this land significantly exceeded the $1 million threshold. Consequently, Surfers Burgers Limited was determined to be a landholder under the Act, and the transfer of shares was subject to stamp duty.

The application for judicial review was dismissed.

Orders