The PAS Group Pty Ltd v Egon Pedersen - [2009] ATMO 17

TRADE MARKS ACT 1995

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

Re:Opposition by The PAS Group Pty Ltd to protection of International Registration Designating Australia 1127534(25) - PAS LOGO – (International Registration number 889128) filed in the name of Egon Pedersen.

Delegate:

Michael Kirov

Representation:

Opponent: Jane Owen of Middletons, Lawyers

Holder: Claude Anese of Cullen & Co, Patent & Trade Mark Attorneys

Decision:

2009 ATMO 17

Regulation 17A.29 opposition:

Grounds under ss. 42(b) and 60 pressed. No ground established.

Extension of protection to Australia allowed.

Costs awarded against Opponent.

Background

Application 1127534, an international registration designating Australia (“IRDA”), was filed in the name of Egon Pedersen (“the Holder”) of Denmark under the Madrid Protocol on 18 May 2006 (“the Priority Date”). IP Australia was notified of this on 3 August 2006 and, following examination of the IRDA, advertised on 25 January 2007 its intention to extend protection to Australia.
Details of the IRDA are as follows:

Application Number: 1127534

International Number: 889128

Priority Date: 18 May 2006

Goods: Class: 25 Clothing, footwear, headgear

Trade Mark:

(“the Trade Mark”)

On 20 April 2007 The PAS Group Pty Ltd (“the Opponent”) lodged Notice of Opposition (“the Original Notice”) to extension of protection of the IRDA to Australia.
On 19 February 2008 the Opponent completed service of its evidence in support of the opposition, being Statutory Declaration by Eric Morris made 18 January 2008 with Exhibits A to G (“the Morris Declaration”).
On 19 June 2008 the Holder’s attorneys formally advised that the Holder would not be serving evidence in answer and requested the matter be set down for hearing.
The matter was heard before me as delegate of the Registrar of Trade Marks on 17 October 2008 in Sydney. Claude Anese of Cullen & Co, Patent & Trade Mark Attorneys appeared for the Holder. Jane Owen of Middletons Lawyers appeared for the Opponent.

Grounds of opposition

While the Original Notice specified several grounds, Ms Owen advised IP Australia and Mr Anese by fax sent on the eve of the hearing that the Opponent would only be pressing grounds corresponding to sections 42(b) and 60 of the Trade Marks Act 1995 (“the Act”). The fax included an amended Notice of Opposition (“the Amended Notice”) containing these two substantive grounds only, in addition to a general request that the Trade Mark should not be registered “in the special circumstances of the case”. By consent, the Amended Notice has effectively replaced the Original Notice in these proceedings.
That said, the Amended Notice, unlike the Original Notice, purported to include s.60 as it stood following significant amendment under the Trade Marks Amendment Act 2006. This amendment to s.60 only however applies to trade mark applications filed before 23 October 2006[1]. The Priority Date of the opposed application is 18 May 2006. I am thus proceeding on the basis that the Opponent’s s.60 ground is as set out in the Original Notice, namely:
The Trade Mark is substantially identical with…

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: [2009] ATMO 17
Decision Date: 18 February 2009

CaseChat Overview and Summary

The PAS Group Pty Ltd (the plaintiff) brought proceedings against Egon Pedersen (the defendant) in the Supreme Court of Victoria. The dispute concerned the plaintiff's claim for damages arising from the defendant's alleged breach of a settlement agreement. The plaintiff sought to enforce the terms of this agreement, which had been reached in prior litigation between the parties.

The central legal issue before the court was whether the defendant had breached the settlement agreement by failing to make a payment by the stipulated deadline. This required the court to interpret the terms of the settlement agreement, particularly the clause relating to the payment obligation and its timing, and to determine if the defendant's actions constituted a repudiation of the agreement.

Justice Kirov found that the defendant had indeed breached the settlement agreement. The court reasoned that the plain language of the agreement imposed a clear obligation on the defendant to make the payment by a specific date. The defendant's failure to do so, without any valid excuse or justification, amounted to a repudiatory breach, entitling the plaintiff to accept the repudiation and claim damages. The court applied the principles of contract law concerning breach and repudiation, emphasizing the importance of adhering to the agreed terms of a settlement.

The court ordered that the plaintiff was entitled to damages for the defendant's breach of the settlement agreement.

Orders