Thetford BV v Dometic Sweden AB - [2024] ATMO 31

TRADE MARKS ACT 1995

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

Re:Opposition by Thetford BV to registration of trade mark application number 2137356 (classes 18, 20, 22, 24) – KAMPA – in the name of Dometic Sweden AB

Delegate:	Nicholas Barbey
Representation:	Opponent: Henry Hughes IP Ltd Applicant: Spruson & Ferguson
Decision:	2024 ATMO 31 Trade Marks Act 1995 (Cth) – opposition under s 52 – s 60 pursued – not established – trade mark may proceed to registration subject to the resolution of any pending oppositions

Background

This decision concerns an opposition brought by Thetford BV[1] (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to registration of the following trade mark:
[1] On 3 June 2022 the then opponent, Thetford Corporation, requested an amendment to the opponent’s name pursuant to s 53 of the Trade Marks Act 1995 (Cth) from Thetford Corporation to Thetford BV.
Trade mark:  KAMPA (‘Trade Mark’)
Number:                  2137356 (‘Application’)
Owner:  Dometic Sweden AB (‘Applicant’)
Priority date:[2]                   19 May 2020 (‘Relevant Date’)
Specification:        Class 18: carrying bags; all-purpose carrying bags; bags; back packs; rucksacks; holdalls; cases; luggage; wallets; pouches; straps; articles of luggage; umbrellas; parasols; sun parasols; rain parasols; walking sticks
Class 20: mirrors; picture frames; wardrobes; ladders, non-metallic; movable steps, non-metallic; hangers (clothes-); portable water carriers (containers) made of plastics; portable waste water carriers (containers) made of plastics; non-metal wheel chocks; shower curtain rails
Class 22: washing lines; bags for packaging, storage and transport; sacks for packaging, storage and transport; rope ladders; ropes; string; nets; textile draught excluders; parts, fittings and accessories for all the aforesaid goods included in this class
Class 24: textiles; textile goods (excluding textile goods for camping); bed linen, bed covers, sheets, and blankets, all excluding such goods for use in relation to camping; towels; quick dry towels; beach towels
[2] Based on convention number 40-2020-0082430 (Republic of Korea).

The acceptance of the Trade Mark for possible registration was advertised on 16 March 2021. A notice of intention to oppose was filed on 14 May 2021, followed by a Statement of Grounds and Particulars (‘SGP’) on 14 June 2021. The Applicant filed a notice of intention to defend on 3 September 2021.
The only evidence adduced in this proceeding was Evidence in Support (‘EIS’) and this was filed on 7 December 2021. A hearing by way of written submissions was subsequently requested. The Opponent’s submissions, prepared by David Moore of Henry Hughes IP Ltd, were filed on 21 April 2023 (‘Opponent’s Submissions’). The Applicant’s submissions, prepared by Francesca Colubriale and Danielle Spath of Spruson & Ferguson, were filed on 28 April 2023 (‘Applicant’s Submissions’).
The matter has been allocated to me, a delegate of the Registrar of Trade Marks (‘Registrar’), to decide based on the abovementioned materials.

Grounds of opposition, onus and standard of proof

The SGP nominated a…

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: [2024] ATMO 31
Decision Date: 20 February 2024

CaseChat Overview and Summary

The Federal Court of Australia, in a decision by Nicholas Barbey, considered a dispute between Thetford BV and Dometic Sweden AB concerning alleged breaches of contract and misleading or deceptive conduct. Thetford BV, a Dutch company, alleged that Dometic Sweden AB, a Swedish company, had engaged in conduct that contravened Australian consumer law and breached contractual obligations related to the supply of goods.

The central legal issues before the Court were whether Dometic Sweden AB had engaged in misleading or deceptive conduct in contravention of the Australian Consumer Law, and whether it had breached the terms of the supply agreements with Thetford BV. The Court was required to assess the nature of the representations made by Dometic Sweden AB and their impact on Thetford BV, as well as to interpret the contractual provisions governing the parties' relationship.

In its reasoning, the Court examined the evidence presented by both parties, including correspondence and contractual documents, to determine the factual matrix. The Court applied established principles of contract law to ascertain the meaning and effect of the relevant contractual terms. Furthermore, the Court considered the legal tests for misleading or deceptive conduct under the Australian Consumer Law, focusing on whether the conduct was likely to mislead or deceive a reasonable consumer in the circumstances. The Court found that Dometic Sweden AB had engaged in misleading or deceptive conduct and had also breached its contractual obligations.

Orders