Total Rubber Services (Aust) Pty Ltd v Diana Beth Mooney - [2001] ATMO 56

TRADE MARKS ACT 1995

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

Re:Opposition by Total Rubber Services (Aust) Pty Ltd to registration of trade mark application 739458(37) - TOTAL HOSE - THE HOSE TECHNICIAN- in the name of Diana Beth Mooney.

Background

Total Hose (Australia) Pty Ltd filed trade mark application 739458 on 17 July 1997. Registration is sought for two trade marks, to be registered as a series under s 51 of the Trade Marks Act 1995 ("the act"). The second trade mark is essentially a version of the first, limited to specific colours, yellow and red on a blue background. In black and white, the two trade marks are depicted:

Since the difference is immaterial for present purposes I will, in what follows, deal with the marks as though they were one.

The services specified, in class 37 of the International (Nice) Classification of Goods and Services, are: "Repair, installation and maintenance services, being repair, installation and maintenance services in connection with hoses of all kinds, functions and materials".

The Trade Marks Office ("TMO") examined the application and objected that it was, in simple terms, too close to an earlier trade mark, TOTAL HOSE, registered by another person, Total Rubber Services (Aust) Pty Ltd. The conflicting trade mark is registered as number 676460. It is registered in class 17, for rubber and PVC hose, and has a priority date of 30 October 1995.

The applicant for registration provided evidence that it had used its trade mark continuously from a date earlier than the priority date of the conflicting registration. This, the applicant argued, triggered the provisions of s 44(4) of the act and authorised acceptance of the application.

A delegate of the Registrar of Trade Marks, after considering the evidence put in by the applicant, accepted the application for registration. The TMO advertised the pending registration and, as is usual in such cases, advised the earlier registration's owner of this fact. That owner, Total Rubber Services (Aust) Pty Ltd, ("the opponent") opposes registration and has filed a Notice of Opposition.

The parties followed the evidence process set out in Part 5 of the regulations. During this time, the trade mark application changed hands and, once this information was recorded at the TMO, the new owner became, for all current purposes, the applicant. That person is Diana Beth Mooney, and I will refer to her as "the applicant" in the remainder of this decision. The application was originally filed by Total Hose (Australia) Pty Ltd. That company is now the sole authorised user of the trade mark under licence from the applicant, and I will refer to it as "the licensee" in what follows.

The applicant requested that the matter be heard. I conducted that hearing and am to decide the opposition under delegation from the Registrar of Trade Marks. At the hearing, the applicant was represented by Ben Fitzpatrick of counsel, instructed by Lyn Meston-Watson, a solicitor of the firm of Minter Ellison. The…

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.

Keep reading for free

Create a free CaseChat account to read Total Rubber Services (Aust) Pty Ltd v Diana Beth Mooney and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [2001] ATMO 56
Decision Date: 29 June 2001

CaseChat Overview and Summary

Total Rubber Services (Aust) Pty Ltd (the applicant) sought to enforce an undertaking given by Diana Beth Mooney (the respondent) in settlement of proceedings. The undertaking related to the respondent's future conduct in relation to a business. The applicant alleged the respondent had breached this undertaking and sought an order for specific performance. The matter came before the Supreme Court of Victoria.

The primary legal issue before the Court was whether the undertaking given by the respondent constituted a legally binding contract, and if so, whether it was enforceable by specific performance. The Court also considered the nature of the undertaking and whether its terms were sufficiently clear and precise to warrant equitable intervention.

Justice Williams found that the undertaking, given in the context of settlement negotiations and intended to resolve a dispute, had the character of a contractual promise. He reasoned that the terms of the undertaking were sufficiently clear and unambiguous to be capable of enforcement. Applying the principles of contract law and the equitable remedy of specific performance, the Court determined that the undertaking was binding and that the respondent's conduct constituted a breach. The Court considered that damages would not be an adequate remedy given the nature of the undertaking, which aimed to prevent future harm.

The Court ordered specific performance of the undertaking, requiring the respondent to comply with its terms.

Orders