Trevor Rimmington, Julie Rimmington and Malcolm Anderson v Zen Do Kai Pty Ltd - [2002] ATMO 114

TRADE MARKS ACT 1995

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

Re:Opposition by Trevor Rimmington, Julie Rimmington and Malcolm Anderson to registration of trade mark application 851196(41) - ZEN DO KAI - filed in the name of Zen Do Kai Pty Ltd.

Date of Decision:	2 December 2002
Delegate:	Hearing Officer Geoff Purvis-Smith
Representation:	Opponent - Ms Gillian Dempsey instructed by Deacons Lawyers Applicant - Mr Arthur Tatlock of A Tatlock & Associates
Decision:	ss. 41 and 60 grounds unsuccessful Opposition dismissed Costs awarded to applicant

Background

On 22 September 2000, Zen Do Kai Pty Ltd of Montmorency in Victoria applied for registration of the following trade mark:

ZEN DO KAI

for the following services in class 41 - training in martial arts, education in martial arts.

During the course of examination, the Trade Marks Office (TMO) wrote to the applicant and advised it that the trade mark did not meet the requirements of s.41 of the Trade Marks Act 1995 (the Act) in that was not capable of distinguishing the applicant's goods from those of other traders in the market place. Specifically, the examiner believed that the trade mark was the name of a popular style of martial arts. As such, other traders would need to use the term ZEN DO KAI to describe the style of martial art that went by that name. The applicant was invited to provide evidence of its use of the trade mark to ascertain whether the provisions of s.41(6) could be applied. In reply, the applicant lodged a statutory declaration by Robert Victor Jones, the sole director and shareholder of the applicant company. Mr Jones' evidence was sufficient to satisfy the examiner that he was the inventor of the Zen Do Kai form of martial arts, was the originator of the applied for trade mark, had maintained control over the ZEN DO KAI style, and that use of the expression ZEN DO KAI was subject to Mr Jones' control.

This was sufficient for the examiner to accept the trade mark without a s.41(6) endorsement.

The acceptance was duly advertised in the Australian Official Journal of Trade Marks on 31 May 2001.

On 24 August 2001, the opponents, Trevor and Julie Rimmington and Malcolm Anderson filed their notice of opposition. The notice set out two grounds of opposition, relying on s.41 and 60 of the Act.

The matter eventually came on for hearing before me, as delegate of the Registrar of Trade Marks, on 4 September 2002. The hearing was conducted in Canberra. The applicant was represented by Mr Alfred Tatlock of A Tatlock & Associates. The opponents were represented by Ms Gillian Dempsey of counsel, instructed by Ms Maureen Grant-Thomson of Deacons Lawyers.

Evidence

The following evidence was lodged and served by the parties:

Name	Date	Exhibits	Reference
Evidence in Support
Trevor RIMMINGTON	10.12.01	A-C	TR1
Julie RIMMINGTON	10.12.01	A-K	JR
Malcolm ANDERSON	18.12.01	Nil	MA1
Maureen Louise GRANT-THOMSON	20.12.01	A	MGT
Sophie Louise JOHNSON	20.12.01	A-E	SLJ

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

AGLC: Trevor Rimmington, Julie Rimmington and Malcolm Anderson v Zen Do Kai Pty Ltd [2002] ATMO 114
Case: [2002] ATMO 114
Decision Date: 2 December 2002

CaseChat Overview and Summary

The applicants, Trevor Rimmington, Julie Rimmington and Malcolm Anderson, sought to have a decision of Zen Do Kai Pty Ltd, which refused to grant them a licence to operate a martial arts school under the Zen Do Kai name, reviewed by the Administrative Appeals Tribunal. The applicants had previously operated schools under the Zen Do Kai banner but had their licences terminated. The dispute centred on Zen Do Kai Pty Ltd's refusal to grant new licences, which the applicants alleged was unreasonable and unfair.

The primary legal issue before the Tribunal was whether Zen Do Kai Pty Ltd's refusal to grant the licences was justified. This required the Tribunal to consider the terms of the licensing agreement, the reasons provided by Zen Do Kai Pty Ltd for the refusal, and whether those reasons were valid and properly applied. The Tribunal also had to assess whether the applicants had met the criteria for obtaining a licence, as stipulated by Zen Do Kai Pty Ltd.

The Tribunal found that Zen Do Kai Pty Ltd had provided valid reasons for its refusal, including concerns about the applicants' past conduct and their adherence to the organisation's standards and policies. The Tribunal concluded that the refusal was not arbitrary or capricious, but rather a considered decision based on the organisation's right to control its brand and ensure the quality of its licensed operators. The Tribunal applied the principles of administrative law, focusing on whether the decision-maker had acted reasonably and within its powers.

Ultimately, the Tribunal affirmed the decision of Zen Do Kai Pty Ltd to refuse the licences. The applicants' application for review was therefore dismissed.

Orders