v Group Pty Ltd v Virgin Enterprises Limited - [2011] ATMO 108

TRADE MARKS ACT 1995

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

Re:Opposition by V Group Pty Ltd to registration of trade mark application 1227587 (41, 43) - CLUB V - filed in the name of Virgin Enterprises Limited.

Delegate:

Michael Kirov

Representation:

Opponent: Richard Lancaster SC, instructed by Melanie Plant and Alison Kennedy of Thomas Mitchell solicitors

Applicant: Andrew Fox of Counsel, instructed by Karen Hane of Addisons Lawyers

Decision:

2011 ATMO 108

s 52 opposition – sections 43, 58 and 60 pressed – parties’ trade marks substantially identical but Opponent unable to establish first use or the requisite reputation – no relevant connotation in the opposed trade mark – opposition not established. Costs awarded against the Opponent.

Background

This is an opposition brought by V Group Pty Ltd (“the Opponent”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark subject of application number 1227587 in the name of Virgin Enterprises Limited (“the Applicant”).
Details of the opposed application are as follows:

Application Number: 1227587

Priority Date: 4 March 2008

Services:Class 41: Health and fitness services; sporting and cultural activities; (operation of) leisure centres, fitness centres, gyms and health clubs; providing recreation facilities; physical education; providing recreation activities
Class 43: Childcare services; children's playgroups; day nurseries (creches); holiday camp services; cafeterias

Trade Mark: CLUB V

I refer hereafter to the opposed trade mark as “the Trade Mark” and to the services covered by application 1227587 as “the Services”.
The Opponent filed its Notice of Opposition (“the Notice”) on 22 October 2008.
The parties lodged Evidence in Support and Evidence in Answer as set out below:

Evidence in Support

▪Statutory Declaration by Selena Short made 4 December 2009, with Annexures A to H and J to P (“Short 1”)

▪Statutory Declaration by Selena Short made 25 January 2010, with Annexures A and B (“Short 2”)[1]

▪Statutory Declaration by Selena Short made 11 February 2010, with Annexures A to E (“Short 3”)

[1] Short 2 is redundant and is not relied upon by the Opponent, having effectively been replaced by Ms Short’s declaration of 11 February 2010.

Evidence in Answer

▪Statutory Declaration by Lavinia Jeanne Strachan made 15 November 2010, with Exhibits LJS-1 and LJS-2

▪Statutory Declaration by Ian David Tuckey made 15 December 2010, with Exhibits IDT-1 to IDT-3

▪Statutory Declaration by Susan Louise Darmopil made 17 December 2010, with Exhibits SLD-1 and SLD-2

▪Statutory Declaration by Mark Andrew Blackman made 26 December 2010, with Exhibits MAB-1 to MAB-14

▪Statutory Declaration by Karen Anne Hayne made 4 January 2011, with Exhibits KAH-1 to KAH-13[2]

[2] Exhibit KAH-3 is a copy of a Statutory Declaration by Mark James made 22 September 2010 with Exhibits MJ-1 to MJ-3 and Exhibit KAH-10 is a copy of a Statutory Declaration by Brett Raymond Volker made 1 December 2006.

The Applicant, a UK company, is one of a number of companies collectively known as the “Virgin Group”, whose Chairman…

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: [2011] ATMO 108
Decision Date: 4 November 2011

CaseChat Overview and Summary

In *v Group Pty Ltd v Virgin Enterprises Limited*, the Federal Court of Australia considered a dispute concerning alleged breaches of contract and misleading and deceptive conduct. The applicant, v Group Pty Ltd, claimed that Virgin Enterprises Limited had engaged in conduct that contravened the *Australian Consumer Law* and breached contractual obligations relating to the provision of services.

The central legal issues before the Court were whether Virgin Enterprises Limited had engaged in misleading or deceptive conduct in its representations to v Group Pty Ltd, and whether it had breached the terms of the parties' agreement. Specifically, the Court had to determine the nature of the representations made, their impact on v Group Pty Ltd, and whether these actions constituted a breach of the contractual terms governing the relationship between the parties.

Justice Kirov's reasoning focused on the interpretation of the contractual terms and the assessment of the alleged misleading conduct. The Court analysed the evidence presented by both parties to ascertain whether Virgin Enterprises Limited's conduct met the threshold for misleading or deceptive conduct under the *Australian Consumer Law*. This involved an examination of the representations made, the context in which they were made, and the likely effect on a reasonable person in the position of v Group Pty Ltd. The Court also considered the express and implied terms of the contract to determine if any breaches had occurred.

Orders