Vamuta Pty Ltd v Sogo Co Ltd - [1996] FCA 651

TRADE MARKS - removal of marks from register for non-use - marks not registered - whether proceedings may be commenced before registration effected but after application for registration - effect of ss. 23 and 53 Trade Marks Act.

PRACTICE AND PROCEDURE - summary dismissal of proceedings - where cause of action has not accrued at the date of commencement of the proceeding.

Trade Marks Act 1955, ss.23, 53

Hunter Douglas Australia Pty. Limited v Perma Blinds (1970) 122 CLR 49
Oh Ho v Minister for Immigration and Ethnic Affairs (1987) 72 ALR 43
Chu Kheng Lim v The Minister for Immigration, Local Government and Ethnic Affairs (1992) 176 CLR 1
Wigan v Edwards (1973) 1 ALR 497
In re Keystone Knitting Mills' Trade Mark [1929] 1 Ch. 92
Baldry v Jackson [1976] 2 NSWLR 415

VAMUTA PTY LIMITED -V- SOGO CO LIMITED

NG 276 of 1995

Burchett J.
Sydney
19 July 1996

IN THE FEDERAL COURT OF AUSTRALIA )
  )
NEW SOUTH WALES DISTRICT REGISTRY )    NG 276 of 1995
  )
GENERAL DIVISION                 )

BETWEEN:VAMUTA PTY LIMITED

Applicant

AND:SOGO CO LIMITED

Respondent

CORAM:    Burchett J.
PLACE:    Sydney
DATE:     19 July 1996

MINUTE OF ORDER OF THE COURT

THE COURT ORDERS THAT the application be dismissed with costs.

NOTE: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA )
  )
NEW SOUTH WALES DISTRICT REGISTRY )    NG 276 of 1995
  )
GENERAL DIVISION                 )

BETWEEN:VAMUTA PTY LIMITED

Applicant

AND:SOGO CO LIMITED

Respondent

CORAM:    Burchett J.
PLACE:    Sydney
DATE:     19 July 1996

REASONS FOR JUDGMENT

BURCHETT J.:

This is an application under s.23 of the Trade Marks Act 1955 filed on 26 April 1995, by which the substantial relief sought is:

An order that trade mark registration 504 071 be expunged and removed from the Register of Trade Marks.

An order that trade mark registration 504 073 be expunged and removed from the Register of Trade Marks."

By motion on notice, the respondent seeks summary dismissal of the proceeding pursuant to order 20 rule 2 of the Federal Court Rules.

Whether the application is capable of being maintained or has clearly no hope of success depends entirely on the true effect of s.23 in circumstances which are not in dispute. On 2 February 1989, applications were lodged in the Trade Marks Office on behalf of the respondent, bearing the numbers mentioned in the prayers for relief, for registration of two marks involving the word "SOGO". Notices of opposition were lodged by the applicant, with the result that neither application has proceeded to registration. However, if an appeal filed in this court is dismissed, and subject to any further appeal, registration will ensue and, in that event, will have effect, by reason of s.53(2) of the Act, from 2 February 1989. It is in this situation that the application with which I am concerned was filed, together with a statement of claim alleging,…

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: [1996] FCA 651
Decision Date: 19 JULY 1996

CaseChat Overview and Summary

Vamuta Pty Ltd sought to remove two trade marks from the register based on the non-use of the marks by Sogo Co Ltd. The application was made under section 23 of the Trade Marks Act 1955, and was filed before the marks were registered but after applications for registration were made. The court had to determine whether the application could be maintained under section 23 before the registration was completed and whether a cause of action existed at the time of the application. The applicant argued that once the registration was completed, it would be effective from the date of the application, and that there had been no use in good faith of the marks during the three years prior to the application. The respondent argued that the applicant could not initiate proceedings before the registration was completed and that at the time of the application, no cause of action existed.

The court found that section 23 of the Act could only be invoked after a mark had been registered, and that proceedings could not be commenced before registration was completed. The court held that the applicant's cause of action did not exist at the time of the application as the respondent was not the registered proprietor of either mark at that time. The court found that the applicant's interpretation of section 23, read with section 53, was flawed and that the sections should not be construed as permitting an action for the removal of a mark from the register to be commenced at a time when the mark was not a registered mark. The court dismissed the application with costs.

The court held that the applicant's application was dismissed with costs. The court found that the applicant's interpretation of section 23, read with section 53, was flawed and that the sections should not be construed as permitting an action for the removal of a mark from the register to be commenced at a time when the mark was not a registered mark. The court held that the applicant's cause of action did not exist at the time of the application as the respondent was not the registered proprietor of either mark at that time.

Orders