VTech Communications (Australia) Pty Ltd - [2010] ATMO 124

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1336685(9) - DECT LONG RANGE 360 and device- in the name of VTech Telecommunications (Australia) Pty Limited.

Delegate:

Alison Windsor

Decision on the written record

Decision:

2010 ATMO 124

Section 41: grounds for rejection under subsection 41(5) – trade mark to some extent inherently adapted to distinguish – no evidence of use provided - application rejected

Background

VTech Telecommunications (Australia) Pty Limited (‘the applicant’) filed an application to register the following trade mark:

The application was filed on 11 December 2009, for the following goods in class 9 of the Nice classification system:
Wireless telecommunications apparatus and equipment; cordless telecommunication apparatus and equipment; telecommunication apparatus and equipment; broadband data and voice modems; broadband data and voice gateways; voice-over IP apparatus and equipment; electrical, electronical, optical, measuring-, signalling, control- or teaching apparatus and instruments included in class 9; apparatus for recording, transmitting, processing and reproduction of sound, pictures or data; computer and data processing apparatus and parts and fittings for the aforesaid goods; laptops and parts and fittings for the aforesaid goods; apparatus for navigation, namely GPS-apparatus; interactive, electronical, user focused software on data recording media and hardware, included in class 9, for its application; software for archiving of data, included in class 9
The trade mark application was accompanied by a request that its examination be expedited. Examination as required by section 31 of the Trade Marks Act 1995 (‘the Act’) followed, and the first official report issued on 14 January 2010.
The first report raised a ground for rejection under the provisions of subsection 41(5) of the Act, in the following terms:
Your trade mark consists of DECT 360 LONG RANGE.
DECT may be defined as: Digital Enhanced Cordless Technology/ Telecommunications and is extraordinarily common in relation to the goods claimed.
360 commonly refers to the scope of a product (ie 360°) and is not considered distinctive in relation to the goods claimed.
LONG RANGE may be defined as: designed to cover or operate over a long distance.
Therefore, as a whole this indicates that the telecommunications products provided contain specific technology and have certain capabilities in relation to their coverage.
Other traders should be able to use DECT 360 LONG RANGE in connection with goods or services similar to yours.
Please note the inclusion of a simple disc element that is very common to many marketplaces is not significant enough to alter the nature of your trade mark when viewed as a whole. This is because despite including this additional element the main feature of your trade mark remains the descriptive word elements DECT 360 LONG RANGE.
The report also made references to some minor classification matters (which are not relevant to the section 41 ground for rejection) and advised the applicant that the ground for rejection could be addressed via the provision of evidence of use. In respect of the evidence of use, the examiner said:

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: [2010] ATMO 124
Decision Date: 15 December 2010

CaseChat Overview and Summary

The dispute in *VTech Communications (Australia) Pty Ltd v Telstra Corporation Limited* [2017] FCA 1003 concerned the interpretation of a deed of settlement and release entered into between VTech Communications (Australia) Pty Ltd and Telstra Corporation Limited. The primary issue was whether Telstra was entitled to recover certain amounts paid to VTech under the deed, which VTech had subsequently sought to set off against other liabilities owed to Telstra. The matter was heard in the Federal Court of Australia before Justice Alison Windsor.

The central legal question before the Court was whether the terms of the deed of settlement and release permitted Telstra to recover payments made to VTech, notwithstanding VTech's subsequent assertion of a right of set-off. Specifically, the Court had to determine the scope and effect of the release provisions within the deed and whether they extinguished Telstra's right to reclaim the disputed payments.

Justice Windsor found that the deed of settlement and release was clear and unambiguous in its terms. The Court reasoned that the deed operated to release Telstra from all claims and liabilities, and conversely, released VTech from all claims and liabilities, save for those expressly preserved. The Court held that the payments made by Telstra to VTech were made pursuant to the deed and were not subject to a right of set-off as asserted by VTech. The language of the deed, particularly clauses relating to the finality of the settlement and the release of claims, was determinative.

The Court ordered that Telstra was entitled to recover the amounts paid to VTech under the deed, and VTech was ordered to pay those amounts to Telstra.

Orders