Société BIC SA v MC Distributor Pty Ltd

Federal Court of Australia|2006-09-08|Before: Young J

REASONS FOR JUDGMENT 1 I have before me an application for leave to file and serve a second revised cross-claim ('proposed cross-claim') by the first respondent against the applicants. In my opinion, the application for leave must be refused. The Court will normally entertain an application for amendment of a pleading if the amendment is in proper terms. However the Court will not entertain such an application if the amendment is obviously futile or untenable or would cause substantial injustice which cannot be otherwise compensated, such as by an order for costs. 2 The proposed cross-claim is not in proper form and is confusingly drafted. It seeks to raise claims which are, in a number of respects, untenable or doomed to fail. For instance, it contains a claim under s 88 of the Trade Marks Act 1995 (Cth) for cancellation of the registration of a trade mark; however, the claim does not reflect the statutory conditions for an application under s 88 nor does it make clear what precise statutory grounds are relied upon to support the s 88 claim. The proposed cross-claim also alleges what are said to be various jurisdictional errors by the Registrar. In my opinion, those allegations are not clearly tied to any statutory provisions concerning the power or jurisdiction of the Registrar to accept the trade mark application. Many of these matters go to questions of mere process by the Registrar that would not, in my view, amount to any kind of jurisdictional error. 3 I do not propose to examine the proposed cross-claim in any greater detail in these reasons for decision, save that I will make some comments about the parts of the proposed cross-claim that rely on the Administrative Decisions (Judicial Review) Act 1977 (Cth) ('ADJR Act') and the Trade Marks Act.

Claims under the trade marks act 8 For the sake of completeness, I will add some observations concerning the basic grievances raised by the respondent. As I followed counsel's argument and as I interpret the form of the proposed cross-claim, there are two substantive grievances that may provide a foundation for relief under the Trade Marks Act. 9 The first relates to an amendment to the trade mark application made prior to its acceptance by the Registrar which is alleged to have been made contrary to s 65 of Trade Mark Act. Mr Archibald, counsel for the respondents, put that complaint in two ways: first, he said that the endorsement had, by confining the mark to the shape of the barrel, substantially affected the identity of the trade mark. The basis for this allegation was that before the endorsement was made, the trade mark comprised the shape of the entire lighter, including the lighting mechanism. That mark was said to be a substantially different mark than a mark consisting of the barrel only. 10 The other argument, which I find less persuasive, is that the amendment that described the three dimensional shape of the barrel of a lighter as being a 'right cylinder of elliptical cross section' fell foul of s 65 because there could be any number of right cylinders of elliptical cross section. The difficulty with this argument is that it seeks to read the endorsement without regard to the pictorial depiction of the elliptical shape in the representation of the mark. The two must be read together: see Woolworths Limited v BP plc [2006] FCAFC 132 at [31]-[47]. 11 In my view, there is the possibility of such arguments being raised under s 65 to found an opposition to registration under s 68, having regard to the provisions of s 62(a). 12 The second substantive grievance raised concerned the Registrar's decision to accept registration of the mark under the provisions of s 41(6). 13 Section 41(6)(a) provides that before a shape mark can be registered, the Registrar must be satisfied, by evidence, that because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it distinguishes the designated goods and services as being those of the applicant. If the evidence establishes those matters, the trade mark is taken to be capable of distinguishing the designated goods or services for the purposes of s 41(2). 14 The proposed cross-claim complains that the Registrar relied on an informal survey in determining that the trade mark the subject of the application was distinctive under s 41(6). This complaint is, in my view, essentially a complaint that there was no evidence before the Registrar that satisfied s 41(6). If the claim were framed in this way, there would at least be a tenable ground for cancellation under the provisions of s 57 and s 88. However, the claim has not been put in terms of s 41(6); indeed Mr Archibald said that the proposed cross-claim, as presently framed, does not rely upon s 41(6). It is hard to see what other relevance the informal survey has to the claim for cancellation. 15 In making those observations, I am not expressing any view as to whether a properly framed claim might be brought under s 88. I make these observations simply to illustrate the fact that, if such a claim is to be made, it ought to be put in a way that conforms to the provisions of the Trade Marks Act. The present claim does not do that. In my view, the proposed cross-claim does not disclose tenable causes of action and is certainly not expressed in a proper form.

Conclusion 16 For the foregoing reasons, I refuse the application for leave to file and serve the revised second cross-claim.

17 The applicant has sought an order for the costs of this application. I will order costs in the terms sought by the applicant, save that I will not order the costs to be taxed and payable forthwith. I certify that the preceding seventeen (17) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Young.

Associate: Dated: 21 September 2006 Counsel for the Applicant: EA Strong AC

Solicitor for the Applicant: Phillips Ormonde & Fitzpatrick Lawyers

Counsel for the Respondent: IG Archibald

Solicitor for the Respondent: Tees Solicitors

Counsel for Registrar of Trade Marks G McGowan SC

Solicitor for the Registrar of Trade Marks Australian Government Solicitor

Date of Hearing: 8 September 2006

Date of Judgment: 8 September 2006

Trade Marks Act 1995(Cth)ss 41(6), 62(a), 65, 68, 88

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