Suyen Corporation v Americana International Limited

Federal Court of Australia|2009-10-29|Before: Streeton J

Introduction 1 On 30 March 2011, I made orders, by consent, allowing the appeal of the applicant, Suyen Corporation ("Suyen"). Suyen, by notice of appeal dated 18 November 2009, appeals from the decision of a delegate of the Registrar of Trade Marks made on 29 October 2009. Delegate Irgang upheld in part the opposition of the respondent, Americana International Limited ("Americana"), under section 52 of the Trade Marks Act 1995 (Cth) ("the Act") to Suyen's application number 989448 for the registration of the trade marks BENCH; bench; bench/ ("the BENCH mark") in relation to clothing, including underwear and outwear, headwear and footwear in class 25, unless the registration was restricted to "shoes and boots" in class 25 only. 2 I ordered by consent that: 1. The appeal from the decision of the Delegate of the Registrar of Trade Marks given on 29 October 2009 be allowed. 2. The decision be set aside. 3. The trade mark application number 989448 proceed to registration. 3 My reasons are as follows.

Background 4 In an earlier proceeding, Suyen, by a notice of appeal dated 21 February 2008, appealed from the decision made on 31 January 2008 by Delegate Lyons, upholding Americana's opposition based on s 59 of the Act and refusing Suyen's application number 968981 for registration of the following trade mark: in relation to clothing, including boots, shoes and slippers, in class 25. 5 I allowed Suyen's appeal from Delegate Lyon's decision, set aside the decision and ordered that Suyen's application no 968981 proceed to registration: Suyen Corporation v Americana International Ltd (2010) 187 FCR 169. 6 The consent orders proposed by the parties in the current appeal were supported by the letter of Michael Arblaster, Deputy Registrar, Trade Mark and Design, dated 21 February 2011, which referred to the consent orders and stated that "[t]he Registrar has no objection to the draft orders in the format proposed".

Discussion 7 There is authority for making the proposed consent orders in the present circumstances. 8 Cadbury Schweppes Pty Limited v Effem Foods Pty Ltd (2006) 69 IPR 584 ("Cadbury") concerned an appeal against a delegate of the Commissioner of Patents who had allowed the respondent's opposition to the grant of a patent on the ground of obviousness. The applicant appealed to this court. Prior the hearing, the respondent withdrew its appearance. The Commissioner of Patents (the second respondent) appeared at the hearing but did not wish to be heard. Lindgren J noted (at [16]) that "where … the opponent has withdrawn and the commissioner has indicated on the hearing of the appeal that she does not wish to take any active part in the proceeding, and there is no evidence before the court capable of supporting any actual or potential ground of opposition, there is no basis on which the court can uphold the opposition". His Honour then continued (at [17]): It is important to note that in the light of the history of the application, and, in particular, the commissioner's acceptance of the application and the complete specification, s 61 of the [Patents Act 1990 (Cth)] would have obliged the commissioner to grant the patent if there had been no opposition to the grant. In substance, that is now the position on the appeal. 9 In SociÉtÉ des Produits NestlÉ S.A. v Aldi Stores (a limited partnership) [2010] FCA 218 ("NestlÉ v Aldi"), Nicholas J made orders by consent allowing an appeal from a decision of a delegate of the Registrar of Trade Marks and allowing the trade mark application the subject of the appeal to proceed to registration. Nicholas J noted that he had been provided with a letter from the Deputy Registrar of Trade Marks "which indicates that the Registrar has no objection to the decision of his delegate being set aside so that the application may proceed to registration" (at [4]). His Honour referred to Cadbury and observed (at [6]) that: The statutory scheme under the Act is relevantly to the same general effect. Section 68(1) of the Act provides: (1) The Registrar must, within the period provided under the regulations, register a trade mark that has been accepted for registration: (a) if there has been no opposition to the registration; or (b) in a case where there has been an opposition: (i) if the Registrar's decision, or (in the case of an appeal against the Registrar's decision) the decision on appeal, is that the trade mark should be registered; or (ii) if the opposition has been withdrawn; or (iii) if the opposition has been dismissed under section 222. Otherwise, the application for the registration of the trade mark lapses. 10 His Honour observed that the trade mark in question had been accepted for registration and would have been registered were it not for the opposition of the respondent (at [7]). His Honour also regarded the Registrar of Trade Marks' disposition "as a matter of some importance in the present circumstances" (at [8]). 11 Nicholas J concluded by observing (at [9]) that: It is in no sense self-evident that the mark the subject of the appeal should not be registered. Nor is there any evidence before the Court which would lead me to the conclusion that it should not be registered. 12 See also Mars Australia Pty Ltd v SociÉtÉ des Produits NestlÉ SA (2010) 86 IPR 58. 13 In the present case, as in NestlÉ v Aldi, the BENCH mark would have been accepted for registration save for the respondent's opposition, there was no evidence to indicate that the mark should not be registered and the Registrar of Trade Marks did not oppose the consent orders. 14 I was therefore satisfied that the orders should be made. I certify that the preceding fourteen (14) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Dodds-Streeton.

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