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Total entries in this category: Published On: Aug 03, 2007 10:45 AM |
Woolworths v BP (or how green is ...)11 months after hearing the application
for leave to appeal from Finkelstein J's landmark decision, the Full Court has,
by majority, granted leave to appeal ...
The problem was that, after Finkelstein J
upheld BP's appeal from a successful opposition to registration of the colour
green for petrol related goods and services, Woolworths didn't seek a stay of
his Honour's order to register while their appeal was heard.
2 months after Finkelstein J made his orders (and on notice to Woolworths), therefore, the Registrar registered BP's trade marks. BP argued, therefore, that the Court was functus officio and any appeal would be a nullity as there was no power to rectify the register in this situation. Trade Marks Act 1995 s 68 specifies when the Registrar must register a trade mark after acceptance. Relevantly, in a case where there has been an opposition, this is if "(in the case of an appeal against the Registrar's decision) the decision on appeal, is that the trade mark should be registered". Sundberg and Bennett JJ held that the words "an appeal against the Registrar's decision" included any appeal from the court of first instance exercising original jurisdiction. Black CJ dissented. Sundberg and Bennett JJ also considered that, while the Registrar's decision to register was not in error after Finkelstein J's ruling, it would be an error capable of rectification under s 85(b) if the appeal from that decision were upheld. Black CJ did not agree. Sundberg and Bennett JJ further concluded that there were a number of matters (urged by Woolworths) which had not been determined by Finkelstein J. 85 The primary judge found that the trade marks were not inherently adapted to distinguish the designated goods or services. Accordingly, s 41(6) of the Act applied. It was therefore necessary for his Honour to determine the extent to which the trade marks have been used and whether they do distinguish the designated goods or services as those of BP. That necessitated a consideration of the precise definition or construction of each trade mark and the relevance of the endorsement and the representation in that construction. The primary judge determined the application of s 41(6) to the colour green without a determination whether that constituted the full scope of the mark in each case. 86 It is difficult to ascertain from his Honour’s reasons whether his conclusions were in error or were clearly in error, having regard to the grounds of Woolworths’ opposition. Rather, it would seem that those grounds were not canvassed by his Honour. If that is so and if those grounds were advanced by Woolworths and were determinative of registrability, there would be a clear prima facie case of error. 87 In our view, the questions raised in Woolworths’ opposition are relevant to a proper consideration of the registrability of the marks. It is not apparent from the primary judge’s reasons that he considered them. The matters not determined by his Honour on registrability go to the construction of the Act and the Regulations and to the characterisation of applications for colour marks. There has been established a clear prima facie case of error in a failure to consider those questions. In addition, there are important questions of the construction of applications for colour marks and of the Act. In addition, their Honours considered that the Full Court should consider the onus that an opponent should bear: is it simply a balance of probabilities or "a clearly satisfied" standard as adopted in Thorpedoes. (The cases are summarised in Kowa v Organon [2005] FCA 1282 at [118] - [141]. It is understood that the appeal proper will be heard in August. Full Court's decision granting leave [2006] FCAFC 52 here; decision at first instance here. Posted: Friday - April 21, 2006 at 04:11 PM | |