AXCL Holdings Pty Ltd v Athina Rougalas [2009] ATMO 59

Background

  1. On 15 December 2006 Athina Rougalas (the applicant) filed application number 1152494 in class 4 to register the trade mark shown below:
2009_5900.jpg
  1. The application was examined and found acceptable for possible registration in respect of the following goods:
Automotive lubricants for car engines; duct lubricants; graphited lubricants; industrial lubricants; lubricants; lubricants being gear oils; lubricants containing low friction additives; lubricants for agricultural implements; lubricants for industrial apparatus; lubricants for machines; lubricants for motor vehicles; lubricants for use in industrial processes; lubricants for use in machine cutting; lubricants in the nature of oils; motor vehicle lubricants; oil well drilling lubricants; synthetic lubricants; greases for the lubrication of exposed gears; greases for the lubrication of joints; greases for use with ball-bearings; high pressure greases; lubricating grease; marine greases.
  1. Acceptance of the application was advertised in the Australian Official Journal of Trade Marks on 26 April 2007.
  2. On 23 July 2007, AXCL Holdings Pty Limited (the opponent) lodged a Notice of Opposition to registration under section 52 of the Trade Marks Act 1995 (the Act), listing most grounds of opposition available under the Act.
  3. The parties served and filed evidence. The evidence-in-support comprises:
(a) the statutory declaration of William Baker dated 23 April 2008 ; and (b) the statutory declaration of Ali Murtaza dated 3 June 2008. The evidence-in-answer comprises the statutory declaration of Theodore Rougalas dated 23 October 2008.
  1. A hearing was convened in Sydney on 9 July 2009 before me, Debrett Lyons, a delegate of the Registrar of Trade Marks.
  2. At the hearing, the opponent was represented by Ms. Sue Chrysanthou of counsel, instructed by  Hazan Hollander , Solicitors. The applicant appeared in person and was accompanied by her father, Mr. Theodore Rougalas, and by Mr. Homer Nicholls. Although Mr. Nicholls was the nominated representative of the applicant, both Mr. Rougalas and the applicant were also heard on various matters.
  3. At the hearing, the opponent presented the applicant with outline submissions. The grounds of opposition pressed were those under sections 42(b), 58, 59, 60 and 62A of the Act.
  4. It was clear to me at the hearing that the applicant had so little appreciation of the opponent’s arguments that I wrote to the parties indicating that I regarded it as procedurally fair to allow the applicant further time in which to lodge written submissions with the office. Further time was given. Nothing was received.

Discussion

  1. The heart of this matter is disputed ownership of a trade mark in consequence of what appears to have been a largely unregulated arrangement between a foreign manufacturer of goods and the Australian distributor of those goods.
  2. The foreign manufacturer gave evidence on behalf of the opponent but is not party to the proceedings. The opponent is the currently appointed Australian distributor of the foreign made goods and the applicant is the daughter of a director of the Australian company which was the original Australian distributor of those same goods. The remaining facts of relevance are to be found in the following discussion.
  3. In order for the opponent to succeed, it bears the onus of establishing at least one of its grounds of opposition based on the balance of probabilities.
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