Buying Systems (Australia) Pty Ltd v Studio Srl [1995] FCA 77

Buying Systems (Australia) Pty Ltd v Studio Srl [1995] FCA 77

Before the respondent's application on 8 December 1983, the applicant had taken sufficient trade-connected steps using the STUDIO mark, including approaching and soliciting potential advertisers, using business cards and letterhead, and communicating a launch and subscription proposal for the magazine. Those activities were undertaken with an existing intention to offer or supply the magazine in trade and constituted relevant use in Australia indicating a connection in the course of trade between the applicant and the new magazine. Accordingly, the respondent could not accurately claim to be proprietor of the mark, and the opposition under s. 40 was made out.

Jurisdiction
Australia
Judgment Date
14 February 1995
Procedural Posture
Appeal Pursuant to S. 51 of the Trade Marks Act 1955 From a Decision of a Delegate of the Registrar of Trade Marks Dismissing Opposition to Trade Mark Application No. B400951. / Reasons for Judgment Ex Tempore; Appeal Determined.
Outcome
Appeal allowed; delegate's decision reversed and registration refused.
Legal Topics
['proprietorship of Trade Mark' 'prior Use' 'opposition to Registration' 'connection in the Course of Trade']
['trade Marks'] ['proprietorship of Trade Mark' 'prior Use' 'opposition to Registration' 'connection in the Course of Trade']

Case Brief

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Procedural Posture

Appeal Pursuant to S. 51 of the Trade Marks Act 1955 From a Decision of a Delegate of the Registrar of Trade Marks Dismissing Opposition to Trade Mark Application No. B400951. / Reasons for Judgment Ex Tempore; Appeal Determined.

Legal Issues

  1. 1 ['Whether the respondent could claim to be proprietor of the trade mark STUDIO for fashion and hairdressing magazines under s. 40 of the Trade Marks Act 1955.' "Whether the applicant's activities before 8 December 1983 constituted relevant use in Australia indicating a connection in the course of trade between it and the new magazine."]

Ratio Decidendi

Before the respondent's application on 8 December 1983, the applicant had taken sufficient trade-connected steps using the STUDIO mark, including approaching and soliciting potential advertisers, using business cards and letterhead, and communicating a launch and subscription proposal for the magazine. Those activities were undertaken with an existing intention to offer or supply the magazine in trade and constituted relevant use in Australia indicating a connection in the course of trade between the applicant and the new magazine. Accordingly, the respondent could not accurately claim to be proprietor of the mark, and the opposition under s. 40 was made out.

Court Disposition

Appeal allowed; delegate's decision reversed and registration refused.

Orders

  • ['The decision of the delegate of the Registrar of Trade Marks dated 13 October 1992 be reversed.' 'Registration of trade mark application No. B400951 be refused.' 'The respondent pay the costs of the applicant in this Court.']