Woolworths Limited v BP plc (No 3) [2006] FCAFC 160

Woolworths Limited v BP plc (No 3) [2006] FCAFC 160

BP’s motion for remission of the applications in their unamended form is dismissed because it would be inconsistent with the proper administration of justice to allow for a second hearing on the distinctiveness of substantially different trade marks. The principles from Henderson v Henderson, as applied in Australian law, and the need to avoid duplicative litigation, support the dismissal of the motion and cancellation of the registration of the trade marks.

Jurisdiction
Australia
Judgment Date
13 November 2006
Procedural Posture
Appeal / Full Court Judgment on Appeal From a Single Judge, Determining Motion Regarding Trade Mark Amendments and Procedural Orders
Outcome
Motion by BP dismissed; appeal allowed; orders of primary judge set aside; registration of trade marks Nos 559837 and 676547 cancelled; costs awarded to Woolworths; orders stayed pending high court special leave application.
Legal Topics
['trade Marks' 'amendment of Trade Mark Applications' 'distinctiveness of Trade Marks' 'costs' 'litigation Procedure']
['intellectual Property'] ['trade Marks' 'amendment of Trade Mark Applications' 'distinctiveness of Trade Marks' 'costs' 'litigation Procedure']

Case Brief

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Procedural Posture

Appeal / Full Court Judgment on Appeal From a Single Judge, Determining Motion Regarding Trade Mark Amendments and Procedural Orders

Legal Issues

  1. 1 ['Whether amendments to trade mark applications were in conformity with s 65 of the Trade Marks Act 1995 (Cth)' 'Whether the matter should be remitted to the primary judge for further consideration of the unamended applications' 'Whether the orders of the primary judge should be set aside and the registrations of the trade marks cancelled' "Exercise of the Court's discretion to allow a further hearing regarding the trade mark applications"]

Ratio Decidendi

BP’s motion for remission of the applications in their unamended form is dismissed because it would be inconsistent with the proper administration of justice to allow for a second hearing on the distinctiveness of substantially different trade marks. The principles from Henderson v Henderson, as applied in Australian law, and the need to avoid duplicative litigation, support the dismissal of the motion and cancellation of the registration of the trade marks.

Court Disposition

Motion by BP dismissed; appeal allowed; orders of primary judge set aside; registration of trade marks Nos 559837 and 676547 cancelled; costs awarded to Woolworths; orders stayed pending high court special leave application.

Orders

  • ["The respondent's motion by notice dated 12 October 2006 is dismissed." 'The appeal is allowed.' 'The orders made by Finkelstein J on 1 December 2004 are set aside.' 'The registration of trade marks Nos 559837 and 676547 is cancelled.' 'The respondent pay the costs of the opposition proceeding before the Registrar,...