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

CATCHWORDS TRADE MARK - claim to be a proprietor of trade mark - prior use by opponent - connection in the course of trade between opponent and mark. Trade Marks Act 1955, s. 40. Moorgate Tobacco Co. Limited v Philip Morris Limited [No 2] (1984) 156 CLR 414 Carnival Cruise Lines Inc. v Sitmar Cruises Ltd (1994) 120 ALR 495 BUYING SYSTEMS (AUSTRALIA) PTY LIMITED v STUDIO Srl No. NG813 of 1992 BEFORE: GUMMOW J. PLACE: SYDNEY. DATE: 14 FEBRUARY 1995.

IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY No. NG813 of 1992 GENERAL DIVISION BETWEEN: BUYING SYSTEMS (AUSTRALIA) PTY LIMITED Applicant AND: STUDIO Srl Respondent BEFORE: GUMMOW J. PLACE: SYDNEY. DATE: 14 FEBRUARY 1995. MINUTE OF ORDERS THE COURT ORDERS THAT: (1) The decision of the delegate of the Registrar of Trade Marks dated 13 October 1992 be reversed. (2) Registration of trade mark application No. B400951 be refused. (3) The respondent pay the costs of the applicant in this Court. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY No. NG813 of 1992 GENERAL DIVISION BETWEEN: BUYING SYSTEMS (AUSTRALIA) PTY LIMITED Applicant AND: STUDIO Srl Respondent BEFORE: GUMMOW J. PLACE: SYDNEY. DATE: 14 FEBRUARY 1995. REASONS FOR JUDGMENT (EX TEMPORE) HIS HONOUR: This is an appeal pursuant to s. 51 of the Trade Marks Act 1955 ("the Act") from a decision dated 13 October 1992 of a delegate of the Registrar of Trade Marks. The effect of the decision was to dismiss an opposition by the present appellant to a trade mark application No. B400951. The application had been made on 8 December 1983 for goods specified as "fashion and hairdressing magazines". The trade mark comprised the word "STUDIO". The applicant was an Italian corporation, Studio Srl and the opponent, an Australian corporation, Buying Systems (Australia) Pty Limited.