Kyosho Corp v Advanced Hobbies International Pty Ltd [1998] FCA 481

FEDERAL COURT OF AUSTRALIA TRADE MARKS - application to expunge trade mark from the Register - loss of distinctiveness - proprietorship of trade mark - whether entry of trade mark in Register wrongly made - whether applicant is a person aggrieved.

PRACTICE AND PROCEDURE - failure of respondent/cross-applicant to comply with an order of the Court relating to a cross-claim - whether order should be made under Federal Court Rules O 10, r 7. Federal Court Rules, O 10, r 7. Trade Marks Act 1955 (Cth), ss 22, 26, 40, 53, 58, 61. Trade Marks Act 1995 (Cth), ss 20, 250. Australian Securities Commission v MacLeod (1994) 54 FCR 309 (FCA/Drummond J), cited. Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511, cited. Kraft Foods Inc v Gaines Pet Foods Corporation (1996) 65 FCR 104 (FCA/FC), cited. Re Registered Trade Mark "Thunderbird" (1974) 131 CLR 592 (Jacobs J), cited. Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158 (S Ct NSW/McLelland J), cited. KYOSHO CORPORATION V ADVANCED HOBBIES INTERNATIONAL PTY LIMITED NG 6335 of 1994 SACKVILLE J SYDNEY 7 MAY 1998

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY NG 6335 of 1994

BETWEEN: KYOSHO CORPORATION

Applicant

AND: ADVANCED HOBBIES INTERNATIONAL PTY LIMITED

Respondent

JUDGE: SACKVILLE J

DATE OF ORDER: 7 MAY, 1998

WHERE MADE: SYDNEY

THE COURT ORDERS THAT: 1. The following question: "Should registered trade mark no A431624 (the "Trade Mark") be removed from the Register on the grounds that JR Remote Control Australia Pty Limited, the first registered owner of the Trade Mark, was not the proprietor of the Trade Mark within the meaning of s 40 of the Trade Marks Act 1955 (Cth)?" be answered: "Yes". 2. The Trade Mark be expunged from the Register. 3. The balance of the proceedings be stood over until 27 May 1998 at 9.30 am. 4. The applicant have leave to file a notice of motion seeking dismissal of the cross-claim returnable on 27 May 1998, at 9.30 am. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.