Winton Shire Council v Lomas [2002] FCA 696

FEDERAL COURT OF AUSTRALIA

Winton Shire Council v Lomas [2002] FCA 696 TRADE MARKS – whether the services in Class 42 identified in the application, or some of them, constitute "the same kind of thing" as the services advertised under the name "Waltzing Matilda Country Kitchen" – Registrar's direction that application proceed to registration be affirmed, with amendments to the goods and services specified in the application COSTS – offer to settle the appeal on terms by the applicants – whether this offer justifies the grant of indemnity costs – applicants have not received more than their offer to settle hence indemnity costs are not justified – whether Court should exercise the discretion to order that the applicants are not entitled to all of their costs – applicants successful in respect of the real area of contention of the opposition and appeal proceedings WORDS & PHRASES – "the same kind of thing" Trade Marks Act 1995 (Cth), ss 56, 43, 44, 60, 58 Federal Court Rules, O 23 Hughes v Western Australian Cricket Association (Inc) & Ors (1986) 8 ATPR 40-748, applied Cretazzo v Lombardi (1975) 13 SASR 4, cited Mok v Minister for Immigration, Local Government and Ethnic Affairs & Anor (No 2) (1993) 47 FCR 81 WINTON SHIRE COUNCIL and THE WALTZING MATILDA CENTRE LIMITED v BRENDA MAURICEEN LOMAS No Q 92 of 2000 SPENDER J BRISBANE 31 MAY 2002

IN THE FEDERAL COURT OF AUSTRALIA

QUEENSLAND DISTRICT REGISTRY Q 92 OF 2000

BETWEEN: WINTON SHIRE COUNCIL

FIRST APPLICANT

THE WALTZING MATILDA CENTRE LIMITED

SECOND APPLICANT

AND: BRENDA MAURICEEN LOMAS

RESPONDENT

JUDGE: SPENDER J

DATE OF ORDER: 31 MAY 2002

WHERE MADE: BRISBANE

THE COURT ORDERS THAT: 1. The appeal be allowed in part. 2. The Registrar's direction that the Application for Registration of Trade Mark Application Number 749100 proceed to registration be affirmed, but that the specification of goods of Classes 29 and 39 be amended to read: "Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats; and foodstuffs in this class; Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery; biscuits and cakes; ices; honey, treacle; yeast, baking powders; salt, mustard, vinegar, sauces (condiments) spices and ice; and foodstuffs in this class;" and that the specification of services of Class 42 be deleted in their entirety.