Mantra IP Pty Ltd v Spagnuolo [2012] FCA 769

FEDERAL COURT OF AUSTRALIA

Mantra IP Pty Ltd v Spagnuolo [2012] FCA 769 Citation: Mantra IP Pty Ltd v Spagnuolo [2012] FCA 769

Appeal from: Danilo Spagnuolo v Mantra IP Pty Ltd [2010] ATMO 110

Parties: MANTRA IP PTY LTD ACN 129 980 981 v DANILO SPAGNUOLO AND REGISTRAR OF TRADE MARKS

File number: QUD 505 of 2010

Judge: REEVES J

Date of judgment: 19 July 2012

Catchwords: TRADE MARKS – appeal from a decision of a delegate of the Registrar of Trade Marks under s 56 Trade Marks Act 1995 (Cth) – consideration of whether a word mark is capable of distinguishing designated services from the services of others – consideration of whether a word mark is inherently adapted to distinguish designated services – effect of use of the word mark by appellant and predecessors in title TRADE MARKS – consideration of whether a word mark connotes an iconic building or geographical location such that its use in respect of the designated services would be likely to deceive or cause confusion TRADE MARKS – trade mark not to be registered if use of trade mark would be contrary to law – consideration of whether the use of a word mark would be contrary to s 18 Australian Consumer Law in that it would be likely to mislead or deceive TRADE MARKS – consideration of whether appellant is the owner of a word mark under s 58 Trade Marks Act 1995 (Cth) TRADE MARKS – onus of proof in the determinations required under s 41 Trade Marks Act 1995 (Cth) – effect of the presumption of registrability in s 33 Trade Marks Act 1995 (Cth) – reconciliation of presumption of registrability and steps under s 41 in an appeal under s 56 Trade Marks Act 1995 (Cth)