Samsonite IP Holdings S.a.r.l v Tosca Travelgoods (Aust) Pty Ltd [2016] FCA 7

FEDERAL COURT OF AUSTRALIA

Samsonite IP Holdings S.a.r.l v Tosca Travelgoods (Aust) Pty Ltd [2016] FCA 7 File number: NSD 622 of 2015

Judge: ROBERTSON J

Date of judgment: 15 January 2016

Catchwords: TRADE MARKS – appeal from decision of Registrar of Trade Marks to refuse registration of trade mark – respondent no longer presses claim that it is owner of mark sought to be registered by applicant by reason of respondent's prior registration of its mark for same goods – consent orders

Date of hearing: Determined on the papers

Date of last submissions: 24 December 2015

Registry: New South Wales

Division: General Division

National Practice Area: Intellectual Property

Sub-area: Trade Marks

Category: Catchwords

Number of paragraphs: 5

Counsel for the Applicant: Mr MR Hall SC

Solicitor for the Applicant: Banki Haddock Fiora

Counsel for the Respondent: Ms S Gatford

Solicitor for the Respondent: M+K Lawyers

ORDERS NSD 622 of 2015 BETWEEN: SAMSONITE IP HOLDINGS S.A.R.L

Applicant

AND: TOSCA TRAVELGOODS (AUST) PTY LTD (ACN 006 433 469)

Respondent

JUDGE: ROBERTSON J DATE OF ORDER: 8 JANUARY 2016

BY CONSENT, THE COURT ORDERS THAT:

1. The decision of the Registrar of Trade Marks by her delegate Iain Campbell Thompson given on 8 May 2015 (Decision 2015 ATMO 39) be set aside. 2. Australian Trade Mark Application number 1442121 for COSMOLITE in class 18 proceed to registration. 3. The proceedings be otherwise dismissed. 4. Each party to pay its own costs. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

ROBERTSON J: 1 In this appeal from a decision of the Registrar of Trade Marks to refuse registration of the applicant's trade mark COSMOLITE, for "luggage" in Class 18, the parties have agreed on certain orders setting aside that decision. 2 The Registrar found that the respondent was the owner of the COSMOLITE mark by reason of its prior registration of COSMO for the same goods (luggage). The respondent no longer presses that claim and is content for the applicant's COSMOLITE mark to proceed to registration. 3 The Registrar has been notified of the proposed disposition of the appeal and does not wish to be heard. 4 The orders on which the parties have agreed are: By consent, order that: 1. The decision of the Registrar of Trade Marks by her delegate Iain Campbell Thompson given on 8 May 2015 (Decision 2015 ATMO 39) be set aside. 2. Australian Trade Mark Application number 1442121 for COSMOLITE in class 18 proceed to registration. 3. The proceedings be otherwise dismissed. 4. Each party to pay its own costs. 5 In the circumstances I have set out, the orders are appropriate and I have made those orders. I certify that the preceding five (5) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Robertson.