FEDERAL COURT OF AUSTRALIA Bianco Hiring Service Pty Ltd v Bianco Construction Supplies Pty Ltd [2016] FCA 310 File number: SAD 226 of 2015 Judge: BESANKO J Date of judgment: 31 March 2016 Catchwords: INTELLECTUAL PROPERTY – appeal from decision of a delegate of the Registrar of Trade Marks pursuant to s 56 of Trade Marks Act 1995 (Cth) – where delegate decided applicant was not the owner of the trade marks and ground of opposition under s 58 of the Trade Marks Act established – where parties entered into a Deed of Settlement after the appeal was lodged – where parties asked the Court to make orders allowing the appeal and registering the trade marks – consideration of the basis for making the orders sought by the parties. Legislation: Trade Marks Act 1995 (Cth) ss 33, 44, 56, 58, 60 Trade Marks Regulations 1995 (Cth) reg 4.15A(5) Date of hearing: 21 December 2015 Registry: South Australia Division: General Division National Practice Area: Intellectual Property Sub-area: Trade Marks Category: Catchwords Number of paragraphs: 14 Counsel for the Appellant: Ms N Charlesworth with Mr F Camatta Solicitor for the Appellant: Camatta Lempens Pty Ltd Lawyers Counsel for the Respondent: Mr A Rosser Solicitor for the Respondent: Cosoff Cudmore Knox ORDERS SAD 226 of 2015 BETWEEN: BIANCO HIRING SERVICE PTY LTD ACN 105 211 390 Appellant AND: BIANCO CONSTRUCTION SUPPLIES PTY LTD ACN 152 933 750 Respondent JUDGE: BESANKO J DATE OF ORDER: 31 March 2016 THE COURT ORDERS THAT: 1. The appeal be allowed. 2. The trade mark forming the subject of trade mark application 1474353 be registered in respect of the goods and services specified in the application. 3. The trade mark forming the subject of trade mark application 1474359 be registered in respect of the goods and services specified in the application. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011. REASONS FOR JUDGMENT BESANKO J: 1 This is an appeal under s 56 of the Trade Marks Act 1995 (Cth) ("the Act"). Bianco Hiring Service Pty Ltd ACN 105 211 390 is the appellant and Bianco Construction Supplies Pty Ltd ACN 152 933 750 is the respondent. The appeal is from a decision of the Registrar of Trade Marks ("the Registrar") made on 26 June 2015. The decision was to uphold a ground of opposition to the registration of two trade marks and to refuse to register those trade marks. 2 The appellant filed its trade mark applications on 14 February 2012. The first trade mark was number 1474353 and it related to classes 6, 11, 19, 35, 37 and 39 of the International Classification of Goods and Services. The trade mark is as follows: The Registrar accepted the application for registration of the trade mark and the application was endorsed with a note that the provisions of s 44(4) of the Act and/or reg 4.15A(5) of the Trade Marks Regulations 1995 (Cth) applied. The second trade mark was number 1474359 and it related to the same classes as the first trade mark. The trade mark was as follows: BIANCO HIRE The Registrar accepted the application for registration of the trade mark and the application was endorsed with a note to the same effect as the note in relation to the first trade mark. 3 Mr Guiseppe Albuino is the sole director and secretary of the appellant. Mr Albuino made a statutory declaration on 16 August 2013 in which he set out the history of Bianco Hire, the sale of the Bianco Hire business and the use of the Bianco Hire device by the appellant. That statutory declaration was lodged with the Trade Mark Office and relied on by the appellant in support of the acceptance of the trade mark applications. 4 On 26 September 2013, the trade mark applications were advertised for possible registration in the Australian Official Journal of Trade Marks. 5 On 22 November 2013, the respondent filed Notices of Intention to Oppose the registration of the trade marks and on 20 December 2013 it filed a statement of grounds and particulars. 6 At the hearing before the delegate of the Registrar, the respondent pressed three grounds of opposition based on ss 44, 58 and 60 of the Act respectively. The delegate received a substantial quantity of evidence at the hearing which she identifies in her reasons. She decided that the ground of opposition in s 58 of the Act was made out and that it was not necessary for her to consider the other grounds of opposition. Section 58 is in the following terms: Applicant not the owner of the trade mark The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark. 7 The appellant's notice of appeal challenges the delegate's conclusion that the respondent and not the appellant was the owner of the trade marks. It also claims that the delegate erred in failing to find that its applications satisfied the criteria in s 44(4) of the Act or, in the alternative, the criteria in s 44(3) of the Act. 8 The respondent filed a notice of contention in which it alleges that the delegate's decision should be upheld on the grounds of opposition identified in s 44 and s 60 of the Act respectively. 9 After the appeal had been lodged, the parties commenced negotiations with a view to resolving their dispute. They have now entered into a Deed of Settlement Discharge and Release. Under the Deed, the parties have agreed to ask the Court to make the following orders: 1. The appeal be allowed. 2. The trade mark forming the subject of trade mark application 1474353 be registered in respect of the goods and services specified in the application. 3. The trade mark forming the subject of trade mark application 1474359 be registered in respect of the goods and services specified in the application. 10 Clearly, the parties to an appeal under s 56 of the Act can resolve their dispute by agreeing that the appeal be dismissed or discontinued and the Court will give effect to that agreement without further inquiry. Furthermore, a respondent who was an opponent before the delegate can decide not to press a ground of opposition which was before the delegate, but not determined by the delegate, and the Court can proceed without inquiry into that ground of opposition. This is particularly so where the Registrar has accepted the trade mark for registration under s 33 of the Act and, in this case in relation to s 44 of the Act, specifically endorsed the application with a determination under s 44(4) of the Act. In other words, in this case the agreement of the parties is sufficient to deal with the grounds of opposition under s 44 and s 60 of the Act respectively. The appellant submitted that the position was the same even in the case of a ground of opposition upheld by the delegate in circumstances where the opposition is withdrawn and the trade marks had been accepted for registration by the Registrar. The appellant referred to s 68 of the Act which deals with the Registrar's obligation to register a trade mark which has been accepted for registration. I have not had the benefit of detailed submissions on this point. The parties put an alternative submission that I can be satisfied that there is a proper basis to interfere with the delegate's decision and make the orders ought. As I accept that submission, I refrain from expressing a view on the appellant's first submission. 11 The appellant relies on the fact that the Registrar accepted the trade mark applications under s 33 of the Act (and to an extent there is an overlap between this submission and the appellant's first submission) and facts which the parties have agreed based on Mr Albuino's statutory declaration of 16 August 2013. The agreed facts are as follows. (1) On 8 December 1977, Bianco Hiring Service Pty Ltd (ACN 007 853 312) ("Bianco Hiring 312") was incorporated in the State of South Australia. From that date, the company commenced trading as a general building equipment hire business providing services to the South Australian trade market with construction equipment and builders hardware. The goods offered for hire by the company ranged from concrete mixers, hand power tools, generators and compaction equipment, to pumps, hoists and wheelbarrows. As the business grew, the products offered for hire expanded to include portable buildings, toilets/ablution blocks, and storage containers. (2) Between 15 September 1980 and 28 August 1986, Bianco Hiring 312 traded under the registered business name "Bianco Hire and Hardware". (3) Mr Guiseppe Albuino commenced employment with Bianco Hiring 312 in 1989. (4) On 7 April 2000, the business of Bianco Hiring 312 was registered with the ABN 51 007 853 312. (5) On 23 June 2003, Bianco Hiring 312 changed its name to Bianco Building Supplies Pty Ltd. On the same day, a newly incorporated company, ACN 105 211 390, was registered with the name "Bianco Hiring Service Pty Ltd". That company is the appellant. (6) On 1 July 2003, the appellant agreed to purchase the Bianco Hire business owned and operated by Bianco Building Supplies Pty Ltd. The settlement date was 1 July 2003. At the time of the sale, Mr Albuino was a director of the appellant. (7) On 1 July 2003, the business of Bianco Hire was registered with ABN 88 105 211 390. (8) Since the purchase of the business by the appellant, the business has focused on the supply of portable buildings and temporary site accommodation to South Australian customers in the construction, mining, manufacturing and event management industries. The products provided by Bianco Hire have come to include multi-purpose buildings, offices and lunchrooms, toilet amenities, shipping containers, site security sheds, portable showers and temporary fencing. As at the present day, in addition to providing the aforementioned services, Bianco Hire also offers a crane hire service and manufactures portable buildings to meet the specific needs of customers. (9) The words "Bianco Hire" and the device which incorporates the word "Bianco" with the arch and word "Hire" ("Bianco Hire device") have been continually used to identify the business of Bianco Hire since at least 1 August 1988 to the present time. (10) The Bianco Hire device is an integral part of the goodwill of the Bianco Hire business for which the appellant paid a substantial amount of money. (11) The Bianco Hire device is prominently affixed to each of the individual hire units that are supplied to customers through the Bianco Hire business. (12) The Bianco Hire device has been continuously used in this way since at least 1 August 1988 to the present time. (13) The Bianco Hire device is prominently displayed on the Bianco Hire website. (14) Since at least 2001, the Bianco Hire device appeared publicly on www.bianco.com.au. (15) Business documentation, including quotes, delivery notes, invoices and correspondence relating to goods supplied to customers have contained the Bianco Hire device. (16) Bianco Hire has been advertised and marketed through various mediums, including local press and flyers. In 2009, the Bianco group was a major sponsor of the Port Adelaide Football Club. (17) Bianco Hire has also marketed its business by giving away promotional material to trade customers. (18) The Bianco Hire device forms an integral part of the Bianco Hire business and has been continuously used, first by the formerly named Bianco Hiring 312 from at least 1988, and since July 2003, by the appellant. 12 The key to the delegate's reasoning as I read her reasons is that there was not a BIANCO HIRE common law trade mark (Re Opposition by Bianco Construction Supplies Pty Ltd to registration of trade mark application no(s) 1474353 – BIANCO HIRE in banner device – and 1474359 – BIANCO HIRE – filed in the name of Bianco Hiring Service Pty Limited [2015] ATMO 58 at [43]). If she had concluded that there was a BIANCO HIRE common law trade mark, I do not understand her to say that it was not transferred to the appellant under the 2003 Business Sale Agreement. If she did say that, I would reject that conclusion having regard to the terms of the agreement and the agreed facts set out in paragraph (10) above. 13 I think that there is a proper basis to interfere with the conclusion that there was not a BIANCO HIRE common law trade mark. First, the Bianco Hire device has been continually used to identify the business of Bianco Hire from at least 1 August 1988 to the present time. Secondly, the device or mark was part of the goodwill of the business of Bianco Hire which was transferred to the appellant in 2003. Thirdly, it is implicit in the Registrar's decision under s 33 of the Act that there was a BIANCO HIRE common law trade mark. Finally, it is implicit in the Registrar's endorsement of the applications under s 44(4) of the Act that the Registrar was satisfied that the appellant's marks had been continually used beginning before the priority dates for the registration of the respondent's trade marks. 14 In the circumstances, I think that it is appropriate to make the orders sought by the parties. I certify that the preceding fourteen (14) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Besanko. Associate: Dated: 31 March 2016