Winmart Pty Ltd (the “Applicant”) was successful in defending an opposition filed by Jiang & Hou Pty Ltd. & Gervasi Nominees Pty Ltd (the “Opponents”) against its application for the trade mark GERVASI. The opposition was based on a number of grounds, including the main ground that the Applicant was not the owner of the trade mark.
The Opponents first used the surname Gervasi in 1979 when the co-opponent purchased a property in Brunswick, Victoria and the Opponents commenced trading there as a supermarket under the business name GERVASI RITEWAY SUPERMARKET, as a part of the Riteway buying group.
Over the years, the Opponents changed buying groups on several occasions. In addition, the Opponents operated, ceased and re-opened the business at several locations in Victoria. The Gervasi name was consistently used by the Opponents during this time.
In 2003, the Opponents sold the supermarket business to the Applicant. The Opponents argued that it did not assign rights in the Gervasi name solus to the Applicant, and the Opponents did not assign any rights in the Gervasi surname per se to the Applicant.
In considering section 58, it was noted that while the Business Sale Agreement did not explicity contain a provision that dealt with the common law GERVASI trade mark, the Hearing Officer was satisfied that the reputation of the business was directly tied up with the unregistered GERVASI trade mark and that this reputation forms a significant part of the goodwill which was sold to the Applicant. In finding for the Applicant, the Hearing Officer was satisfied that the agreement encompassed the GERVASI trade mark along with the goodwill of the business and that there was sufficient evidence to suggest that the GERVASI trade mark passed to the Applicant when the Opponents sold the supermarket business.
In light of the trade mark being assigned to the Applicant in 2003, the Opponents were unable to establish that the Applicant’s use of the trade mark GERVASI would be likely to deceive or cause confusion or the stricter test posited by the Australian Consumer Law, likely to mislead or deceive. It was also held that the application was not filed in bad faith.
To view the Office decision, click here.