Abercrombie & Kent Group of Companies, S.A. v Carnival plc

This matter came before Debrett Lyons, acting as a delegate of the Registrar of Trade Marks, concerning an opposition filed by Abercrombie & Kent Group of Companies, S.A. (the Opponent) against an application by Carnival plc (the Applicant) for registration of a trade mark. The dispute arose from both parties claiming rights to the device of an ampersand. The Opponent asserted rights accrued through use, particularly its use of a stylized ampersand device since late 2007 in advertising and promotional material for travel services. The Applicant claimed prior rights through its long-standing use of the trade mark "P&O" in Australia since 1852.

The Opponent raised several grounds for opposition, including that the Applicant's proposed use of the trade mark would be misleading or deceptive under section 60 of the *Trade Marks Act 1995* (Cth) and contrary to trade practices law under section 42(b). It also contended that it was the owner of a trade mark substantially identical to the applied-for mark under section 58, that the Applicant had no intention to use the mark solus at the filing date, thus falling foul of section 59, and that the application was made in bad faith under section 62A due to the parties being direct competitors. The Opponent specifically directed its opposition to class 39 services.

The delegate dismissed the grounds under sections 59 and 62A, finding that the Applicant's lack of use to date did not, on its own, cast negative inferences on its intentions at the application date, nor did the parties' awareness of each other's marketing strategies suffice to establish bad faith. The delegate determined that the most pertinent ground for consideration was section 58, which concerns ownership of the trade mark. Applying the principle that the owner is the first to adopt and use a trade mark in Australia, the delegate found that the Opponent had made the first use of an ampersand device solus. The Applicant's use of "P&O" was deemed not to constitute use of the ampersand device itself for the purposes of section 58, as the addition of the letters "P" and "O" substantially altered its identity.

Consequently, the delegate found that the Opponent had established its ground of opposition under section 58, concluding that the Applicant was not the owner of the trade mark in relation to the class 39 services. The application was therefore refused in respect of class 39. The opposition was dismissed in relation to classes 12 and 41, meaning the application would proceed for those classes.