Actron Industries Inc v United Brands Products Design, Development and Marketing, Inc

This matter concerned an opposition filed by Actron Industries Inc. (the Opponent) against the extension of protection to Australia of an International Registration held by United Brands Products Design, Development and Marketing, Inc. (the Holder). The Opponent sought to oppose the extension of protection on grounds including ss 42(b), 44 (or its equivalent under regulation 4.15A), 58, 58A, 60, and 62A of the *Trade Marks Act 1995* (Cth). The Opponent relied on its registered trade mark, "whip-it" featuring a lime green asterisk, as the basis for its opposition.

The primary legal issue before the delegate of the Registrar of Trade Marks was whether any of the grounds of opposition raised by the Opponent had been established to the extent that protection should be refused for the Holder's International Registration. The delegate was required to decide whether to refuse protection entirely or to extend it, potentially with conditions or limitations, based on the evidence and submissions presented.

The delegate found that the Opponent had not established any of the grounds on which the opposition was based. In reaching this decision, the delegate considered the evidence and written submissions from both parties. The delegate concluded that the requirements of regulation 17A.34N had been met, and it was appropriate to extend protection to the International Registration.

Consequently, the delegate ordered that protection for the International Registration could proceed one month from the date of the decision, unless an appeal was filed, in which case protection would be stayed pending the outcome of the appeal. The delegate also awarded costs against the Opponent in favour of the Holder, applying the general rule that costs follow the event.