Adme (Cy) Ltd v Seven Network (Operations) Limited

Adme (Cy) Ltd, the opponent, opposed the registration of a trade mark by Seven Network (Operations) Limited, the applicant, under the Trade Mark Regulations 1995. The opposition was based on several grounds, including sections 44, 58, 60, and 42(b) of the Act. The matter was heard by Bianca Irgang, a Hearing Officer.

The primary legal issue before the Hearing Officer was whether the opponent had established a ground of opposition under section 60 of the Act. This section allows for opposition if another trade mark had acquired a reputation in Australia before the priority date of the mark sought to be registered, and the use of the latter mark would be likely to deceive or cause confusion due to that reputation. The opponent relied on its widespread use of trade marks featuring the word "SEVEN" or the number "7" to establish this reputation.

The Hearing Officer found that the opponent had successfully established the ground of opposition under section 60. This conclusion was based on the opponent demonstrating that its "Seven Marks" had acquired a reputation in Australia amongst a significant number of people before the relevant date. The Hearing Officer noted that reputation is not assumed and must be proven by evidence, such as significant exposure, high sales volume, or substantial advertising expenditure. Having succeeded on the section 60 ground, the Hearing Officer deemed it unnecessary to consider the other grounds of opposition.

Consequently, the Hearing Officer ordered that protection for the International Registration Designating Australia (IRDA) be refused in respect of all the services listed. Costs were awarded against the holder of the IRDA in favour of the opponent, as is usual when a ground of opposition is successfully established.