Affinity Tool Works LLC v Peter Hosking

This matter came before Debrett G. Lyons. The dispute concerned an application to register a trade mark. The applicant, Peter Hosking, sought to register the trade mark, but this was opposed by Affinity Tool Works LLC. The core of the dispute revolved around whether the use of the trade mark by Global Power Brands International Pty Ltd (GPB), a company founded by Mr. Hosking, could be attributed to Mr. Hosking as the applicant, or to Affinity Tool Works LLC, the opponent, as the predecessor in title.

The court was required to determine whether the use of the trade mark by GPB, from approximately 2009 to 2012, constituted use by the applicant, Mr. Hosking, or use on behalf of the opponent, Affinity Tool Works LLC, or its predecessor, HTC Products, Inc. Specifically, the court had to consider if GPB's actions in applying for and using the trade mark were done in a capacity that could be attributed to the opponent, given the informal supply agreements between GPB and HTC/Affinity Tool Works.

The court found that the applicant, Mr. Hosking, misstated the facts regarding the initial application for the trade mark, which was not made by GPB but by Mr. Hosking himself. While Mr. Hosking founded GPB and made the application for registration "for and on behalf of GPB in order to protect an investment," he had ceased to be a director of GPB more than 18 months before the trade mark application was filed. The court considered the opponent's evidence that its predecessor, HTC, had used the substantially identical mark PORT A MATE in Australia from 2003. The opponent argued that GPB's use of the trade mark should be regarded as use on behalf of HTC as the owner. However, the court viewed the arrangement between GPB and HTC as an alliance rather than an agency relationship, and the use identified between 2009 and 2012 was stated to be for and on behalf of HTC/[the Opponent]. The court ultimately found that the evidence did not support the opponent's submissions that GPB's use of the trade mark ought properly be regarded as use on behalf of HTC as the owner of the trade mark.