Afterpay Australia Pty Ltd v Clearpay Pty Ltd

This decision concerns an opposition to a trade mark application brought by Afterpay Australia Pty Ltd (the Opponent) against Clearpay Pty Ltd (the Applicant). The dispute arose from the Applicant's attempt to register a trade mark, which the Opponent argued should not proceed. The matter was heard by Nicholas Smith, a delegate of the Registrar of Trade Marks.

The primary legal issues before the delegate were whether the grounds of opposition nominated by the Opponent under sections 42(b), 58, and 60 of the relevant legislation had been established. Specifically, the Opponent contended that the Applicant was not the owner of the trade mark under section 58, as the Opponent claimed prior use. The onus of proof rested on the Opponent, who was required to establish at least one of the nominated grounds on the balance of probabilities.

In determining the opposition, the delegate considered the limited evidence provided by both parties. The Opponent's evidence, primarily from its legal representative, was given limited regard due to concerns about direct knowledge. However, it established the Opponent's operation of pilates classes under the mark "PILATES HAUS" since July 2020. The Applicant's evidence demonstrated use of its trade mark for pilates classes since 2016, predating the Opponent's establishment. Regarding the section 58 ground, the delegate found that the Opponent failed to establish the third factor – that a person other than the Applicant had an earlier claim to ownership based on use prior to the application or the Applicant's use. This was because the Applicant's use in 2016 was earlier than the Opponent's claimed use in 2020. The delegate also found that the Opponent failed to establish the ground under section 42(b) as use of the trade mark by the Applicant would not be contrary to law.

Consequently, the Opponent failed to establish any of the grounds of opposition. The delegate ordered that the trade mark application could proceed to registration not less than one month from the date of the decision, subject to any notice of appeal. The Applicant was awarded costs against the Opponent.