Allworth Constructions Pty Ltd v Dixon Investments Pty Ltd and Dixon Projects Pty Ltd Also Trading as Dixon Homes

This matter concerns an opposition by Dixon Investments Pty Ltd and Dixon Projects Pty Ltd, trading as Dixon Homes ("the opponents"), to the registration of a trade mark application by Allworth Constructions Pty Ltd ("the applicant"). The applicant sought to register a device of a ribbon bow for the goods 'houses'. The opposition was lodged on the basis that the opponents were the prior proprietors of the mark.

The delegate of the Registrar of Trade Marks was required to determine three key issues: whether the opponents had first authorship and use of the mark prior to the applicant's application date; whether the opponents' use of the mark constituted use in terms of section 6 of the Trade Marks Act; and whether the marks in question were substantially the same. The delegate also considered the applicant's claim to proprietorship under section 40 of the Act.

The delegate reasoned that the evidence established the opponents had first authorship and continuous use of the bow device since 1981, predating the applicant's application. The delegate found that the opponents' use of the large, pink ribbon bow affixed to the roofs of houses, which gave the houses the appearance of gift-wrapped presents, constituted use of a trade mark. This was because the bow was distinct from the goods themselves and had no relation to the form or function of the houses, aligning with established principles regarding the registrability of three-dimensional objects as trade marks. Furthermore, the delegate concluded that the bow used by the opponents was substantially the same as the mark the applicant sought to register, and that the goods were identical.

Consequently, the delegate found that the applicant was not the proprietor of the mark at the relevant date, and the opposition was successful. The application for registration was refused, and the opponents were awarded their costs.