Americana International Limited v Suyen Corporation [Sec=Unclassified]

Americana International Limited, the opponent, sought to oppose Suyen Corporation's trade mark application no. 989448. The dispute concerned the registration of the trade mark "BENCH" in class 25, which covers clothing and footwear. The proceedings were heard by Bianca Irgang, a Hearing Officer at the Trade Marks Hearings.

The primary legal issue before the Hearing Officer was whether the opponent had established any grounds for opposing the registration of Suyen Corporation's trade mark. Specifically, the opponent argued under section 58 of the relevant Act. The onus was on the opponent to prove its grounds of opposition on the balance of probabilities.

The Hearing Officer found that the opponent had successfully met the onus of proof regarding the ground of opposition argued under section 58. Evidence demonstrated that Americana International Limited, through its predecessor Westworld Retail, had established its "BENCH" branded clothing line in the mid-1990s, with use extending to women's clothing and headgear in 1998, and footwear and eyewear in 2002. While the opponent's primary expansion plans focused on Germany, the EU, and the USA, evidence from independent third parties indicated that "BENCH" branded clothing had been available for purchase in Australia since 1999 through retailers like High Jinks Clothing Pty Ltd and Next Athleisure Pty Limited. In contrast, Suyen Corporation commenced using its "BENCH" trade mark in Manila in 1987 and had developed a significant reputation in the Philippines and expanded into markets such as Saudi Arabia, Kuwait, UAE, China, and the USA.

Consequently, the Hearing Officer refused to register application no. 989448 as it stood, pursuant to section 55(a) of the Act. However, the applicant was granted one month to request an amendment to the specification in class 25 to "shoes and boots," in which case the application could proceed to registration. The opponent was awarded costs against the applicant.