Andrew Brooksbank v Wholesale Diving Supplies Pty Ltd

This matter concerned an opposition by Andrew Brooksbank to the registration of the trade mark application number 2036994, for the mark "SALTSKIN", by Wholesale Diving Supplies Pty Ltd. The opposition was heard by Nicholas Smith, a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the ground of opposition under section 60 of the *Trade Marks Act 1995* (Cth) had been established. This ground relates to whether the applicant's trade mark is identical or deceptively similar to a trade mark that the opponent has used in Australia, and whether the opponent has acquired a reputation in Australia in relation to their trade mark.

The delegate found that the opponent had failed to establish the ground of opposition. While the opponent provided evidence of sales of rash vests, wetsuits, and sunsuits under the "Saltskin" trade mark between 2014 and 2015, and invoices from an entity named "Saltskin Limited" to a single Australian entity, this evidence was deemed insufficient to demonstrate a reputation in Australia. Crucially, there was no evidence of marketing efforts by the opponent or Saltskin Limited, nor any indication of how the mark was displayed on the products sold to the Australian client. Although the opponent also provided evidence of UK and EU trade mark registrations and website availability, this did not establish the necessary reputation in Australia for the purposes of section 60. The applicant, conversely, provided evidence of using the trade mark for wetsuits since 2019 and promotional expenditure.

Consequently, the delegate ordered that trade mark application number 2036994 may proceed to registration, subject to a one-month waiting period from the date of the decision, unless an appeal is filed. The applicant was awarded costs against the opponent.