Angela Christou v Tonch Pty Ltd

This matter concerned an opposition by Angela Christou (the opponent) to the registration of the trade mark WAGGING TAILS by Tonch Pty Ltd (the applicant) under application number 1018113. The dispute primarily revolved around the ground of opposition under section 58 of the *Trade Marks Act 1995* (Cth), which relates to the applicant not being the owner of the trade mark. The hearing officer, Nick Conway, confined his reasons to this ground, finding that no other grounds of opposition had been established.

The central legal issue before the hearing officer was whether the applicant was the owner of the trade mark WAGGING TAILS, as contemplated by section 58 of the *Trade Marks Act*. This required an assessment of whether the opponent had established prior use of the trade mark in Australia sufficient to demonstrate ownership. A preliminary issue concerning the admissibility of the second Duong declaration was also addressed, with the hearing officer finding it was validly served as evidence in reply.

In determining the section 58 ground, the hearing officer referred to established principles regarding the "use" of a trade mark for the purpose of establishing prior ownership. Drawing on *Moorgate Tobacco Co. Ltd. v Philip Morris Ltd. [No. 2]* and *Malibu Boats West Inc v Catanese*, the hearing officer noted that use must be in relation to goods to indicate a connection in the course of trade. While actual trade is not always required, evidence of an offer to trade or an existing intention to offer goods bearing the mark can suffice. However, the evidence presented by the opponent, primarily contained in the Duong declarations, was found to be largely unhelpful in establishing prior use, with much of it post-dating the applicant's priority date.

Ultimately, the hearing officer concluded that the opponent had not established any ground of opposition. Accordingly, trade mark application number 1018113 was permitted to proceed to registration one month from the date of the decision, subject to any appeal. The opponent was ordered to pay the applicant's costs.