Associated Retailers Ltd v Red/Green A/S

This decision concerns an opposition by Red/Green A/S, a Danish company, to two Australian trade mark applications lodged by Associated Retailers Ltd. The applications, numbered 587674 and 587675, were for the registration of a trade mark for clothing goods in Class 25 and retail services in Class 42, respectively. Although the *Trade Marks Act 1995* had commenced, the opposition was governed by the provisions of the repealed *Trade Marks Act 1955* due to transitional arrangements. The opposition was heard by a delegate of the Registrar of Trade Marks.

The legal issues before the delegate were whether the applicant was the proprietor of the trade mark, whether the applicant intended to use the mark for all the specified goods and services, and whether the use of the mark by the applicant would lead to confusion or deception of the public, thereby offending section 28 of the *Trade Marks Act 1955*. The opponent also sought to invoke the Registrar's discretion to refuse registration.

The delegate reasoned that the opponent had failed to establish an initial onus to demonstrate a reputation in Australia sufficient to found an objection under section 28. Consequently, the applicant had no case to answer on that ground. Regarding proprietorship, the delegate applied the common law principle that proprietorship in a trade mark is acquired by first use in Australia. The evidence showed no actual trade or offer to trade in the goods bearing the mark in Australia by the opponent, nor any intention to do so. The delegate found that the applicant's claim to proprietorship was based on authorship of the mark, intention to use it, and the lodgment of the application for registration, which was sufficient in the absence of any prior right established by the opponent.

Ultimately, the delegate found that the opponent had failed to establish any of the grounds relied upon and saw no reason to exercise discretion to refuse registration. The opposition was dismissed, and the trade marks were directed to be registered, with costs awarded to the applicant.