Austech Ltd v Silver Colloid Pty Ltd

This matter concerned an opposition by Silver Colloid Pty Ltd to the registration of a trade mark by Austech Ltd. The dispute arose from Austech Ltd's application to register a trade mark, which Silver Colloid Pty Ltd opposed on several grounds. The hearing officer, Ian Thompson, considered the evidence presented by both parties.

The primary legal issues before the hearing officer were whether Silver Colloid Pty Ltd had established grounds for opposition under sections 42 and 60 of the relevant Act, which require demonstration of trade mark reputation, and whether Austech Ltd was the owner of the trade mark under section 58 of the Act. The hearing officer noted that the evidence provided by Silver Colloid Pty Ltd was insufficient to establish the necessary reputation for grounds under sections 42 or 60.

In his reasoning, the hearing officer found that while Silver Colloid Pty Ltd had used the trade marks DENTAPURE and DENTAPURE 5000 in relation to water purification apparatus since 1998, the evidence of sales and advertising was not sufficient to establish a reputation in the market by the priority date of Austech Ltd's application. However, Silver Colloid Pty Ltd did establish that it had used trade marks substantially identical to Austech Ltd's proposed mark prior to the priority date. Applying the principle that ownership of a trade mark is established by use, and that prior use of a substantially identical mark can displace an applicant's claim to ownership, the hearing officer concluded that Austech Ltd was not the owner of the trade mark.

Consequently, the hearing officer refused to register the trade mark under section 55 of the Act, as the opposition grounds under section 58 had been established. The hearing officer also ordered that Austech Ltd pay Silver Colloid Pty Ltd's costs.