B.J White & Wellington Lane Press Pty Ltd & John v Rex Dupain

This matter concerns an opposition to the registration of trade marks, specifically applications for the marks DUPAIN and MAX DUPAIN, filed by B.J. White and Wellington Lane Press Pty Ltd against Rex Dupain. The dispute arose from the use of the name and photographic works of the late renowned photographer Max Dupain, with both parties having inherited rights and materials from his estate. The opposition was heard by a delegate of the Registrar of Trade Marks.

The primary legal issue before the Registrar was whether the use of the sign MAX DUPAIN by either party constituted trade mark usage in the relevant sense, and if so, whether this usage established grounds for opposition to the registration of the trade marks. The Registrar was required to determine if the evidence demonstrated that the sign was used as a trade mark prior to the filing date of the applications, and to consider the extent to which any grounds of opposition had been established.

The Registrar reasoned that while both parties had used the name MAX DUPAIN in relation to exhibitions, books, and other productions featuring the works of Max Dupain, this usage did not, on the evidence presented, amount to trade mark usage in the relevant sense. The Registrar noted that the dispute appeared to be part of a wider disagreement between the parties, and that both appeared to have an equal entitlement to use the name or trade mark in relation to their respective inheritances. The Registrar found that the evidence did not establish to satisfaction that the uses of the sign prior to the filing date were trade mark uses, referencing the principles in *Musidor BV v. Robert William Tansing*. Consequently, the Registrar concluded that opposition to registration was unlikely to succeed on the grounds presented.

The Registrar decided to refuse the opposition and ordered that the trade mark applications proceed to registration one month from the date of the decision, unless served with notices of appeal. The applicant, having been successful, was awarded costs on the official scale.