Bang on the Door Ltd v Playgro Australia

This matter concerned an opposition by Bang on the Door Ltd (Bod) to a trade mark application by Playgro Australia. Bod sought to oppose Playgro's application on the grounds that Bod was the owner of an identical or deceptively similar trade mark with a reputation such that deception or confusion would ensue if Playgro used its mark.

The primary legal issue before the Hearing Officer was whether Bod had established that, as at the priority date of 21 February 2001, it owned a trade mark that was identical or deceptively similar to Playgro's mark, and that this mark possessed a sufficient reputation to cause deception or confusion.

The Hearing Officer found that Bod had failed to establish the necessary reputation for its trade mark. The evidence presented showed only a fleeting, late use of the words "Funky Girl" as a trade mark, which was too late to impact the situation at the priority date. The Hearing Officer also rejected the argument that a significant reputation could be inferred solely from Bod's profile and its ability to license trade marks, deeming this speculative. Furthermore, even if a relevant product was available in October 2000, the four months remaining until the priority date were insufficient to establish the requisite reputation. Consequently, Bod had not established either of the grounds for opposition.

The Hearing Officer directed that the trade mark application could proceed to registration one month from the date of the decision, unless a notice of appeal was served on the Registrar, in which case registration would be stayed until the appeal was decided or discontinued. Bod was also ordered to pay Playgro's costs.