Beiersdorf AG v KOSE Corporation

In this matter before the Delegate of the Registrar of Trade Marks, Beiersdorf AG (the Opponent) sought to oppose the registration of a trade mark by KOSE Corporation (the Applicant). The dispute arose following the advertisement of the Applicant's trade mark application for acceptance, leading the Opponent to file a Statement of Grounds and Particulars alleging non-compliance with sections 42(b), 44, and 60 of the *Trade Marks Act 1995* (Cth). The Applicant subsequently filed a Notice of Intention to Defend.

The legal issues before the Delegate were whether the Opponent had established any of the grounds of opposition relied upon, specifically: (1) that the use of the trade mark would be contrary to law (section 42(b)); (2) that the trade mark was not capable of distinguishing the Applicant's goods or services (section 44); and (3) that the trade mark was identical or deceptively similar to a trade mark that the Opponent had used in Australia (section 60). The Delegate also considered the Opponent's claim of confidentiality over its evidence, adopting the approach that such claims must be specific and that the onus rests on the Opponent to establish its grounds.

The Delegate found that the Opponent had failed to establish any of the grounds of opposition. In particular, regarding section 42(b), the Delegate was not satisfied that the use of the trade mark by the Applicant would be contrary to law. The Delegate noted that the Opponent had not provided sufficient specificity regarding its confidentiality claims over its evidence, but ultimately concluded that the evidence as a whole did not support the opposition.

Consequently, the Delegate ordered that trade mark application number 2084290 may proceed to registration, subject to any appeal. The Delegate also awarded costs against the Opponent in favour of the Applicant, applying the general rule that costs follow the event.