Brenda Lomas v WM Productions

This matter concerned an opposition proceeding before the Trade Marks Hearings Officer, Terry Williams. The parties involved were Brenda Lomas, the opponent, and WM Productions (WMP), the applicant seeking to remove a trade mark from the register. The core of the dispute revolved around whether Ms Lomas had established sufficient use of her trade mark to justify its continued registration, or alternatively, whether WMP had standing to seek its removal.

The legal issues before the Hearing Officer were twofold: firstly, whether WMP possessed the necessary standing to oppose the registration of Ms Lomas' trade mark; and secondly, if WMP did have standing, whether Ms Lomas had demonstrated a genuine intention to use the trade mark for the goods and services for which it was registered, or had actually used it, to a degree that would prevent its removal from the register.

The Hearing Officer proceeded on the basis that the existence of the trade mark registrations was established, as no objection was raised by Ms Lomas' representative regarding their validity, although WMP's standing was disputed. Ms Lomas provided evidence of her intention to use the trade mark for establishing restaurants and licensing it for Australian products. However, the Hearing Officer found that the evidence did not demonstrate more than planning and discussions had taken place up until the critical date. While plans were drawn and consultants engaged, there was no evidence of a definite offer to trade or actual use of the trade mark in connection with goods or services. The Hearing Officer noted that some delay in use could be attributed to prior opposition proceedings, but this did not sufficiently explain the lack of use since May 2003.

Ultimately, the Hearing Officer concluded that Ms Lomas' application must fail at the threshold due to insufficient evidence of use. Consequently, the Hearing Officer refused to remove the trade mark from the register for any goods or services and directed that WMP pay the costs of Brenda Lomas up to the amounts set in the scale.