Brendan Clayton v Gale Pacific Limited

This decision concerns an opposition by Brendan Clayton to the registration of the trade mark application number 2370690, ECOBANNER BY GALE PACIFIC, filed by Gale Pacific Limited in Class 24 for banners and textiles. The opponent, self-represented, lodged grounds of opposition under sections 42(b) and 60 of the *Trade Marks Act 1995* (Cth). The applicant was represented by Phillips Ormonde Fitzpatrick.

The legal issues before the delegate were whether the proposed trade mark should be refused registration on the grounds that its use would be likely to deceive or cause confusion due to the reputation of another trade mark (section 60), or whether its use would be contrary to law, specifically passing off (section 42(b)). The delegate noted that the onus to prove these grounds rested squarely on the opponent.

The delegate found that the opponent had filed no evidence to support either ground of opposition. For the section 60 ground, the delegate explained that a reputation in another trade mark must be demonstrated by evidence, and the absence of such evidence is generally fatal. The opponent's statement of grounds, which referenced an earlier registered trade mark "EcoBanna" and asserted a reputation, was deemed insufficient without corroborating evidence. Similarly, for the section 42(b) ground, the delegate found that as the opponent had not established the more stringent requirements for passing off, they had not satisfied the Registrar that the use of the proposed trade mark would be contrary to law.

Consequently, both grounds of opposition were dismissed. The opposition failed, and trade mark application number 2370690 was directed to proceed to registration, subject to the usual appeal period. The opponent was ordered to pay the applicant's costs.