Carl Zeiss AG v Zhang Yimin

This matter concerned an opposition by Carl Zeiss AG to the registration of a trade mark by Zhang Yimin. The opposition was brought before Hearing Officer Frances Aarnio of the Trade Marks Hearings. The dispute centred on whether Zhang Yimin's trade mark application should be refused registration on various grounds, including those provided by regulation 4.15A and sections 44, 59, and 60 of the relevant legislation.

The legal issues before the Hearing Officer included whether the applicant's trade mark was substantially identical with or deceptively similar to a registered or pending trade mark of the opponent, and whether the goods or services were similar or closely related. Specifically, the Hearing Officer had to determine if the opponent had established a ground of opposition under regulation 4.15A, which allows for the citation of an International Registration Designating Australia (IRDA) against another trade mark application. The opponent also pursued grounds under sections 59 and 60, but these were not established.

The Hearing Officer's reasoning focused on the requirements of regulation 4.15A, which necessitates the opponent establishing a registered or pending trade mark with an earlier priority date, which is substantially identical or deceptively similar to the opposed mark, and for the same or similar goods or closely related services. The opponent provided evidence, including statutory declarations detailing trade mark searches and attestations of ownership and use of registered trade marks. The Hearing Officer found that the opponent had successfully established the opposition ground under regulation 4.15A in relation to sunglasses.

Consequently, the Hearing Officer decided to extend protection in respect of the remaining goods listed in the IRDA, which included computer peripheral devices, network communication equipment, megaphones, camcorders, earplug ware, mouse (data processing equipment), cabinets, phones, and headphones, one month from the date of the decision. The Hearing Officer also awarded costs against the applicant in favour of the opponent, as the opponent was the successful party. Directions were also made regarding the potential for an appeal.