Chaser Publishing Pty Ltd v ITV Studios Limited

This matter concerned an opposition by Chaser Publishing Pty Ltd (the Opponent) to the registration of a trade mark by ITV Studios Limited (the Applicant). The Opponent filed a Statement of Grounds and Particulars raising several grounds of opposition under the *Trade Marks Act 1995* (Cth), including sections 42(b), 43, 44, 58, 58A, 60, and 62A. The Applicant filed a Notice of Intention to Defend. The proceedings were heard by Nicholas Smith, a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether any of the grounds of opposition raised by the Opponent had been established, requiring a decision to either refuse or register the trade mark. While the Opponent initially indicated it would not press the ground under s 62A, it later indicated at the hearing that it did intend to press this ground. However, the Applicant, having relied on the earlier concession, was not prepared to argue this ground, and the delegate determined it was not necessary to consider it in the decision. The delegate focused on the remaining grounds, particularly s 60.

The delegate considered the evidence filed by both parties, including declarations from representatives of the Opponent and the Applicant, and the written submissions. Ultimately, the delegate found that the Opponent had successfully established the ground of opposition pursuant to s 60 of the *Trade Marks Act 1995* (Cth).

Accordingly, the delegate refused to register the trade mark. The refusal was to be recorded one month from the date of the decision, unless an appeal was filed. The Opponent was awarded costs against the Applicant.