Cheryl Stewart as Trustee for Mis Chicos Trust v Pro Bio Skin Pty Ltd

This matter concerned an opposition by Cheryl Stewart, as Trustee for the Mis Chicos Trust (the Opponent), to the registration of the trade mark application ALKALISE GREEN & GO (the Trade Mark) by Pro Bio Skin Pty Ltd (the Applicant). The Opponent, which specialises in health foods and has been operating since 2000, sought to prevent the registration of the Trade Mark on the basis of its prior use and registration of the mark ALKALISING GREENS (the Opponent’s Mark) for similar goods. The hearing officer was tasked with determining whether the Opponent had established its grounds for opposition.

The primary legal issue before the hearing officer was whether the Opponent had established a ground of opposition under section 44 of the *Trade Marks Act 1995* (Cth), which relates to the registration of trade marks that are identical or deceptively similar to an earlier trade mark. This required an assessment of whether the Trade Mark was deceptively similar to the Opponent’s Mark, and if so, whether there were circumstances of honest concurrent use or other exceptional circumstances that would justify the registration of the Trade Mark despite the earlier rights. The Opponent bore the burden of proving its case on the balance of probabilities, with rights assessed as at the relevant date.

The hearing officer found that the Opponent had established its ground of opposition under section 44. While the Applicant claimed to have adopted the Trade Mark honestly in 2010, the evidence indicated that the earliest documented use of the Trade Mark was from November 2011, with the first proof of sale in October 2013. The hearing officer was not convinced by the Applicant's assertion that numerous similar products were on the market in 2010, suggesting that the popularity of alkaline diets emerged later. Crucially, the hearing officer determined that the Applicant had not undertaken adequate searches or taken reasonable precautions to ascertain the availability of the Trade Mark, particularly given the parties' proximity and competing businesses on the Gold Coast. The Applicant's use of the Trade Mark was found to be minimal and not widespread in Australia prior to the relevant date, with a significant portion of its use occurring overseas. Consequently, the hearing officer was not satisfied that there had been honest concurrent use sufficient to justify the exercise of discretion in favour of registration.

Accordingly, the hearing officer refused to register the trade mark application. The hearing officer also awarded costs against the Applicant in favour of the Opponent.