Chris and Dora Di Lorenzo Partnership v Denversian Pty Ltd

The appeal before Baird J in the Federal Court concerned an opposition by Chris and Dora Di Lorenzo Partnership (Di Lorenzo) to the registration of a trade mark by Denversian Pty Ltd (Denversian). Di Lorenzo sought to oppose the registration of Denversian's Mark, which had been accepted for registration under s.44(3) of the *Trade Marks Act 1995* (Cth), subject to a geographical limitation to Queensland. The core of the dispute revolved around whether Di Lorenzo had established grounds for opposition, particularly concerning prior use and the similarity of trade marks.

The legal issues before the court included whether Di Lorenzo satisfied the requirements of s.58A(1) of the Act, which pertains to the availability of a ground of opposition when an opposed trade mark application has been accepted under s.44(4). The court also considered, for completeness, whether Di Lorenzo had established absolute first use under s.58A(2) and whether the trade marks were substantially identical or deceptively similar for the purposes of s.58. The court was required to determine the proper construction and application of s.58A in the context of an appeal from a decision of the Registrar of Trade Marks.

Baird J reasoned that because Denversian's Mark had been accepted for registration under s.44(3), Di Lorenzo did not satisfy the threshold requirement of s.58A(1). Consequently, Di Lorenzo's ground of opposition under s.58A failed. The judge further clarified that a rehearing under s.56 on a ground of opposition under s.58A does not necessitate a re-agitation of the criteria decided under s.44(1) or (2), nor does it require a re-examination of acceptance under s.44(4). The court rejected an interpretation of s.58A that would impose the tests from s.44(1) and (2) as a preliminary requirement, finding such a construction contrary to the plain text and purpose of the section. The court noted that Di Lorenzo had not established any use of their trade marks, which was a prerequisite for certain grounds of opposition.

The appeal was dismissed.