Clearlight Investments Pty Ltd v Sandvik Mining and Construction Oy

Clearlight Investments Pty Ltd (the applicant) sought to register the trade mark SANREMO. Sandvik Mining and Construction Oy (the opponent) opposed this application. The hearing officer, Bianca Irgang, was required to determine whether the trade mark SANREMO was capable of distinguishing the applicant's goods and services from those of other persons, as required by section 41 of the relevant Act.

The hearing officer considered evidence regarding the applicant's use of the SANREMO trade mark, which was coined from "Sandvik Remote Monitoring" and used for remote monitoring systems and productivity reporting services for mining, drilling, and construction equipment. The applicant claimed to have used the mark in Australia since 2010. The opponent's evidence highlighted that "San Remo" is the name of a city in Italy.

The hearing officer found that the opponent had met the onus of proof regarding the ground of opposition under section 41. This section requires a trade mark to be capable of distinguishing the applicant's goods or services. The hearing officer concluded that the trade mark SANREMO was not capable of distinguishing the applicant's designated goods and services from those of other persons.

Accordingly, the hearing officer refused to register the trade mark application no. 1575593 and awarded costs against the applicant.