Corporate Express Inc v Winglide Pty Ltd

This matter concerned an application by Winglide Pty Ltd for the registration of a trade mark for various legal secretarial, corporate secretarial, business formation, and related services. Corporate Express Inc opposed this application, citing its own registered trade marks and pending applications for similar services. The dispute ultimately came before a delegate of the Registrar of Trade Marks.

The primary legal issues before the delegate were whether Winglide's proposed trade mark was substantially identical with or deceptively similar to Corporate Express's earlier registered trade marks or applications, and whether the services offered by Winglide were similar to those covered by Corporate Express's marks, thereby potentially infringing section 44 of the *Trade Marks Act 1995*. Additionally, the delegate had to consider whether Corporate Express's trade marks had acquired a reputation in Australia prior to Winglide's application, such that the use of Winglide's mark would be likely to deceive or cause confusion, as per section 60 of the Act. The delegate also had to determine whether the material submitted by Winglide during the examination process, which led to the examiner's acceptance of the application, could be considered as evidence in the opposition proceedings.

The delegate reasoned that the material submitted by Winglide during examination was admissible in the opposition proceedings, as the opponent had access to it and had based its opposition on it, and to exclude it would be contrary to natural justice. Regarding the similarity of services under section 44, the delegate found that Winglide's services, such as legal and corporate secretarial work, were not similar to Corporate Express's retail and wholesale services for business and office products. The delegate noted that while secretarial services use office supplies, this does not make the services themselves similar, drawing a parallel to a taxi company and car manufacturers. Consequently, the opposition under section 44 was dismissed. The delegate also considered the opposition ground of proprietorship, finding that Winglide had demonstrated prior use of its mark for its services, predating Corporate Express's use and registration. Finally, concerning section 60, the delegate found that Corporate Express had not established the necessary reputation in Australia for its trade mark prior to Winglide's application, particularly given that Winglide had been using its mark for some years. The delegate also addressed instances of confusion, attributing them to the opponent's later entry into the market and lack of directory listings, rather than bad faith or a pre-existing reputation of the opponent.

The opposition was dismissed on all grounds. The delegate awarded costs to Winglide Pty Ltd.