Cusp Creative Pty Ltd v Kusp Limited

Cusp Creative Pty Ltd opposed the registration of three trade mark applications filed by Kusp Limited: application 824916 for "KUSP & K DEVICE", application 824917 for "KUSP (STYLISED)", and application 828875 for "KUSPWARE". These applications covered a range of goods and services including electronic communications hardware and software, printed matter, advertising, financial affairs, telecommunications, content production, and technology licensing. The opposition was heard by a delegate of the Registrar of Trade Marks.

The primary legal issues before the delegate were whether the registration of the applicant's trade marks should be refused on the grounds that their use would be contrary to law, specifically under section 42(b) of the *Trade Marks Act 1995* (Cth) due to potential contravention of section 52 of the *Trade Practices Act 1974* (Cth) and the common law tort of passing off, and whether the marks should be refused under section 60 of the *Trade Marks Act 1995* (Cth) because they were similar to a trade mark that had acquired a reputation in Australia. The delegate also had to consider a preliminary issue regarding the opponent's request for an adjournment to amend its notice of opposition to include additional grounds.

The delegate refused the opponent's request for an adjournment and amendment of the notice of opposition, finding it was not fair and reasonable in the circumstances, particularly given the late stage of the request and the potential prejudice to the applicant. The delegate then considered the grounds of opposition. Regarding section 42(b), the delegate found that the opponent had not established a sufficient reputation in its trade mark or trade name to conclude that the applicant's use of its marks would constitute misleading or deceptive conduct under section 52 of the *Trade Practices Act* or passing off at common law. The evidence presented by the opponent was considered to be largely indicative of business establishment rather than actual use or market penetration. Similarly, for the ground under section 60, the delegate determined that the opponent had failed to establish the necessary acquisition of a reputation in Australia by its trade mark prior to the applicant's priority date.

Consequently, the delegate allowed the registration of the trade mark applications and awarded costs against the opponent.