Dale Cleves Music Pty Ltd v Allans Musical Instruments Pty Ltd

This matter concerned an opposition by Dale Cleves Music Pty Ltd (the Opponent) to a trade mark application by Allans Musical Instruments Pty Ltd (the Applicant). The Opponent, a retailer of pianos and owner of a registered trade mark for pianos, opposed the Applicant's application to register a mark containing the words "australian piano" for pianos. The opposition was heard by Nicholas Smith, a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the Applicant's trade mark application was made in bad faith, as provided for under section 62A of the *Trade Marks Act 1995* (Cth). The Opponent also nominated other grounds of opposition, but the delegate focused on the bad faith argument in his decision.

The delegate considered the evidence filed by both parties, including declarations from employees and legal representatives. While the Opponent alleged that the Applicant's decision to adopt the mark was an attempt to take advantage of the Opponent's reputation and that there had been incidents of poor conduct between the parties, the delegate was not persuaded. He reasoned that the use of "australian piano" could be descriptive of the goods rather than an attempt to exploit the Opponent's reputation. Furthermore, the delegate found that incidents of poor conduct, while documented, were not an appropriate basis for finding bad faith in the trade mark application and were better suited for litigation in another forum. Consequently, the Opponent failed to establish the ground of opposition under section 62A.

The delegate ordered that the Opponent had failed to establish any of its nominated grounds of opposition. The Applicant's trade mark application was permitted to proceed to registration, subject to a one-month waiting period from the date of the decision, unless a notice of appeal was filed. The Applicant was awarded costs against the Opponent.