Daniel Wilson & Chelsea Peters, Spruson & Ferguson v Andrew Petale, Y Intellectual Property

This matter concerned an opposition to the registration of a trade mark, brought by Daniel Wilson and Chelsea Peters of Spruson & Ferguson, against Andrew Petale of Y Intellectual Property. The opposition was filed under section 52 of the *Trade Marks Act 1995* (Cth), with grounds considered under sections 43, 44, and 58A of the Act. The proceedings were heard by a delegate of the Registrar of Trade Marks.

The legal issues before the delegate were whether the grounds of opposition under sections 43, 44, and 58A of the Act had been established. The opponent bore the onus of proving at least one of these grounds on the balance of probabilities, with the relevant date for determination being 1 March 2018. The delegate was required to assess whether the applicant's trade mark was substantially identical with or deceptively similar to a registered trade mark, and whether the applicant had established honest concurrent use or continuous use of its mark prior to the priority date of the cited registration, as per sections 44(3) and 44(4) respectively.

The delegate found that the ground of opposition under section 43 was not established, as no inherent connotation was identified in the trade mark. However, the delegate determined that the ground of opposition under section 44 was established in respect of some of the applicant's goods and services, and that section 44(4) applied to some of these goods and services. As none of the other grounds of opposition were established, the applicant was given an opportunity to amend the specification of goods and services. Following amendment, the delegate ordered that the registration of the trade mark proceed for the amended specification.