David Imerglik v Wintex Knitting Mills Pty Ltd

This matter concerned oppositions filed by David Imerglik against three trade mark applications by Wintex Knitting Mills Pty Ltd for the mark "BORN TO BE WILD MELBOURNE AND DEVICE" in class 25, covering men's, ladies', and children's clothing. The applications proceeded to acceptance after the applicant amended the specifications of goods. Imerglik filed notices of opposition on various grounds, including that the applicant was not the owner of the trade mark, that the mark was deceptively similar to a mark that had acquired a reputation in Australia, and other grounds under sections 42, 43, 59, 61, and 62 of the *Trade Marks Act 1995*.

The primary legal issues before the delegate of the Registrar of Trade Marks were whether the opponent had discharged the onus of proving the validity of his opposition grounds, and specifically, whether the applicant was not the owner of the trade mark under section 58, or whether the mark was deceptively similar to a trade mark that had acquired a reputation in Australia under section 60. The delegate also considered the remaining grounds of opposition and the exercise of discretion.

The delegate determined that the onus rested with the opponent to establish the validity of the grounds of opposition. Regarding section 58, the opponent claimed prior use of the "Born to be Wild Melbourne" mark but failed to provide evidence of a composite mark or sufficient detail to establish use as a "badge of origin" that was the same as, or substantially identical to, the applied-for marks. The delegate found the word mark "Born to be Wild Melbourne" was not substantially identical to the applicant's composite marks, which included distinct graphic elements. For section 60, while the delegate found the word mark "Born to be Wild Melbourne" to be deceptively similar to the applied-for marks, the opponent failed to provide evidence of reputation in Australia before the priority date of the applications. Consequently, the opponent did not establish the grounds under sections 58 and 60, nor the remaining grounds for which no evidence was provided.

As the opponent failed to establish any grounds for opposition, the delegate dismissed the oppositions. The delegate awarded costs against the opponent on the official scale.