Dick Smith Investments Pty Ltd v Roger Ramsey

This matter concerned an opposition by Dick Smith Investments Pty Ltd to the registration of a trade mark by Roger Ramsey. The dispute arose from Mr Ramsey's application to register a trade mark, which Mr Dick Smith Investments Pty Ltd opposed. The decision was made by Terry Williams, a Hearing Officer in the Trade Marks Hearings.

The primary legal issue before the Hearing Officer was whether the grounds of opposition raised by Dick Smith Investments Pty Ltd had been established. Specifically, the Hearing Officer considered whether the registration of Mr Ramsey's trade mark would cause confusion or whether section 44(3)(b) of the relevant legislation was applicable, which would permit registration despite a prior registered mark if no confusion arose.

The Hearing Officer reasoned that Mr Ramsey's product had remained on the market without apparent confusion since May 2001. He noted that if confusion had occurred, Mr Dick Smith Investments Pty Ltd would likely have become aware of it. Furthermore, the Hearing Officer considered that Dick Smith Investments Pty Ltd's apparent failure to use its own trade mark might render it vulnerable to removal. Applying the balance of probabilities, as established in *Clinique Laboratories Inc v Luxury Skin Care Brands Pty Ltd*, the Hearing Officer found that Dick Smith Investments Pty Ltd had not met the onus of proving its grounds of opposition.

Consequently, the Hearing Officer decided that no ground of opposition had been established and that Mr Ramsey's application could proceed to registration under section 44(3)(b) one month from the date of the decision, unless a notice of appeal was served, in which case registration would be stayed pending the appeal. Dick Smith Investments Pty Ltd was ordered to pay Mr Ramsey's costs.