Douglas Fredrind Treharne v Petsmart, Inc

This matter concerns two trade mark applications, numbers 599868 and 599869, lodged by Douglas Fredrind Treharne for the word "petsmart" in Class 5 and Class 42 respectively. Both applications were accepted for registration in March 1994. Petsmart, Inc, a Delaware corporation, opposed these applications, citing grounds under sections 40, 33, and 28 of the *Trade Marks Act 1955* (Cth). As the *Trade Marks Act 1995* (Cth) came into force on 1 January 1996, and these applications were pending and accepted prior to that date, the oppositions were governed by the provisions of the 1955 Act.

The legal issues before the delegate of the Registrar of Trade Marks were whether the grounds of opposition raised by Petsmart, Inc were valid and whether there were any public interest considerations that would prevent the applications from proceeding to registration. Specifically, the delegate considered the grounds of proprietorship under section 40, conflict with a prior registration under section 33, and any other objections under section 28. The delegate also had to determine whether to award costs to Mr. Treharne, given that Petsmart, Inc withdrew its opposition at a late stage.

The delegate found that Petsmart, Inc had withdrawn its opposition and, consequently, its allegations appeared unsupported. Regarding section 33, the delegate noted that Petsmart, Inc cited its own trade mark application lodged after Mr. Treharne's applications, thus failing to establish a prior claim. No objections arose under section 28. The delegate concluded that there was no reason to prevent the trade mark applications from proceeding to registration. Furthermore, in accordance with established principles regarding late withdrawals of opposition, the delegate awarded Mr. Treharne his costs, recognising him as the successful party and acknowledging the inconvenience caused by the prolonged uncertainty.