Dunlop Olympic Limited v Cricket Hosiery, Inc

This decision concerns an opposition by Cricket Hosiery, Inc. to the registration of the trade mark TIC TAC TOE by Dunlop Olympic Limited for men's and women's socks and hosiery. The application was lodged in December 1985, accepted in September 1988, and advertised in October 1988. Cricket Hosiery, Inc. lodged its notice of opposition in April 1989, raising multiple grounds including misleading or confusing use, contravention of law or morality, disentitlement to protection, lack of distinctiveness, likelihood of deception or confusion, and lack of proprietorship or intention to use the mark. The matter was heard by the Delegate of the Registrar of Trade Marks.

The Delegate was required to determine whether the grounds of opposition, as particularised in the notice, were substantiated by the evidence and submissions presented. Specifically, the Delegate considered claims relating to the opponent's alleged rights and reputation, the mark being contrary to law or public interest, its disentitlement to protection, lack of distinctiveness, likelihood of deception or confusion, prejudice to the opponent's business, the applicant's proprietorship, and the applicant's intention to use the mark. The Delegate also considered whether the applicant had a genuine intention to use the mark for all the goods for which registration was sought.

In reaching the decision, the Delegate found that the opponent had failed to provide sufficient evidence to support its claims regarding reputation, use of the mark in Australia, or the likelihood of deception or confusion. The Delegate noted that while the opponent's director and president made brief references to the mark, no supporting documentation or proof of use in Australia was produced. The Delegate also found no evidence to substantiate objections based on contravention of law or public interest. Crucially, regarding proprietorship and intention to use, the Delegate applied established legal principles, including those from cases like *The Shell Co of Australia Ltd v Rohm and Haas Co* and *The Seven Up Co v O.T. Ltd*. These principles establish that proprietorship in Australia is generally acquired by the first use of a mark within the country, and foreign use or registration alone does not confer rights in Australia unless the mark has become identified with the foreign trader's goods in Australia. The Delegate found no evidence of prior use of the mark TIC TAC TOE in Australia by any party other than the applicant, and the applicant had provided a statement of intention to use the mark for all specified goods throughout Australia.

Consequently, the Delegate dismissed the opposition on all grounds, finding that the opponent had not discharged the burden of proof. The Delegate directed that the trade mark proceed to registration and ordered the opponent to pay the applicant's costs.