Emanuela Elia v Oz Derma Pty Ltd

This matter concerned an opposition by Emanuela Elia (the Opponent) to the trade mark registration application by Oz Derma Pty Ltd (the Applicant). The Applicant sought to register the trade mark OZDERMA for services related to the retail, wholesale, and distribution of various goods. The Opponent contended that the Applicant was not the owner of the trade mark, arguing that the Opponent had used its own trade mark, which was substantially identical to the Applicant's mark, in Australia since at least September 2013, predating the Applicant's priority date of 4 December 2015. The Opponent also claimed that the Applicant had not used its trade mark in Australia before the relevant date, and that the services for which the Applicant sought registration were the same or closely related to those for which the Opponent used its mark.

The court was required to determine whether the Opponent had established a ground for opposing the registration of the Applicant's trade mark. Specifically, the court had to consider the ground that the Applicant was not the owner of the trade mark, as provided for in section 58 of the relevant Act. This involved assessing whether the Opponent had demonstrated prior use of a substantially identical trade mark in relation to goods or services that were "the same kind of thing" as those for which the Applicant sought registration. The court also had to consider the correct legal test for determining whether services were of the same kind, noting that the Opponent's initial assertion of "same, similar or closely related services" was a misstatement of the law.

The court reasoned that to displace a statutory claim to ownership, an opponent must demonstrate first use of a trade mark that is at least substantially identical to the impugned trade mark, in relation to goods or services that are, at a minimum, "the same kind of thing." The court found that the Opponent had not provided sufficient evidence to establish prior use of its trade mark in relation to services that were the same kind of thing as those for which the Applicant sought registration. While the Opponent had provided evidence of its own trade mark use and advertising expenditure, this evidence was characterised as modest and did not corroborate the Applicant's use of the OZDERMA trade mark for the specified services before the relevant date. The court noted that the Applicant used its OZDERM trade mark for medical and cosmetic surgery services, but this did not establish use for the retail, wholesale, and distribution of goods.

Consequently, as the Opponent had not established a ground of opposition, the court decided that the Registrar should register the trade mark. The registration was to proceed one month from the date of the decision, unless a notice of appeal was served, in which case registration would be stayed pending the outcome of the appeal.