Emark Analytics APAC Pty Ltd v Martin Kostic

EMARK ANALYTICS APAC PTY LTD (the Opponent) opposed the registration of the trade mark "EMARK" (the Trade Mark) by Martin Kostič (the Applicant) in classes 9, 35, 38, and 42. The opposition was brought before a delegate of the Registrar of Trade Marks. The Opponent pursued grounds of opposition under sections 42(b), 58, 59, 60, and 62A of the *Trade Marks Act 1995* (Cth). The relevant date for determining the rights of the parties was 4 October 2021, being the filing and priority date of the Trade Mark application.

The delegate was required to determine whether any of the grounds of opposition advanced by the Opponent had been established. Specifically, the delegate considered whether the Applicant was not the owner of the Trade Mark (s 58), whether the Applicant did not intend to use the Trade Mark in Australia (s 59), whether the use of the Trade Mark was likely to deceive or cause confusion due to the reputation of another trade mark (s 60), whether the use of the Trade Mark would be contrary to law, including provisions of the Australian Consumer Law and the tort of passing off (s 42(b)), and whether the application was made in bad faith (s 62A). The onus was on the Opponent to establish at least one of these grounds on the balance of probabilities.

In reaching its decision, the delegate noted that neither party had filed any evidence. The delegate found that the Opponent had failed to establish any of the grounds of opposition. For section 58, the Opponent’s assertion of non-ownership was unsubstantiated by evidence. For section 59, the Opponent failed to make out a prima facie case of lack of intention to use, as mere non-use does not, of itself, imply a lack of intention. Similarly, for section 60, the Opponent failed to provide evidence of a reputation in Australia for its trade mark. The delegate also found that the assertions under section 42(b) regarding contravention of the Australian Consumer Law and passing off were not established, as they relied on the same lack of evidence of reputation. Finally, for section 62A, the Opponent’s allegations of bad faith were unsubstantiated by evidence.

As no grounds of opposition were established, the delegate ordered that the trade mark application number 2214020 proceed to registration.