Emilio Pucci SRL v the Shoe Corporation Pty Ltd

This matter concerned an opposition by Emilio Pucci SRL ("the opponent") to a trade mark application filed by The Shoe Corporation Pty Ltd ("the applicant") for the mark shown, for "ladies imported footwear". The application had been accepted under subsections 44(3)(a) and 44(4) of the *Trade Marks Act 1995* (Cth), which permit acceptance despite a deceptively similar registered trade mark if there has been honest concurrent use or the applied-for mark was used before the priority date of the conflicting registration. The opponent was the registered owner of a trade mark that had led to the application of these provisions.

The court was required to determine whether the applicant's evidence, which it sought to rely upon to support its application for acceptance under the honest concurrent use provisions, should be admitted. Specifically, the court had to consider whether the applicant had properly served this evidence on the opponent, given that the applicant had not participated in a prior opposition hearing by another party, Swoss Pty Ltd, where similar issues arose.

The court reasoned that where section 44 of the Act is invoked, evidence of trade mark use is crucial. The applicant had failed to serve a copy of its evidence, including a declaration by John Perpignani and supporting letters, on the opponent, despite being aware of this obligation from the prior proceedings. Consequently, the court ruled that the applicant was not entitled to rely on this material and ordered that the declaration and supporting letters be excluded from the applicant's evidence.