Empire Design and Construction Pty Ltd v Robert Malter

Empire Design and Construction Pty Ltd (the opponent) opposed the trade mark application of Robert Malter (the applicant) for registration. The dispute concerned whether the applicant's proposed trade mark was substantially identical or deceptively similar to the opponent's registered trade mark, as contemplated by section 44 of the relevant Act. The matter was heard by Bianca Irgang, a Hearing Officer.

The primary legal issue before the Hearing Officer was to determine whether the opponent had established its opposition under section 44 of the Act. This required the opponent to demonstrate that its registered trade mark, "Empire Design & Construction," was either substantially identical or deceptively similar to the applicant's trade mark, and that both related to similar services or goods of the same description, with the opponent's trade mark having an earlier priority date.

The Hearing Officer found that the opponent had not met the onus of proof required to establish its opposition on any of the grounds argued. Consequently, the applicant's trade mark application was permitted to proceed to registration, subject to a stay of one month from the date of the decision to allow for any potential appeal. The Hearing Officer also awarded costs against the opponent in favour of the applicant, following the usual principle that costs follow the event.