Energy Solutions (US) LLC v Earth Science Laboratories, Inc

Energy Solutions (US) LLC, the opponent, opposed the registration of a trade mark by Earth Science Laboratories, Inc. The opposition was based on several grounds, including sections 42(b), 44, and 60 of the *Trade Marks Act 1995* (Cth). The opponent contended that its own trade mark, an International Registration Designating Australia (IRDA) for demulsifying agents and emulsion breakers used in crude oil production, had prior rights and was well-known. The relevant date for assessing the parties' rights was 5 August 2022, the filing date and priority date of the trade mark application.

The primary legal issues before the delegate were whether the opponent had established any of the grounds of opposition relied upon. Specifically, the delegate had to determine if the opponent's trade mark was identical or deceptively similar to the applied-for mark under section 44, or if the applied-for mark was well known or had acquired distinctiveness in Australia under section 60, in relation to the relevant goods. The opponent also pursued a ground under section 42(b), relating to the registration being contrary to law, though this was not elaborated upon in the provided text. The burden of proof rested with the opponent to establish these grounds on the balance of probabilities.

The delegate found that the opponent had not discharged its burden of proof. The evidence presented by the opponent, including a declaration from its marketing manager, primarily focused on the use and registration of its trade mark in the United States. While the opponent claimed use of its mark in Australia since 2015, the evidence of this use, such as a brochure and revenue figures, was considered insufficient and lacking in detail. The delegate noted the absence of evidence of product labelling or widespread advertising and promotion within Australia. Consequently, the delegate concluded that no ground of opposition had been established.

Accordingly, the delegate ordered that the opposed trade mark, number 2291713, may proceed to registration one month from the date of the decision, unless a notice of appeal was filed. The opponent was also ordered to pay the costs of the proceedings.