Factor Holdings Ltd v Apollo Bicycle Co Pty Ltd

This matter concerned an opposition by Factor Holdings Ltd (the Opponent) to the registration of the trade mark FACTOR by Apollo Bicycle Co Pty Ltd (the Applicant). The Opponent contended that the Applicant's proposed trade mark should not be registered on the grounds that it was deceptive and that the Applicant had not established a right to the mark. The hearing officer, Jock McDonagh, was required to determine whether the grounds of opposition had been established.

The court was required to consider whether the grounds of opposition, specifically under section 62A of the relevant Act, had been made out. This involved assessing whether the Applicant had established a right to the trade mark at the time the application for registration was filed. The Opponent presented evidence of its own use and promotion of the "Factor" brand in relation to high-end bicycles, including international registrations and Australian sales prior to the Applicant's filing date. The Applicant, in turn, provided evidence of its own adoption and use of the "Factor" brand for bicycles and related goods since late 2009 or early 2010, with an initial application for the trade mark filed in April 2009.

The hearing officer found that the Opponent had not established the grounds of opposition. The evidence indicated that the Applicant had commenced using the FACTOR brand for bicycles and related goods from at least 2009 or early 2010, and had filed an application for the trade mark in April 2009. While the Opponent had also used the FACTOR brand, the evidence did not demonstrate that the Applicant's use was deceptive or that the Applicant had not established a right to the mark. Consequently, the hearing officer decided to allow the trade mark application to proceed to registration, subject to a stay pending any appeal. Costs were awarded against the Opponent.