Fenestration Solutions Australia Pty Ltd v Combined Group of Companies Pty Ltd

This matter concerned an opposition to the registration of trade marks by Fenestration Solutions Australia Pty Ltd (the Applicant) by Combined Group of Companies Pty Ltd (the Opponent). The dispute arose from the Applicant's application to register three trade marks, which the Opponent contended should not proceed to registration. The decision was made by Cristy Condon, a delegate of the Registrar of Trade Marks, based on written submissions and evidence.

The legal issues before the delegate were whether the Applicant's trade marks should be rejected on the grounds of opposition under sections 42(b), 44, 58, and 60 of the relevant Act. The Opponent bore the onus of establishing at least one of these grounds on the balance of probabilities, with the rights of the parties to be determined as at the filing date of the application, 24 August 2016.

The delegate considered section 44 of the Act, which requires rejection of an application if the applicant's trade mark is substantially identical with or deceptively similar to a registered trade mark for similar goods or services, and the priority date of the applicant's mark is not earlier than the priority date of the registered mark. However, section 44(3) allows for acceptance if there has been honest concurrent use or other proper circumstances, and section 44(4) permits acceptance if the applicant has continuously used the mark prior to the priority date of the other trade mark. The delegate found that the Opponent had not established a ground of opposition under section 42(b).

Consequently, the delegate decided that the trade marks in question could proceed to registration one month from the date of the decision, subject to any appeal. The Applicant, as the successful party, was awarded costs against the Opponent.