Fisi Fibre Sintetiche S.p.A. v NZ Merchants Limited

The decision concerns an application by Fisi Fibre Sintetiche S.p.A. (the Applicant) to register a trade mark, opposed by NZ Merchants Limited (the Opponent). The matter came before Nicholas Smith J in his capacity as the Delegate of the Registrar of Trade Marks.

The primary legal issue before the court was whether to register the Applicant's trade mark, having regard to the grounds of opposition raised by the Opponent. Specifically, the court was required to determine the extent to which the ground of opposition under section 44 of the Act had been established.

The court reasoned that section 55 of the Act mandates the Registrar to decide whether to refuse or register a trade mark based on established grounds of opposition. In this instance, the ground under section 44 was found to be established in respect of certain "Conflicting Goods" but not for the remaining "Applicant's Goods". Drawing on the authority of *Apple Inc. v Registrar of Trade Marks*, the court held that a trade mark application, if it fails in one respect, fails as a whole, particularly where there are no separate applications for different classes of goods or services. As the Applicant had been offered the opportunity to amend its application to remove the Conflicting Goods but chose not to do so, the court concluded that the ground of opposition under section 44 had been established. Consequently, the court refused to register the trade mark.