FITMYCAR Pty Ltd v McCade Family Tyres Pty Ltd as trustee for the McCade Family Trust

FITMYCAR Pty Ltd opposed the registration of the trade mark application number 2149166, "FIT MY 4WD" (stylized), by McCade Family Tyres Pty Ltd as trustee for the McCade Family Trust. The opposition was heard by Bianca Irgang, Hearing Officer.

The primary legal issue before the Hearing Officer was whether the applicant's trade mark application should be rejected under section 44 of the *Trade Marks Act 1995* (Cth) due to substantial identity or deceptive similarity to a registered or pending trade mark for similar goods or services. The Hearing Officer also considered whether the application could proceed to registration under the exceptions provided in sections 44(3) or 44(4) of the Act, specifically concerning honest concurrent use or prior continuous use.

The Hearing Officer found that the opponent had established the ground of opposition under section 44 in relation to some of the applicant's services. However, the Hearing Officer considered the provisions of section 44(3) and (4) which allow for registration based on honest concurrent use or other circumstances. The applicant provided evidence demonstrating the use of the trade mark "FIT MY 4WD" and related branding across various platforms, including domain registration, website development, social media promotion, and participation in industry shows, commencing from around 2015 and continuing with reasonable advertising expenditure and revenue generation.

Following the applicant's agreement to amend the trade mark specification to delete the conflicting services, the Hearing Officer decided to accept the trade mark application for registration in respect of the amended specification, subject to an endorsement that the provisions of section 44(3)(a) applied. Each party was ordered to bear its own costs, as both had achieved some success in the proceedings.