Foxtel Management Pty Ltd v 111Pix.com Limited

This matter concerned an opposition to the registration of trade marks by Foxtel Management Pty Ltd (the Opponent) against 111Pix.com Limited (the Holder). The Opponent relied on nine grounds of opposition, but ultimately only pursued the ground under section 59 of the *Trade Marks Act 1995* (Cth). The hearing was conducted by Michael Kirov, delegate of the Registrar of Trade Marks, who heard the matter as a delegate of the Registrar of Trade Marks on 19 October 2011 in Sydney.

The primary legal issue before the delegate was whether the Opponent had established the ground of opposition under section 59 of the Act. This section concerns whether the applicant for registration has, by their own actions, caused the trade mark to become the general name in the trade for the goods or services for which it is registered. The Holder did not attend the hearing or file written submissions, but had previously indicated a desire to amend the application if necessary and sought costs if successful.

The delegate considered the evidence, including a draft "Business Plan" provided by the Holder. Having reviewed the evidence and submissions, the delegate found that the Opponent had not established the section 59 ground of opposition. Consequently, the delegate directed that protection of the trade marks be extended to Australia in respect of all the goods and services listed in the International Registration Designations (IRDA). The delegate also awarded costs to the Holder as the successful party.