Francoise Cozzolino v Agatha Diffusion S.r.L

This matter concerned an opposition by Agatha Diffusion S.r.L. (the opponent) to the registration of the trade mark application AGATHA.Paris in the name of Francoise Cozzolino (the applicant). The opposition was brought under the provisions of the Trade Marks Act 1955, which continued to govern the proceedings due to transitional provisions. The applicant had lodged an application for the trade mark in respect of "jewellery, horological instruments and precious metals" in Class 14. The opponent, a French company with extensive international retail operations using the trade mark AGATHA PARIS, opposed the registration on several grounds, primarily focusing on proprietorship, likelihood of deception or confusion due to prior reputation, and lack of intention to use the mark.

The court was required to determine whether the applicant was the rightful proprietor of the trade mark, whether the use of the mark by the applicant would be likely to deceive or cause confusion due to the opponent's prior reputation in Australia, and whether the applicant had used the trade mark or intended to use it. The opponent argued that they had established a reputation in Australia through various means, including the travel of Australian tourists to their overseas stores, international sales figures, and advertising in international fashion magazines that circulated in Australia. They also contended that the applicant's lack of demonstrable business activity and failure to respond to official notices suggested a lack of intention to use the mark.

The delegate found that for the ground of proprietorship under section 40 of the Act, the opponent had failed to demonstrate use of the trade mark AGATHA PARIS in Australia prior to the applicant's lodgement date of 8 August 1994. While the trade marks were considered substantially identical, evidence of overseas sales, advertising in foreign language magazines, and preliminary arrangements with airlines did not establish use in the Australian market. The delegate noted that the High Court ruling in *The Seven Up Company v. O. T. Limited* remained relevant precedent, affirming that it is not unlawful to register a foreign-used mark in Australia if it has not been used locally, absent fraud. Regarding the ground of lack of intention to use the mark under sections 6(1) and 45, the delegate found the opponent's evidence to be circumstantial and insufficient to prove the applicant's lack of intention. The delegate concluded that the applicant's statement of use at the time of application affirmed her intention, and the opposition failed on these grounds.