Friends of The Paragon Inc v Carabella Holdings Pty Ltd as trustee for The Carabella Trust

Friends of The Paragon Inc (the Opponent) opposed the registration of trade mark application number 1909328, "The Paragon Katoomba (figurative)", in Class 30, by Carabella Holdings Pty Ltd as trustee for The Carabella Trust (the Applicant). The opposition was brought before a delegate of the Registrar of Trade Marks. The Opponent sought to prevent the registration of the trade mark on grounds including sections 41, 43, 58, 60, and 62A of the *Trade Marks Act 1995* (Cth).

The legal issues before the delegate were whether the Opponent had established any of the nominated grounds for opposing the registration of the Applicant's trade mark. Specifically, the delegate had to consider whether the trade mark was deceptive or misleading, whether it was not distinctive, whether it was the same as or deceptively similar to a trade mark in relation to which a person had acquired rights, or whether it was prohibited under other provisions of the Act. The delegate also had to determine whether to admit additional documents filed out of time by the Opponent, and if so, their probative value.

The delegate determined that the Opponent had not made a compelling case for the admission of the late-filed documents, finding their probative value to be negligible and that their admission would not impact the ultimate decision. The delegate then considered the evidence properly filed by both parties. The Opponent relied on the historical significance of the "Paragon Café and Restaurant" building and business in Katoomba, arguing that the "PARAGON" name had residual reputation and had not been abandoned. The Applicant, however, presented evidence of its own trade mark registrations for "The Paragon" in respect of chocolate goods and argued that the Opponent was aware of the separate ownership of the building and the business. After reviewing the evidence and submissions, the delegate found that none of the grounds of opposition were established on the balance of probabilities.

As none of the grounds of opposition were established, the delegate ordered that the opposition be dismissed and that the trade mark application proceed to registration.