Fronsac Investment Holding SA v Live Clothing Pty Ltd

This decision concerns an opposition by Fronsac Investment Holding SA ("Fronsac") to the registration of the trade mark KILLAH BABE, filed by Live Clothing Pty Ltd ("Live"). The opposition was heard by a delegate of the Registrar of Trade Marks. Fronsac sought to prevent Live's registration of the mark for goods described as "Clothing, footwear, and headgear; and all accessories in this class associated with fashion clothing".

The delegate was required to determine two grounds of opposition argued by Fronsac: ownership under section 58 of the relevant legislation, and prior conflicting reputation under section 60. Fronsac contended that it was the first user of the mark for clothing, and that Live's application should be refused entirely or significantly restricted. Live argued that Fronsac's use was limited and stale, and that it should be entitled to registration for goods not covered by Fronsac's established use.

The delegate found that while Fronsac had established first use of the mark for clothing, its ownership rights were confined to the specific goods on which it had used the mark. The delegate rejected the argument for outright refusal, noting that ownership is always tied to particular goods and that the right created by an application for registration should not be underestimated. However, the delegate also found that Fronsac's use of the mark for youth-oriented clothing was not clearly distinguishable from Live's intended use in that category. The ground of opposition under section 60, concerning prior conflicting reputation, was not established due to insufficient evidence of the mark having acquired a significant reputation in Australia at the relevant time.

Ultimately, the delegate decided to refuse the application as it stood. However, the delegate provided that if Live amended the application within 14 days to restrict the goods to "boots, shoes and slippers", the trade mark application could proceed to registration. Live was also ordered to pay Fronsac's costs.