George Defilippou v Micali Coffee Pty Ltd

George Defilippou (the Opponent) opposed the registration of the trade mark application 2135057, "DB DONUT BOSS" (figurative), by Micali Coffee Pty Ltd (the Applicant). The opposition was filed on grounds including sections 42(b), 58, and 60 of the relevant legislation. The matter was heard by Nicholas Smith, a Delegate of the Registrar of Trade Marks, who made a decision based on the written record after the Opponent elected for a decision without a hearing.

The legal issues before the court were whether the Opponent had established its grounds of opposition, specifically concerning section 42(b) which relates to the use of a trade mark being contrary to law. The court also considered the weight to be given to evidence where the Opponent claimed confidentiality over its entire evidentiary submission, including publicly available information.

The court adopted the approach of a previous delegate in *Source Homeloans Pty Ltd v Coles Group Ltd*, stating that a party claiming confidentiality must identify specific information. The court found that the Opponent had not sufficiently identified commercially sensitive matters and that it was necessary to discuss the evidence to determine the opposition. The onus was on the Opponent to establish its grounds. Ultimately, the court was not satisfied that the Applicant's use of the trade mark would be contrary to law, and therefore the ground under section 42(b) was not established.

The Opponent failed to establish any of the grounds of opposition. Consequently, trade mark application number 2135057 was permitted to proceed to registration, subject to any appeal. The Applicant was awarded costs against the Opponent.