Greenfield Products Pty Ltd v Yellowstrom Verwaltungsgesell mbH

This matter concerned an opposition by Greenfield Products Pty Ltd against the registration of a trade mark by Yellowstrom Verwaltungsgesell mbH. The opposition was brought on the ground that the applicant did not intend to use the trade mark in Australia, pursuant to section 59 of the relevant Act. The delegate of the Trade Marks Hearings office was tasked with determining whether this ground of opposition had been established.

The primary legal issue before the delegate was whether Yellowstrom Verwaltungsgesell mbH had demonstrated an intention to use the trade mark in Australia at the time the opposition was filed. The opponent argued that the applicant's failure to respond to the opposition and other correspondence, coupled with evidence of their trade mark attorneys ceasing to act for them well before the opposition was filed, constituted prima facie evidence of a lack of intention to use the mark. The delegate considered the provisions of section 59, which requires an applicant to intend to use or authorise the use of a trade mark in Australia, and noted that this ground relates to the applicant's current intention.

The delegate reasoned that the applicant's cessation of instructions to their attorneys in April 2004, with the attorneys closing their file in June 2004, predated the filing of the notice of opposition. This, along with the applicant's failure to replace their Australian address for service and their lack of response to communications from the Trade Marks office, led the delegate to infer that the applicant no longer intended to use the trade mark in Australia at the time the opposition was filed. The delegate found this evidence sufficient to establish the ground of opposition under section 59.

Consequently, the delegate refused to extend protection in Australia for the trade mark in respect of all goods listed in the application. The opponent was awarded costs against the applicant at the official scale.