gui lin shen hu shang mao you xian gong si v Shiyu Zhang

This matter concerns a trade mark opposition filed by Gui Lin Shen Hu Shang Mao You Xian Gong Si (the Opponent) against an application by Shiyu Zhang (the Applicant) to register a trade mark. The Opponent filed a Notice of Intention to Oppose and a Statement of Grounds and Particulars, alleging grounds for opposition under sections 60 and 62A of the relevant legislation. The Applicant filed a Notice of Intention to Defend. Both parties subsequently requested that the matter proceed to a decision without a hearing, and the decision is made by a delegate of the Registrar of Trade Marks based on the written record.

The legal issues before the delegate were whether the grounds of opposition under sections 60 and 62A had been established. Section 60 concerns the use of a trade mark by the opponent in Australia and whether the applicant's trade mark is substantially identical or deceptively similar to the opponent's mark, and whether the opponent has a reputation in Australia. Section 62A relates to whether the application for registration was made in bad faith.

The delegate considered the evidence presented by both parties. The Opponent, a Chinese toy company, claimed to have created the "OleFun" mark in 2019 and used it in Australia since October 2021, with sales and advertising figures provided. The Opponent also raised concerns about the Applicant's evidence, suggesting their website postdated the opposition. Regarding the bad faith ground under section 62A, the delegate noted that the onus was on the Opponent to prove bad faith, which is a serious allegation not easily established. The delegate found that the evidence did not establish that the Opponent had any reputation in the "Olefun" mark at the time the Applicant conceived or started using their trade mark, or at the time of application. The delegate also found that the trade mark itself, being a combination of common words, could have been conceived independently. Consequently, the delegate was not satisfied that the Applicant's conduct was unscrupulous, underhanded, or unconscientious, and therefore the ground under section 62A was not established.

The delegate concluded that the Opponent had failed to establish any of the grounds of opposition. Accordingly, the trade mark application was permitted to proceed to registration, subject to a one-month period from the date of the decision, unless a notice of appeal was filed.