Hawa Dane Pty Ltd v Gillin Pty Limited

This matter came before the Registrar of Trade Marks concerning an opposition by Gillin Pty Limited (the Opponent) to the registration of a trade mark by Hawa Dane Pty Ltd (the Applicant). The Opponent relied on its registered trade mark EMPIRE (Registration No. 1546717) for goods in Class 20, specifically office furniture and related items. The Applicant sought to register a trade mark for a broad range of furniture in Class 20.

The primary legal issue before the Registrar was whether the Applicant's proposed goods were the same or similar to the Opponent's registered goods, thereby establishing a ground for opposition under section 44 of the *Trade Marks Act 1995* (Cth). The Registrar also considered an amendment made by the Applicant to its specification of goods after acceptance, which sought to exclude "commercial office furniture."

The Registrar reasoned that the determination of similarity between goods involves considering their nature, use, and trade channels. In this instance, the Registrar found that the Applicant's broad claims for furniture in Class 20 were similar to the Opponent's registered goods, which included office furniture. The Registrar noted that furniture items, regardless of whether intended for office or home use, share the same fundamental nature and would likely be traded through similar channels. The amendment to the Applicant's specification was deemed insufficient to differentiate its goods from the Opponent's registered marks, as the remaining goods were still considered the same or similar.

Consequently, the Registrar found that the Opponent had established a ground of opposition in respect of all the Applicant's goods and therefore refused to register the Applicant's trade mark. The Registrar also awarded costs to the Opponent.