Heather Hayward v Paul King, Raymond Mitchell and Carl Arneson Trading as Predator Surf and Skate

This matter concerns an opposition to the registration of trade mark application number 550263, filed by Heather Hayward, for the word "predator" in class 25 (clothing, footwear, and headgear). The opposition was brought jointly by Paul King, Raymond Mitchell, and Carl Arnesen, who trade as Predator Surf and Skate. The delegate of the Registrar of Trade Marks was required to determine whether Ms Hayward was the lawful proprietor of the trade mark at the time of her application, given the first opponents' claim of prior use.

The central legal issue was whether Ms Hayward's claim to proprietorship under section 40 of the *Trade Marks Act 1955* (Cth) was valid, particularly in light of the first opponents' assertion of prior use of the same mark for similar goods. A further complication arose from Ms Hayward's assignment of her trade mark rights to Twentieth Century Fox Film Corporation, which argued it was the "true owner" and that Ms Hayward held the mark in trust. The delegate had to consider whether this assignment could cure any defects in Ms Hayward's original claim to proprietorship, despite the Act not recognising the assignment of pending applications.

The delegate reasoned that the first user of a trade mark in Australia for a particular kind of thing becomes the proprietor. While acknowledging the complexity of proprietorship law and the potential for rights to coalesce through assignment, the delegate found that the assignment to Twentieth Century Fox did not, in itself, resolve the issue of Ms Hayward's initial proprietorship at the time of application. The delegate noted that Ms Hayward's assertion of use was not supported by evidence of commercial use, and while the first opponents' evidence of use on long and short-sleeve t-shirts and shorts was sufficient to establish prior use for those specific items, it was not established for other goods. The delegate concluded that Ms Hayward's application was flawed because she could not be recorded as proprietor for the same goods for which the first opponents had established prior use.

Consequently, the delegate ordered that unless Ms Hayward's application was restricted within one month to exclude long and short-sleeve t-shirts and shorts, the application would be formally refused. No award of costs was made at this stage.