Henkel AG & Co. KGaA v Mary Vlachiotis

This matter came before Jock McDonagh, a Hearing Officer of the Trade Marks Hearings, concerning an opposition by Henkel AG & Co. KGaA (the opponent) to an application by Mary Vlachiotis (the applicant) to register a trade mark. The dispute centred on the applicant's trade mark application, which the opponent sought to have refused. The opponent's evidence established its significant international and Australian use of the trade mark TAFT in relation to hair care and hair styling products, supported by substantial revenue and advertising expenditure, leading to a claimed extensive goodwill and reputation.

The primary legal issue before the Hearing Officer was whether the opponent had established any of the grounds of opposition relied upon, specifically in relation to section 44 of the relevant Act. The opponent also raised other grounds, but the Hearing Officer noted that success on a single ground was sufficient to uphold the opposition. The applicant's evidence included observations that the opponent's trade marks were invariably accompanied by the word SCHWARTZKOPF and a specific silhouette, and she drew a distinction between her goods and the opponent's hair styling products.

The Hearing Officer found in favour of the opponent on the grounds relating to section 44. Having established that at least one ground of opposition was made out, the Hearing Officer determined that the applicant's trade mark application should be refused. The opponent was also awarded costs against the applicant on the official scale.