Hino Jidosha Kabushiki Kaisha v Tallevine Pty Ltd

The case of Hino Jidosha Kabushiki Kaisha v Tallevine Pty Ltd was heard by Robert Wilson. The dispute concerned an application for a trade mark. The applicant, Hino Jidosha Kabushiki Kaisha, had been given a period to file evidence in answer to the opponent's evidence. Following the completion of evidence stages, neither party requested a hearing, and the matter proceeded to be decided on the written record. The opponent, Tallevine Pty Ltd, filed written submissions which included decisions from two Supreme Court matters. The applicant did not file separate submissions but the court noted that a statutory declaration filed by the applicant contained material that would be considered as submissions.

The primary legal issue before the court was whether the applicant's trade mark application should lapse. This involved an examination of the provisions of the *Trade Marks Act 1995* (Cth) and the *Trade Marks Regulations 1995* (Cth) concerning the prescribed period for acceptance of a trade mark application and the circumstances under which acceptance may be deferred. Specifically, the court needed to consider the effect of a trade mark being cited under a ground for rejection and the subsequent filing of an application for removal of that cited trade mark.

The court's reasoning focused on the interpretation of the statutory framework governing trade mark applications. It was established that an application lapses if not accepted within the prescribed period, typically 15 months from the first adverse report, unless extended. The court noted that this period can be extended under section 224 of the Act. Crucially, the court considered the provisions for deferring acceptance, particularly where an applicant has applied for the removal of a cited trade mark. In such situations, the period during which acceptance is deferred is not counted towards the 15-month period. The court also considered whether a request for deferral made outside the initial prescribed period, but within an extended period, could still be considered. The court indicated it would consider the material within the applicant's statutory declaration as submissions.