Internet Services Australia 1 Pty Ltd v The Net-a-Porter Group Ltd

This matter concerned an opposition proceeding before the Trade Marks Office, brought by Internet Services Australia 1 Pty Ltd (the Opponent) against an application by The Net-a-Porter Group Ltd (the Applicant) to register a trade mark. The Opponent relied on grounds of opposition under sections 41, 43, and 59 of the *Trade Marks Act 1995* (Cth).

The primary legal issue before the Hearing Officer was whether the Applicant's trade mark was capable of distinguishing its designated goods or services from those of other persons, as required by section 41 of the Act. The Opponent also pressed grounds under sections 43 (deceptive or misleading marks) and 59 (marks not used by the applicant), but these were not ultimately established.

The Hearing Officer found that the trade mark was not inherently adapted to distinguish the Applicant's goods or services. However, the Opponent's evidence was insufficient to establish that the trade mark did not, in fact, distinguish the Applicant's goods or services. The evidence filed by the Applicant, including a declaration from Gayle Burchell, was considered sufficient to overcome the ground of opposition under section 41. As no other grounds of opposition were established, the Hearing Officer decided to allow the trade mark to proceed to registration.

The Hearing Officer ordered that the trade mark may proceed to registration one month from the date of the decision, subject to any appeal. Costs were awarded against the Opponent in accordance with the usual principle that costs follow the event.