Ivolve Pty Ltd v H.P.M. Industries Pty Ltd

This matter came before Hearing Officer Mary Skivington of the Trade Marks Hearings. The applicant, Ivolve Pty Ltd, sought to register a trade mark, while the opponent, H.P.M. Industries Pty Ltd, opposed this application. The dispute concerned whether H.P.M. Industries Pty Ltd had established sufficient reputation in its own trade mark to warrant preventing Ivolve Pty Ltd's application.

The primary legal issue before the Hearing Officer was whether the opponent had established a reputation in its trade mark such that its use by the applicant would be likely to deceive or cause confusion. This involved assessing the evidence of the opponent's use and promotion of its trade mark prior to the relevant date. The Hearing Officer also considered a request by the opponent to admit further evidence on the eve of the hearing, ultimately allowing one statutory declaration clarifying the date of first use but disallowing others.

The Hearing Officer reasoned that while the opponent had adopted a branding convention and promoted its trade mark through various channels, including industry awards and publications, and had received government grants, these factors alone did not establish a reputation sufficient to prevent registration. Applying the principle that reputation must be established as a question of fact, and referencing the approach of Lockhart J, the Hearing Officer found that despite evidence of advertising and development, no sales had been made by the opponent before the relevant date. Consequently, the Hearing Officer concluded that at the relevant date, the opponent did not possess a reputation that would likely lead to deception or confusion if the applicant's trade mark were used.

As none of the grounds of opposition were established, the Hearing Officer directed that the trade mark application could proceed to registration one month from the date of the decision, subject to any appeal. The Hearing Officer also awarded costs against the unsuccessful opponent, Ivolve Pty Ltd.