James Vostoganis v Grayson's International Pty Ltd

This decision concerns an opposition filed by James Vostoganis against the trade mark application number 2248940, for the mark "LEAFSCREENER" (fig.), filed by Grayson’s International Pty Ltd. The application sought registration in Class 6 for a range of metallic building materials and components, including roof materials, hardware, plumbing accessories, drainage parts, and gutter protection. The opposition was brought before a delegate of the Registrar of Trade Marks.

The legal issues before the delegate were whether the opposition grounds under sections 41 and 58 of the *Trade Marks Act 1995* (Cth) were established. Section 58 concerns whether the applicant is the owner of the trade mark, requiring the opponent to demonstrate that the mark is identical or substantially identical to an earlier trade mark, used in relation to goods of the same kind, and that a third party has an earlier claim of ownership based on prior use. Section 41 requires the trade mark to be capable of distinguishing the applicant's goods or services from those of other persons, considering both inherent distinctiveness and actual use.

The delegate found that the opponent bore the onus of establishing at least one ground of opposition on the balance of probabilities, with the relevant date for determination being the filing date of the application. Regarding the section 58 ground, the opponent alleged the applicant was not the original creator of the "leafscreener" name or system, but failed to provide any supporting evidence. Consequently, this ground was not established. For the section 41 ground, the opponent argued that "leafscreener" is a descriptive term commonly used in the roofing and guttering industry. However, the delegate considered the trade mark as a composite mark, comprising the word "leafscreener" and a leaf-shaped device with an interior grid. The delegate concluded that the combination of the word and the device rendered the mark capable of distinguishing the applicant's goods, as other traders would not likely desire to use this specific composite mark in the ordinary course of their business. Therefore, the section 41 ground was also not established.

As neither ground of opposition was established, the delegate ordered that the trade mark may proceed to registration, subject to the expiry of the appeal period and the resolution of any other pending oppositions. The delegate also awarded costs against the opponent in favour of the applicant.