John Dimtsis and Aklis Konstantellos v the Agricultural Diary Industry Authority of Epirus, Dodoni S.A

This matter concerns an opposition by the Agricultural Dairy Industry Authority of Epirus, Dodoni S.A. ("the opponent") to a trade mark application lodged by John Dimtsis and Alkis Konstantellos ("the applicants") for the word "DODONI" in relation to dairy products, specifically cheeses. The opposition was heard by a Delegate of the Registrar of Trade Marks.

The legal issues before the Delegate were whether the applicants' trade mark was qualified for registration, whether the applicants' mark was identical or deceptively similar to the opponent's mark, and whether the use of the applicants' mark would be likely to cause deception, confusion, or passing off, having regard to the opponent's prior use and reputation in Australia. The opponent also raised issues concerning its proprietorship of the mark and the registrability of the applicants' mark.

The Delegate considered the evidence presented by both parties regarding the use and reputation of the "DODONI" mark in Australia. The opponent provided evidence of substantial sales and advertising expenditure for cheese bearing the "DODONI" mark since 1978, supported by declarations from its licensee and numerous trade participants. The Delegate found that, as at the application date of 10 October 1985, the use of the "DODONI" mark by the applicants would have been likely to cause deception or confusion among a substantial number of persons. However, the Delegate noted recent High Court decisions which suggest that the operation of section 28(a) of the Trade Marks Act 1955 (Cth) may be limited by a requirement of blameworthy conduct on the part of the applicant, a matter not definitively established on the evidence.

The Delegate also addressed an application by the applicants for special leave to adduce further evidence. This application was refused as the Delegate was not satisfied that the proposed evidence could not have been obtained with reasonable diligence at an earlier stage, nor that it would have an important influence on the outcome of the case. The Delegate concluded that the applicants appeared to be seeking to prolong the proceedings without a clear demonstration of relevant, previously unobtainable evidence.