Julius Samann Limited v The Royal Horticultural Society

Julius Samann Limited (the Opponent) opposed the extension of protection for a trade mark held by The Royal Horticultural Society (the Holder) under regulation 17A.33 of the Trade Marks Regulations 1995 (Cth). The opposition was based on grounds pressed under regulation 4.15A and sections 42(b), 44, and 60 of the Trade Marks Act 1995 (Cth). The Delegate of the Registrar of Trade Marks was required to determine whether any of these grounds of opposition were established.

The Delegate considered whether the use of the Holder's trade mark would be contrary to law, which was the sole ground pursued under section 42(b) in respect of the specified goods. The Delegate found that the Opponent had failed to establish any of the grounds of opposition it had nominated.

The Delegate's reasoning was that the Opponent had not satisfied the burden of proof to demonstrate that the use of the trade mark by the Holder would be contrary to law. Consequently, the Delegate concluded that the extension of protection for the Holder's mark could proceed. The Delegate also made directions regarding costs, awarding them against the Opponent, and stipulated that the extension of protection would be stayed if a notice of appeal was served on the Registrar.