JY Tulloch & Sons Pty Ltd v Turloch Pty Ltd

This matter concerned an opposition by JY Tulloch & Sons Pty Ltd (the opponent) to an application by Turloch Pty Ltd (the applicant) to register the trade mark TURLOCH in relation to wines. The opponent, which had used the trade mark TULLOCH in relation to wines since 1952 and held a registration for it with a priority date of 18 May 1979, argued that the proposed TURLOCH mark was substantially identical or deceptively similar to its own mark. The hearing was conducted before Ian Thompson, a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the applicant's proposed trade mark TURLOCH was substantially identical or deceptively similar to the opponent's registered and used trade mark TULLOCH, such that registration should be refused under sections 44, 58, or 60 of the relevant Act. The delegate also considered whether the applicant's use of the TURLOCH mark qualified for consideration under the honest concurrent user provisions of section 44(4) of the Act.

The delegate found that the opponent had not established that the trade marks were substantially identical or deceptively similar. While the applicant provided evidence of some use of the TURLOCH mark, including winning an award in 2003, the evidence lacked detail regarding the timing, volume, and geographical extent of use. Consequently, this use did not qualify for consideration under the honest concurrent user provisions, nor did it establish grounds for opposition under sections 44, 58, or 60. The delegate noted that the wine show award occurred after the priority dates of the opponent's applications.

As the opposition was not established on the argued grounds, nor on other grounds mentioned in the Notice of Opposition, the delegate decided to allow the application to proceed to registration, subject to the opponent notifying an appeal within one month. The delegate ordered costs against the opponent at the official scale.