Kies Pty Ltd v Martin Cellars Pty Ltd

This matter concerns an opposition by Martin Cellars Pty Ltd to the registration of the trade mark RED GUM by Kies Pty Ltd for wines. Martin Cellars Pty Ltd contended that Kies Pty Ltd was not the proprietor of the trade mark, was not entitled to register it, that its use would be contrary to law, and that registration should be refused due to the likelihood of confusion and because the mark would not be entitled to protection in a court of justice. The opposition was lodged under section 49 of the relevant Act.

The delegate was required to determine whether Kies Pty Ltd was the proprietor of the trade mark RED GUM at the time of its application for registration on 7 June 1990. This involved assessing whether any prior use or assignment of the mark by Kies Pty Ltd had divested it of proprietorship, particularly in light of its dealings with Regional Vineyards (SA) Pty Ltd and the subsequent sale of the winery business to Martin Cellars Pty Ltd. The delegate also considered whether the marks and goods were the same and who had the first use of the mark.

The delegate reasoned that while Kies Pty Ltd likely had the first use of the mark, its proprietorship had been called into serious doubt. The evidence suggested that Kies Pty Ltd had acquiesced in the use of the mark by Regional Vineyards (SA) Pty Ltd for a significant period, effectively transferring proprietorship to that entity. The delegate noted that proprietorship could be lost through intentional abandonment or acquiescence, though not mere disuse. While not concluding that proprietorship had passed to the opponent, Martin Cellars Pty Ltd, the delegate found that Kies Pty Ltd's claim to proprietorship was sufficiently undermined by the evidence of its dealings with Regional Vineyards (SA) Pty Ltd.

The delegate decided that the opposition must succeed, finding that Kies Pty Ltd had not discharged the burden of proof to establish its proprietorship of the trade mark RED GUM. Consequently, the application for registration of the trade mark was refused.