KUESKI, S.A.P.I De C.V. SOFOM, E.N.R. v Llapingacho LLC

This matter concerned an opposition proceeding before the Australian Trade Marks Office, presided over by Hearing Officer Bianca Irgang. The applicant, KUESKI, S.A.P.I De C.V. SOFOM, E.N.R. (the Holder), sought an extension of protection for its trade marks. The opponent, Llapingacho LLC, opposed this application on various grounds, including a claim under section 44 of the *Trade Marks Act 1995* (Cth) concerning identical or deceptively similar trade marks.

The primary legal issue before the Hearing Officer was whether the Holder's trade marks were substantially identical with, or deceptively similar to, registered trade marks of the opponent, and if so, whether the opposition should succeed. The Hearing Officer was required to consider the evidence filed by both parties, including declarations and exhibits, and determine if the grounds of opposition were established. A secondary issue involved the appropriate treatment of confidentiality claims made by the Holder regarding its evidence.

The Hearing Officer found that the opponent had established a ground of opposition under section 44. However, the Holder successfully overcame this ground by providing evidence of prior and continuous use of its trade marks, as well as evidence of honest concurrent use. This evidence satisfied the requirements of subsection 44(4) of the Act, which allows for the acceptance of an application if the applicant has continuously used the trade mark prior to the priority date of the other trade mark. The Hearing Officer also adopted the approach of a previous delegate regarding the handling of confidentiality claims, stating that while commercially sensitive matters existed, they did not prevent a decision being made.

Consequently, the Hearing Officer directed that protection of the Holder's trade marks be extended in respect of all listed services, subject to an endorsement indicating that provisions of subsection 44(4) and/or Regulation 4.15A(5) were applied. Protection was to commence one month from the decision date, unless an appeal was filed. The Hearing Officer also awarded costs against the opponent in favour of the Holder, with specific allocations for the different opposition matters.