Kyl Newton v Roshtech Pty Ltd

Kyl Newton, operating as VIPC, opposed the trade mark application by Roshtech Pty Ltd. The dispute concerned Roshtech's application to register a trade mark, with Newton arguing grounds for opposition under sections 58 and 60 of the *Trade Marks Act 1995* (Cth). The matter was heard by Bianca Irgang, a Hearing Officer at the Trade Marks Hearings.

The primary legal issues before the Hearing Officer were whether Newton had established grounds for opposition under sections 58 and 60 of the Act. Section 58 concerns the use of a trade mark by the opponent prior to the applicant's filing date, while section 60 relates to whether the applicant's trade mark is identical or deceptively similar to a trade mark that the opponent has used in Australia. The Hearing Officer was required to determine the extent to which Newton's claims of prior use and distinctiveness for his "VIPC" mark were substantiated in relation to the services for which Roshtech sought registration.

The Hearing Officer found that Newton had successfully established the ground of opposition under section 58 of the Act in relation to certain services within classes 37 and 42. However, the evidence did not support the opposition on any other grounds. Consequently, the applicant, Roshtech Pty Ltd, was given an opportunity to amend its trade mark specification by deleting the conflicting services. Roshtech accepted this and requested the amendment.

As a result of the amendment, the Hearing Officer decided that the trade mark application, with the amended specification for services in classes 37 and 42, and all services in class 35, could proceed to registration. Given that both parties had achieved some success in their respective claims, the Hearing Officer ordered that each party bear their own costs.