Leafshield Pty Ltd v Ma Christina Ranola

This matter concerned oppositions filed by Leafshield Pty Ltd against two trade mark applications by Ma Christina Ranola. The dispute centred on whether the Applicant, Ma Christina Ranola, had the necessary intention to use the trade marks at the relevant dates for the services for which registration was sought. Leafshield Pty Ltd, the opponent, alleged that the Applicant lacked this intention and that its own prior use of the mark LEAF SHIELD for guttering maintenance, cleaning, and installation, and related components, established a basis for opposition.

The primary legal issues before the Delegate of the Registrar of Trade Marks were whether the opponent had established a ground of opposition under section 59 of the *Trade Marks Act 1995* (Cth) concerning the Applicant's intention to use the trade marks, and whether a ground of opposition under section 58 of the *Trade Marks Act 1995* (Cth) had been established in respect of some of the Applicant's services. The Delegate was required to assess the evidence presented by both parties regarding the use and intended use of the respective marks.

The Delegate found that the opponent had not satisfied the burden of proof to establish a prima facie case that the Applicant lacked the necessary intention to use the trade marks for all the services. Consequently, the opposition under section 59 was unsuccessful. However, the Delegate determined that the opponent had successfully established a ground of opposition under section 58 in relation to certain services. Applying the principle that an application may fail entirely if it fails in respect of some services, the Delegate offered the Applicant an opportunity to amend the applications to limit them to services for which no opposition had been established. Following these amendments, the trade mark applications were permitted to proceed to registration. Costs were not awarded as both parties achieved a degree of success.