Legend (Pacific) Pty Ltd v Multi-Holding AG

This matter concerned an opposition by Legend (Pacific) Pty Ltd to the registration of a trade mark by Multi-Holding AG. The opposition was based on grounds under sections 41 and 58 of the relevant Act. The hearing officer was required to determine whether the opponent had established either of these grounds in relation to the goods for which protection was sought.

The legal issues before the hearing officer were whether the trade mark MC4 was, at the relevant time, a descriptive or generic term for connectors and cable extensions used in the solar industry, thereby failing to meet the requirements of section 41, and whether the opponent had established that the trade mark was used by them or other traders as a descriptive term prior to the applicant's first use, as required by section 58.

The hearing officer found that the opponent had not established the ground of opposition under section 58, as there was no evidence of the opponent or any other trader using the term MC4 as a trade mark prior to the applicant's first use. While evidence was presented suggesting MC4 was a descriptive term within the solar industry, the specific requirement of prior use under section 58 was not met. Consequently, the hearing officer decided to extend protection for the trade mark in respect of all the goods listed in the International Registration Designating Australia (IRDA), with costs awarded against the unsuccessful opponent.