Lion-Beer, Spirits & Wine Pty Ltd v Michael Harvey

This decision concerns an opposition by Lion-Beer, Spirits & Wine Pty Ltd (the Opponent) to an application by Michael Harvey (the Applicant) for the trade mark TOOHEYS EXTRA DRY. The Opponent pursued grounds of opposition under sections 42, 44, and 60 of the relevant legislation, with the onus on the Opponent to establish at least one ground on the balance of probabilities as at the filing date of the Applicant's trade mark application, 3 August 2009.

The court was required to determine whether the Opponent had established any of the pursued grounds of opposition. Specifically, the court considered the Opponent's reliance on its prior Australian trade mark registration for TOOHEYS EXTRA DRY, which covered goods in classes 9, 25, 28, 32, and 41. The Opponent argued that its registered goods in class 32, which included beers and other beverages, were the same as or similar to the goods specified in the Applicant's application. The central issue was therefore the similarity of the trade marks and whether the Applicant's use of the TOOHEYS EXTRA DRY mark would be likely to deceive or cause confusion, or otherwise be contrary to the Trade Practices Act or Fair Trading Act.

The Hearing Officer found that the Opponent possessed a reputation in its TOOHEYS trade mark. However, the Hearing Officer concluded that it was unlikely that the Applicant's use of the TOOHEYS EXTRA DRY trade mark would deceive or cause confusion, nor was there any indication that the Applicant sought to profit from the Opponent's reputation. Consequently, the Hearing Officer found that the Opponent had not established the section 42(b) ground of opposition, nor any other pursued ground.

The application for the trade mark TOOHEYS EXTRA DRY was permitted to proceed to registration. The Opponent was ordered to pay the Applicant's costs, to be assessed according to the official scale.