M Malmsten AB v Competitor Swim Products Inc

M Malmsten AB (the Applicant) and Competitor Swim Products Inc (the Opponent) were parties to a trade mark opposition proceeding before the Registrar of Trade Marks. The Applicant sought to register the trade mark COMPETITOR in Australia. The Opponent opposed this registration, asserting its prior rights to the mark. The dispute centred on the Opponent's claim to have used the COMPETITOR mark in Australia since 1973, predating the Applicant's claimed use.

The primary legal issue before the delegate of the Registrar of Trade Marks was whether the Opponent had established prior use of the COMPETITOR trade mark in Australia, thereby entitling it to oppose the Applicant's registration. This required the court to consider the evidence presented by both parties regarding the origin and extent of their respective uses of the mark, particularly in relation to Australia.

The court considered declarations from representatives of both parties. The Applicant's evidence, through Brad Underwood, detailed its long-standing use of the COMPETITOR mark globally since 1973, including direct sales to Australia and its role as the supplier of official lane lines for major swimming events. The Applicant also highlighted a 1975 licensing agreement with the Opponent (then Training Equipment Company), which granted the Opponent rights to manufacture and sell the Applicant's patented lane line technology within a specified European territory, explicitly excluding Australia. This licensing agreement was presented as evidence that the Opponent's rights were derived from the Applicant and did not extend to independent use of the mark in Australia prior to the Applicant's own use.

The delegate of the Registrar of Trade Marks found that the Applicant had established prior use of the COMPETITOR trade mark in Australia. The evidence indicated that the Applicant had been selling its products under the COMPETITOR brand in Australia since 1973, and that the 1975 license granted to the Opponent did not include Australia within its contractual territory. Consequently, the opposition was dismissed, and the Applicant was entitled to proceed with its trade mark registration.