Main Road Real Estate Pty Ltd v Yught Pty Ltd

Main Road Real Estate Pty Ltd (the Opponent) opposed the registration of trade mark application number 2280044, filed by Yught Pty Ltd (the Applicant), for goods and services in classes 9, 16, 35, 38, 40, 41, and 42. The opposition was heard by Nicholas Smith, Hearing Officer and Delegate of the Registrar of Trade Marks.

The primary legal issue before the court was whether the Applicant's conduct in seeking to register the trade mark was in bad faith, pursuant to section 62A of the *Trade Marks Act 1995* (Cth). The Opponent alleged that the Applicant's decision to adopt and seek registration of a mark containing the word "mainroad" was made to take advantage of the Opponent's reputation.

The Hearing Officer found that the onus was on the Opponent to establish bad faith, a burden not easily discharged. The evidence did not support a finding that the Applicant's decision to adopt the mark was motivated by a desire to exploit the Opponent's reputation, which the Hearing Officer had already found to be insufficient for the purposes of section 60(a). The Applicant conceived the mark approximately nine months after the Opponent commenced use and provided sworn evidence that it was unaware of the Opponent at the relevant date, having conducted searches of relevant registers. The Opponent failed to provide evidence suggesting the Applicant's awareness of its existence, particularly given the parties were not direct competitors. Consequently, the Hearing Officer was not satisfied that the Applicant's conduct was unscrupulous, underhanded, or unconscientious, and thus the ground of opposition under section 62A was not established.

The Opponent failed to establish any of the nominated grounds of opposition. Accordingly, trade mark application number 2280044 was permitted to proceed to registration, subject to a one-month waiting period unless a notice of appeal was filed. The Applicant was awarded costs against the Opponent.