Malina Schindler and Adrian Schindler v Intellectual Property Development Corporation Pty Ltd

Malina Schindler and Adrian Schindler (the Opponents) opposed the registration of a trade mark by Intellectual Property Development Corporation Pty Ltd (the Applicant). The dispute concerned the Applicant's attempt to register the trade mark "Zig Zag" for use in relation to alcoholic beverages. The Opponents argued that the trade mark should not be registered due to prior use and established reputation associated with the "Zig Zag Brewery." The decision was made by Iain Thompson, Hearing Officer, in the context of trade mark opposition proceedings.

The primary legal issue before the Hearing Officer was whether the grounds of opposition, specifically those relating to prior use and reputation, had been established as of the relevant date, which is the filing date of the trade mark application. This involved determining if the Opponents could demonstrate a sufficient connection between the "Zig Zag" name and the brewing of beer to preclude the Applicant's registration. The Hearing Officer was required to assess the evidence presented by both parties to ascertain the extent to which the grounds of opposition were made out.

The Hearing Officer's reasoning focused on the extensive historical evidence presented by Ms. Schindler regarding the "Zig Zag Brewery." This evidence demonstrated that the brewery, established in 1884 and located in the "Zig Zag" region of NSW, had been known by that name for a significant period. Crucially, the evidence showed that the "Zig Zag" name was not only associated with the brewery itself but also with the beer produced there, with the name appearing on bottles and being widely recognised in publications and by the public, even when the brewery operated under different corporate names. The Hearing Officer applied the principle that the grounds of opposition must be established as at the date of filing the application, and found that the historical evidence overwhelmingly supported the Opponents' claim of prior use and reputation in relation to the "Zig Zag" trade mark for beer.

Consequently, the Hearing Officer refused to register the trade mark application. The Opponents, having been successful in their opposition, were awarded their costs against the Applicant.