Mark Kaiser T/as Commercial Art & Industrial Design v Crooks Michell Peacock Stewart Pty Limited

This decision concerns an opposition by Crooks Michell Peacock Stewart Pty Limited (now CMPS & F Pty Limited) to a trade mark application by Mark Kaiser, trading as Commercial Art & Industrial Design, for the mark CMPS. The application was initially for "creative design" but was amended to goods in class 16, which includes paper and printed articles. The opposition was based on several grounds, including entitlement to proprietorship, distinctiveness, likelihood of deception or confusion, and that the mark should not be registered as it would be contrary to law or otherwise not entitled to protection.

The primary legal issues before the delegate were whether the applicant, Mr Kaiser, was entitled to be registered as the proprietor of the trade mark CMPS, whether the mark was distinctive of his goods, and whether its use would be likely to deceive or cause confusion. The delegate also considered grounds relating to the mark being contrary to law and not entitled to protection in a court of justice. The delegate was required to assess the evidence presented by both parties, particularly concerning the opponent's prior use of the CMPS mark and any goodwill or reputation it may have established in relation to class 16 goods.

The delegate found that the opponent had established prior use of the CMPS mark in relation to printed paper products such as reports, newsletters, brochures, plans, maps, and architectural drawings, which fall within class 16. This prior use, commencing in 1988 and continuing until at least 1991, was deemed to be use in the course of trade, thereby supporting the opponent's claim under section 40(1) of the Trade Marks Act. However, the delegate found that the opponent had not made out its case regarding the grounds of lack of distinctiveness or likelihood of deception or confusion, as there was insufficient evidence of the opponent having developed significant goodwill or reputation in class 16 goods. The grounds relating to the mark being contrary to law or not entitled to protection were also dismissed, with the delegate finding no evidence of fraud or equitable estoppel that would prevent Mr Kaiser from registering the mark.

Consequently, the delegate found for the opponent on the first ground of opposition, but only in respect of printed paper products within class 16. The opposition was otherwise dismissed.