McD Asia Pacific LLC v Hoseyin Dogon

This decision concerns an opposition by McD Asia Pacific LLC (the Opponent) to the registration of a trade mark by Hoseyin Dogon (the Applicant). The dispute arose from the Applicant's attempt to register a trade mark, which the Opponent opposed. The matter was heard by Iain Campbell Thompson, a Hearing Officer in the Trade Marks Hearings.

The primary legal issue before the Hearing Officer was whether to allow the Applicant to adduce further evidence in support of his application, and if so, whether the grounds of opposition were established. The Applicant sought to rely on a statutory declaration detailing his reasons for adopting the trade mark, his business experience, and his intended use of the mark. The Opponent relied on earlier statutory declarations.

The Hearing Officer determined that the Applicant's further evidence should not be admitted. Applying the principles from *Oxon Italia SpA’s Application* and *Gregory Paul Roebuck v News Ltd*, the Hearing Officer found that the facts in the declaration could reasonably have been obtained earlier and were not germane to the grounds of opposition. The Hearing Officer emphasised that the assessment of a trade mark application should be based on the potential use of the mark within the scope of the registration, not on past or intended use, citing *Berlei Hestia Industries Ltd v The Bali Company Inc*. Consequently, the Hearing Officer refused to register the trade mark.

The Hearing Officer also addressed the issue of costs. While acknowledging that costs are generally awarded against the unsuccessful party, the Hearing Officer noted that neither party had complied with directions regarding the exchange of submissions. Accordingly, costs were awarded against the Applicant, but the Opponent was precluded from claiming costs related to a specific item concerning its preparation for the hearing.