Middle-earth Enterprises, LLC v Lord of the Fries IP Pty Ltd

This matter concerned an application by Middle-earth Enterprises, LLC (the Applicant) to register a trade mark, opposed by Lord of the Fries IP Pty Ltd (the Opponent). The Opponent filed a Notice of Intention to Oppose and subsequently a Statement of Grounds and Particulars, alleging grounds for opposition under various sections of the *Trade Marks Act 1995* (Cth), including sections 42(b), 44, 58, 60, and 62A. The Applicant filed a Notice of Intention to Defend. The hearing was conducted by a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the Opponent had established any of the grounds of opposition it had pleaded. Specifically, the delegate considered the evidence presented by the Opponent, noting that the Opponent had claimed confidentiality over its entire evidence, which presented a challenge in discussing the merits of the case. The delegate also had to determine if the Applicant's conduct in filing the trade mark application was unscrupulous, underhanded, or unconscientious, as required for the section 62A ground of opposition.

The delegate reasoned that the onus was on the Opponent to establish its grounds of opposition. Applying the principles from *Source Homeloans Pty Ltd v Coles Group Ltd*, the delegate acknowledged the difficulty in discussing evidence claimed as confidential but stated that parties must identify sensitive information with specificity. The delegate found that the evidence in support of the section 62A ground was speculative and that the Opponent had not satisfied the delegate that the Applicant's conduct met the threshold for that ground. Ultimately, the delegate concluded that the Opponent had failed to establish any of the grounds of opposition.

Consequently, the delegate ordered that the trade mark application could proceed to registration, subject to a one-month waiting period from the date of the decision, unless a notice of appeal was filed. The delegate also awarded costs against the Opponent in favour of the Applicant, following the general rule that costs follow the event.