Mobile Services International Pty Ltd v Matthew Antony Lynn and Leather FX Pty Ltd

This matter concerned an opposition to a trade mark application brought by Mobile Services International Pty Ltd (the Opponent) against Matthew Antony Lynn and Leather FX Pty Ltd (the Applicant). The Opponent sought to oppose the registration of the Applicant's trade mark on grounds including ss 42(b), 44, 60, and 62A of the *Trade Marks Act 1995* (Cth). The decision was made by a delegate of the Registrar of Trade Marks, Nicholas Smith, based on the written record as neither party requested a hearing or filed further submissions after the initial evidence was filed.

The primary legal issues before the delegate were whether the Opponent had successfully established any of the nominated grounds for opposing the trade mark application. Specifically, the delegate had to consider whether the Applicant's proposed trade mark was identical or deceptively similar to the Opponent's registered trade marks, whether the Applicant's use of the mark would be likely to deceive or cause confusion, and whether the application was made in bad faith or was otherwise disentitled to registration under the *Trade Marks Act 1995* (Cth). The onus rested on the Opponent to prove its case on the balance of probabilities, with the relevant date for determining the parties' rights being 21 December 2016.

The delegate found that the Opponent had failed to establish any of the grounds of opposition. In relation to the ground under s 62A, concerning bad faith, the delegate noted that such allegations require strong evidence and are not easily found. The evidence presented did not demonstrate that the Applicant's decision to use the word "leather" in its trade mark was an attempt to exploit the Opponent's reputation, but rather appeared to be descriptive of the services offered. Furthermore, there was insufficient evidence to suggest the Applicant was aware of the Opponent at the relevant date, leading the delegate to conclude the Applicant's conduct was not unscrupulous or unconscientious. Consequently, the delegate dismissed the opposition.

The trade mark application was permitted to proceed to registration no less than one month from the date of the decision, unless a notice of appeal was served on the Registrar, in which case registration would be stayed pending the outcome of the appeal.