MS Marketing Inc.v EZ Imports Pty Ltd

This matter concerned an opposition by EZ Imports Pty Ltd to the registration of a trade mark application by MS Marketing Inc. The dispute arose because EZ Imports alleged that MS Marketing Inc. was not the owner of the trade mark it sought to register, relying on section 58 of the relevant Act. The decision was made by Bianca Irgang, a Hearing Officer at the Trade Marks Hearings.

The primary legal issue before the Hearing Officer was whether MS Marketing Inc. was the owner of the trade mark it applied to register, as opposed to EZ Imports Pty Ltd. To determine this, the Hearing Officer was required to consider whether the trade marks were identical or substantially identical, whether the goods and services were of the same kind, and crucially, whether EZ Imports Pty Ltd had an earlier claim to ownership based on the authorship and prior use of its trade mark.

The Hearing Officer applied the principles outlined in section 58 of the Act, which requires an opponent to establish that the trade marks are identical or substantially identical, that the goods are of the same kind, and that the opponent has prior use and authorship. The evidence presented indicated that EZ Imports had used its trade mark on wheelchairs and mobility aids since at least December 2013 in Australia and internationally. Conversely, evidence from MS Marketing Inc. suggested that EZ Imports did not have a registered business or trade mark in Australia at the time of MS Marketing Inc.'s application, and that both parties sourced their wheelchairs from the same manufacturer in China. However, the Hearing Officer found that EZ Imports had met the onus of proof regarding the ground of opposition under section 58.

Consequently, the Hearing Officer refused to register the trade mark application by MS Marketing Inc. and ordered that MS Marketing Inc. pay the costs of EZ Imports Pty Ltd.