My Brilliance Pty Ltd v Brilliance Publishing Inc

My Brilliance Pty Ltd (the Applicant) sought to register a trade mark, and Brilliance Publishing Inc (the Opponent) opposed this application. The dispute concerned whether the Applicant had established sufficient use of its trade mark in Australia prior to the filing date of its application, as required by the relevant legislation. The decision was made by Jock McDonagh, a Hearings Officer at the Trade Marks Hearings.

The legal issues before the court were whether the Opponent had established any of the grounds on which the application was opposed. Specifically, the court had to determine whether sales of the Applicant's goods through Australian distributors constituted use by the Applicant in Australia, whether direct online sales to Australian customers qualified as use in Australia, whether the use of the trade mark accompanied by a starburst device amounted to use of the mark itself, and whether the Applicant's evidence had been fabricated.

The Hearings Officer found that the Opponent had not established any of its grounds of opposition. The Opponent's strategy focused on attacking the Applicant's evidence, arguing that sales through intermediaries like Baker & Taylor and Ingram Book Group did not constitute use by the Applicant in Australia, and that direct online sales were not sufficiently "targeted at" Australia. The Opponent also contended that the presence of a starburst device alongside the trade mark meant it was not use of the mark itself, and that key elements of the Applicant's evidence were fabricated. However, the Hearings Officer concluded that the Opponent had not established its case to any extent.

Consequently, the Hearings Officer decided to register the trade mark application, as no grounds of opposition had been established. The application was to proceed to registration one month from the date of the decision, unless an appeal was filed, in which case registration would be stayed pending the outcome of the appeal. The Applicant was awarded its costs against the Opponent.