Mytek Europe Sp. Z O.o. v HEM Sp. Z O.o

This matter concerned an opposition filed by Mytek Europe Sp. Z O.o. (the Opponent) against HEM Sp. Z O.o. (the Holder) seeking to extend protection in Australia for an international registration of a trade mark. The dispute arose after the Opponent ceased business with the Holder, alleging dubious business practices including breach of contract, theft, and illegal appropriation of intellectual property. The Opponent contended that the Holder's application to extend protection was filed in bad faith, as the Holder was aware the Opponent was the rightful owner of the mark. The decision was made by Nicholas Smith, a delegate of the Registrar of Trade Marks, based on the written record.

The primary legal issue before the delegate was whether the opposition grounds, particularly those under section 62A of the *Trade Marks Act 1995* (Cth) concerning bad faith, had been established. The Opponent also raised grounds under sections 42(b), 44, 58, and 60 of the Act. The Holder did not file evidence in answer to the Opponent's claims.

The delegate reasoned that the uncontradicted evidence demonstrated a prior business relationship where the Holder acted as a contract manufacturer and distributor of the Opponent's products, and was aware that the Opponent had created and used the trade mark in question. The delegate found that the Holder's application to extend protection to an identical trade mark used by the Opponent, without a plausible explanation, mirrored circumstances where a former distributor seeks to register a trade mark of its former principal. Applying the principle that such conduct falls short of acceptable commercial behaviour, the delegate was satisfied that the ground of opposition under section 62A was established.

Consequently, the delegate refused to extend protection of the international registration to the Holder's goods. The delegate also awarded costs against the Holder in favour of the Opponent.