Nitro AG v Nitro Circus IP Holdings LP

This matter concerned oppositions filed by Nitro AG ("NAG") against three trade mark applications by Nitro Circus IP Holdings LP ("NC"). NAG sought to oppose NC's applications for the trade mark NITRO CIRCUS on the basis of its own registered trade marks for the mark NITRO, arguing that NC's proposed marks were substantially identical or deceptively similar to its own registered marks and covered similar goods. The proceedings were heard by Debrett Lyons, Hearing Officer.

The primary legal issue before the court was whether NC's trade mark applications should be rejected under section 44 of the *Trade Marks Act 1995* (Cth). This required determining whether NC's goods were similar to the goods covered by NAG's prior registrations and whether the respective trade marks were substantially identical or deceptively similar. Additionally, the court considered grounds of opposition under section 42(b) of the Act, which relates to use contrary to law.

The Hearing Officer found that NAG bore the onus of proof, and the standard of proof was the ordinary civil standard on the balance of probabilities. Regarding section 44, the Hearing Officer examined the specifications of goods for both parties. NAG's registrations covered sporting clothing, footwear, headgear, and skiing apparatus and equipment, including snowboards. NC's applications covered goods such as toys and sporting equipment, including items like in-line skates, wakeboards, surfboards, and skateboards, as well as clothing. The Hearing Officer concluded that the goods were similar, and the trade marks were deceptively similar, but ultimately found that NAG had not established a ground of opposition under section 42(b).

Consequently, the Hearing Officer decided to extend protection for NC's International Registration Designating Australia ("IRDA") and allowed NC's national applications to proceed to registration, subject to any appeal. Costs were awarded in favour of NC, with reduced costs awarded in respect of two of the applications.