Nordstrom, Inc

This matter concerned an application for registration of the trade mark NORDSTROM by Nordstrom, Inc. The application was opposed by Starite Distributors Pty Ltd, which held a registered trade mark for the same word in plain script for goods in Classes 24 and 25. The hearing was conducted before Rowena Beal, as a delegate of the Registrar, in Melbourne on 11 September 2006.

The primary legal issues before the delegate were whether the applicant's trade mark should be registered despite the existence of the earlier registered mark, and the extent to which the Registrar's discretion under subsection 44(3)(b) of the Act could be exercised to permit registration. This involved considering the applicant's claim of honest concurrent use, the significance of overseas use and reputation, and the interpretation of "other circumstances" in the context of trade mark registration.

The applicant argued for registration based on a presumption of registrability and the broad discretion afforded to the Registrar under subsection 44(3)(b) of the Act, which allows consideration of matters beyond those typically relevant to honest concurrent use. The applicant highlighted that the trade mark was first used in Australia in December 1998, and while Australian use was limited, extensive overseas use had created a spill-over effect of reputation into the Australian market. The applicant also contended that the trade mark formed part of its company name, and refusal of registration would cause significant inconvenience. The delegate considered previous case law on overseas reputation and the interpretation of "other circumstances" in light of legislative changes.