Nyx, Los Angeles, Inc v Jack Gance and Mario Verrocchi

This matter concerned an opposition to a trade mark application brought by Nyx, Los Angeles, Inc. against Jack Gance and Mario Verrocchi. The applicant sought to register a trade mark, and the opponent objected to this registration. The decision was made by Jock McDonagh, a Hearing Officer in the Trade Marks Hearings.

The primary legal issue before the Hearing Officer was whether the opponent had established a ground for opposing the registration of the applicant's trade mark. This involved determining if the applied-for mark was substantially identical to the opponent's existing mark, whether the goods for which the marks were to be registered were of the same kind, and whether the opponent had used its mark prior to the filing date of the application.

The Hearing Officer found that the competing trade marks were substantially identical and that the goods in question were of the "same kind of thing". Crucially, the Hearing Officer was also satisfied that the opponent had used its mark prior to the filing date of the applied-for mark. Based on these findings, the Hearing Officer concluded that the ground of opposition had been established.

Consequently, pursuant to section 55 of the relevant Act, the Hearing Officer refused to register the trade mark application. The Hearing Officer also awarded costs against the applicant in favour of the opponent, directing that the applicant pay the opponent's costs in accordance with the Official Scale.