Oliver Thone v Jimik Investments Limited

This matter concerned an application by Jimik Investments Pty Limited (the applicant) to register a trade mark for a chemical solution, which was accepted and advertised. Oliver Thone (the opponent) lodged a notice of opposition. The applicant subsequently applied for a deferral of the hearing of the opposition, citing a marketing agreement with Gerd Thone (the opponent's father) which stipulated that disputes arising from the agreement must be resolved through arbitration. The applicant argued that having served notice of dispute under this agreement, the matter should proceed to arbitration, and that the opponent, as the son of Gerd Thone, lacked the jurisdiction to pursue the opposition.

The delegate of the Registrar of Trade Marks was required to determine whether to grant the applicant's request for a deferral of the hearing of the substantive opposition proceedings. This involved considering the applicant's argument that a contractual dispute with a third party necessitated arbitration, and the opponent's counterarguments regarding the limited discretion of the Registrar to defer hearings and the irrelevance of the marketing agreement to the trade mark opposition. The delegate also had to consider the opponent's standing to bring the opposition.

The delegate reasoned that the opponent had a clear locus standi to oppose the trade mark registration under section 52 of the *Trade Marks Act 1995*. Furthermore, the delegate found that regulation 5.14 of the *Trade Marks Regulations 1995* provided very limited discretion to defer a hearing, with any residual discretion residing in regulation 5.16, which allows for directions regarding procedure. The delegate concluded that the applicant had not provided sufficient reason to exercise this limited discretion. The marketing agreement was between the applicant and Gerd Thone, not the opponent, and did not mention trade marks. Therefore, a contractual dispute over payments between these parties was not a sufficient basis to suspend trade mark opposition proceedings before the Registrar, who is the appropriate forum. The delegate also noted the requirement under section 204 of the Act for the Registrar to act as soon as practicable.

The application for deferral of the hearing was refused. The opponent was awarded costs relating to the deferral hearing, to be taxed at the official scale.