Oliver Thone v Jimik Investments Pty Ltd

This matter concerned an opposition by Oliver Thone to the registration of a trade mark application by Jimik Investments Pty Ltd. The trade mark in question was an "R" device, sought for a one-part chemical solution for mixing with cement and soil. The opponent, Mr Thone, is the son of Mr Gerd Thone, the inventor of a product called "Renolith," a concrete additive. Mr Thone had previously entered into a Distribution & Marketing Agreement with Jimik, which Jimik alleged granted it rights to market and distribute Renolith and to take out trade mark applications. Mr Thone purported to terminate this agreement due to unpaid royalties, a termination Jimik disputed. The opposition was heard by a delegate of the Registrar of Trade Marks.

The delegate was required to determine several grounds of opposition, including those based on sections 41, 42(b), 59, and 62 of the *Trade Marks Act 1995*. Specifically, the opposition contended that the applied-for trade mark lacked the capacity to distinguish (s.41), that its use would be contrary to law (s.42(b)), that Jimik had no lawful intention to use the mark (s.59), and that the application was false in material particulars (s.62). The opponent argued that Jimik was merely a licensee under the agreement and lacked the proprietary rights to register the trade mark in its own name, particularly given the perceived nexus between the "R" device and the Renolith product.

The delegate reasoned that while the Distribution & Marketing Agreement granted Jimik rights to market and distribute Renolith and included intellectual property rights related to the product, it did not specifically contemplate the "R" device. The delegate found that the agreement was silent on the ownership of intellectual property created by Jimik in its own right. Crucially, the delegate noted a lack of evidence demonstrating the use of the "R" device in association with the Renolith product, and that the specification of goods in the application was generic and not exclusively tied to Renolith. Therefore, the delegate was not satisfied that Jimik lacked a lawful intention to use the trade mark under section 59, nor that the application was false under section 62. The delegate also found the "R" device to be inherently adapted to distinguish, satisfying section 41, and dismissed the section 42(b) argument.

Consequently, the delegate dismissed the opposition. Jimik Investments Pty Ltd was directed to pay the opponent's costs. The application was permitted to proceed to registration subject to the expiry of six weeks from the decision date, or until any appeal was decided or discontinued.