Opposition by Jianda Xu to registration of trade mark application number 1998614 (class 11) – DIVEPRO – in the name of Jaunt Group Limited

This matter concerned an opposition by Jianda Xu to the registration of the trade mark application number 1998614, DIVEPRO, in class 11, filed by Jaunt Group Limited. The opposition was brought under various sections of the *Trade Marks Act 1995* (Cth), including sections 44, 58A, and 60. The decision was made by Katrina Brown, Hearing Officer and Delegate of the Registrar of Trade Marks.

The primary legal issues before the Hearing Officer were whether the applicant's trade mark DIVEPRO was substantially identical with or deceptively similar to the opponent's registered trade mark for similar goods, pursuant to section 44 of the Act, and whether other grounds of opposition under sections 58A and 60 were established. The Hearing Officer was required to determine the extent to which any grounds of opposition were established and decide whether to refuse registration, or register the trade mark with or without conditions or limitations.

The Hearing Officer found that the opponent had established the ground of opposition under section 44 in relation to a specific list of goods, including electric flashlights, electric torches, lamps, LED lighting apparatus, lanterns for lighting, electric lighting apparatus, safety lamps, searchlights, spot lights, ultraviolet ray lamps (not for medical purposes), and light diffusers. However, this ground was not established for diving lights or lights, lamps, torches, light apparatus, lanterns, or lighting for use in water. The grounds of opposition under sections 58A and 60 were not established.

Following the finding that section 44 was partially established, the applicant was given an opportunity to amend the specification of goods. The applicant agreed to this amendment, and the specification in class 11 was amended to exclude the goods for which the section 44 ground had been established. The amended specification now includes bicycle lights, automobile lights, and lighting installations for air vehicles, but still excludes diving lights and related water-use lighting. As a result, the trade mark DIVEPRO was permitted to proceed to registration. Both parties sought costs, but the Hearing Officer declined to award costs given that each party had achieved a measure of success.