Opposition by SawStop, LLC to extension of protection under regulation 17A.33 of the Trade Marks Regulations 1995 (Cth) of trade mark number 2009777 (International Registration Number 1466799) (class 7) - PCS - in...

This matter concerned an opposition by SawStop, LLC to the extension of protection of trade mark number 2009777 (International Registration Number 1466799) in class 7, for which the applicant was PCS. The opposition was brought under regulation 17A.33 of the *Trade Marks Regulations 1995* (Cth). The decision was made by Hearing Officer Timothy Brown.

The legal issues before the Hearing Officer were whether the grounds of opposition, including those relating to ownership under section 58 of the *Trade Marks Act 1995* (Cth) and passing off under section 18 of the *Australian Consumer Law*, had been established. The opponent contended that it was the first to use the mark PCS in Australia in relation to the goods in question, thereby challenging the applicant's ownership.

The Hearing Officer found that the opponent had failed to establish any of the nominated grounds of opposition. While the opponent provided evidence of its use of "PCS" as an acronym for "Professional Cabinet Saw" in the United States since 2008 and some sales and promotional materials in Australia from 2013 onwards, this evidence was considered limited. Crucially, the invoices presented showed "PCS" as part of a model number, "PCS31230-AU," in close proximity to the words "Professional Cabinet Saws" and a more prominent "SAWSTOP" trade mark. The Hearing Officer concluded that the opponent had not established that the applicant was not the owner of the trade mark or that the use of the trade mark would amount to passing off.

Consequently, the Hearing Officer ordered that the extension of protection to trade mark number 2009777 may proceed one month from the date of the decision, unless an appeal was filed. The opponent was ordered to pay the costs of the proceedings.