Opposition by The H.D. Lee Company, Inc. to registration of trade mark application 1859254 (9) LeeBss in the name of wenxuan li

This decision concerns an opposition by The H.D. Lee Company, Inc. (the Opponent) to the registration of the trade mark application 1859254 (9) "LeeBss" by wenxuan li (the Applicant). The matter was heard by Nicholas Smith, a delegate of the Registrar of Trade Marks.

The legal issues before the delegate were whether the grounds of opposition raised by the Opponent, specifically under sections 42(b), 43, 44, and 60 of the *Trade Marks Act 1995* (Cth), had been established. The onus was on the Opponent to prove its case on the balance of probabilities, with the relevant date for determining the rights of the parties being 14 July 2017.

The delegate found that the Opponent had successfully established the ground of opposition under section 60 of the Act. This section requires the Opponent to demonstrate that another trade mark had acquired a reputation in Australia before the priority date of the application, and that the use of the applied-for trade mark would be likely to deceive or cause confusion due to that reputation. The delegate reasoned that the Opponent's "Lee" mark had been used globally for over 100 years and in Australia for over 40 years in relation to clothing and fashion accessories, acquiring a considerable reputation. The delegate found that the applied-for mark "LeeBss" incorporated the distinctive "Lee" element and, given the similarity between the marks and the nexus between the Opponent's goods (clothing and fashion accessories) and the Applicant's goods (eyewear), consumers familiar with the "Lee" mark would likely be caused to wonder whether the goods came from the same source or were licensed by the Opponent.

Consequently, the delegate refused to register the trade mark "LeeBss" and awarded costs to the Opponent.