Opposition by Ting SONG to registration of trade mark application number 2410476 (class 16) -

This decision concerns an opposition filed by Ting SONG against the trade mark application number 2410476, known as SONGTIY, in Class 16, filed by YUXUAN YANG. The opposition was brought under section 52 of the *Trade Marks Act 1995* (Cth). The goods specified in the application included a range of stationery and art supplies, such as painting templates, crayons, sketch books, and greeting cards. The Opponent alleged grounds for opposition under sections 58, 59, and 62A of the Act.

The legal issues before the delegate were whether the Opponent had established any of the grounds for opposition. Specifically, the delegate had to determine if the Applicant was the owner of the trade mark (section 58), if the application was made in bad faith (section 62A), and if any other grounds were established. The Opponent bore the burden of proving these grounds on the balance of probabilities, with the relevant date for assessing rights being 4 December 2023.

The delegate found that the Opponent had established the ground of opposition under section 58, as the evidence demonstrated that a person other than the Applicant had used the trade mark SONGTIY in Australia in relation to "drawing books" and "painting templates" prior to the relevant date. While much of the Opponent's evidence was dated after the relevant date, reviews from Australian "verified purchasers" dated before the relevant date, and a "Date First Available" of 13 January 2022, were sufficient to establish prior use by a third party in relation to these specific goods. However, the delegate determined that the Opponent had not established prior use in relation to the remaining goods in Class 16, which were referred to as "Subset Goods," as these were not considered to be the "same kind of thing" as the Opponent's drawing books. The grounds under sections 59 and 62A were not established.

Consequently, the delegate refused the registration of the trade mark application number 2410476 in relation to the "Subset Goods" but found that the opposition was successful in relation to the "Conflicting Goods" (drawing books and painting templates) on the ground that the Applicant was not the owner of the trade mark for those goods.