Opposition by Victor Liang to registration of trade mark application number 2339533 (classes 25 and 35) – STAPLE SWIM – in the name of FAYT The Label Pty Ltd

This matter concerns an opposition by Victor Liang (the Opponent) to the registration of trade mark application number 2339533, STAPLE SWIM, in the name of FAYT The Label Pty Ltd (the Applicant), for goods in class 25 and services in class 35. The decision was made by Debrett Lyons, a delegate of the Registrar of Trade Marks.

The legal issues before the delegate were whether the grounds of opposition, nominated under sections 44 and 58A of the relevant Act, had been established. The Opponent bore the onus of proof, which was to be assessed on the balance of probabilities. The delegate noted that as the application was not accepted subject to the provisions of s 44(4), the ground of opposition under s 58A was inapplicable. The relevant date for determining the rights of the parties was the filing and priority date of the trade mark application.

The Opponent claimed trade mark rights in the word STAPLE, asserting continuous use in Australia since 2006 and registration for women's clothing in 2009, establishing a strong reputation such that the Applicant's use of STAPLE SWIM was likely to deceive or cause confusion. The delegate considered evidence filed by both parties, including declarations and written submissions, and found that the material did not alter the assessment of the grounds of opposition. Ultimately, the delegate accepted trade mark number 2339533 in respect of qualified class 35 services. As the Opponent had partly established a ground of opposition and both parties had a measure of success, no award was made regarding costs.