Opposition by Workinonit Pty Ltd to registration of trade mark application number 2427634 (25) -

This matter concerned an opposition by Workinonit Pty Ltd to the registration of trade mark application number 2427634. The dispute centred on whether the applicant for the trade mark lacked the requisite intention to use the mark in relation to the goods specified in the application at the relevant date. The decision was made by Louise Tuohy, Hearing Officer and Delegate of the Registrar of Trade Marks.

The primary legal issue before the Hearing Officer was to determine whether the Opponent had established a ground of opposition under section 59 of the *Trade Marks Act 1995* (Cth). This section requires an opponent to demonstrate that the applicant for a trade mark had no intention to use the mark in good faith in relation to the goods or services for which registration was sought at the time of the application. The Hearing Officer considered the onus of proof, which initially rests with the opponent to establish a prima facie case, after which it may shift to the applicant for rebuttal.

The Hearing Officer reasoned that establishing a ground under section 59 is generally difficult due to the subjective nature of intention and the presumptions that can arise from an application for registration. The Opponent's evidence, which consisted of a review of the Applicant's website showing the sale of activewear, was deemed insufficient to shift the evidentiary onus. The Hearing Officer noted that a lack of use in relation to a broader range of claimed goods does not automatically imply an absence of intention to use the trade mark. Considering the Applicant's current use and the absence of contrary evidence, the Hearing Officer was satisfied that the Applicant's approach to the specified goods at the relevant date was aligned with a genuine intention, not a speculative one.

Consequently, the Hearing Officer found that the Opponent had not established a ground of opposition under section 59. Accordingly, trade mark application number 2427634 was permitted to proceed to registration one month from the date of the decision, unless a notice of appeal was served. The Hearing Officer also awarded costs against the Opponent.