Opposition by XIAMEN XIAOYUYAO TRADING Co., Ltd to registration of trade mark application 2364242 (11) –

This matter concerned an opposition by XIAMEN XIAOYUYAO TRADING Co., Ltd (the Opponent) to the registration of trade mark application number 2364242 by the Applicant. The Opponent filed a Statement of Grounds and Particulars alleging opposition on grounds including sections 42(b), 58, 60, and 62A of the relevant legislation. The Applicant filed a Notice of Intention to Defend, and the matter proceeded to a decision based on the written record.

The legal issues before the delegate of the Registrar of Trade Marks included whether the Opponent had established its nominated grounds of opposition, particularly the ground under section 62A concerning bad faith. The delegate was required to consider the evidence filed by both parties, including claims of confidentiality, and determine if the onus on the Opponent to prove its case had been met.

The delegate reasoned that the onus rested on the Opponent to establish bad faith, a serious allegation that would not be found lightly. The delegate found that the Opponent had provided no evidence to suggest the Applicant was aware of the Opponent or its limited reputation in Australia at the time of the application. Furthermore, the Applicant had provided evidence of prior use and registration in other jurisdictions. Consequently, the delegate was not satisfied that the Applicant's conduct was unscrupulous, underhanded, or unconscientious, and therefore the ground under section 62A was not established. As the Opponent failed to establish any of its grounds of opposition, the trade mark application was permitted to proceed to registration. The Applicant was awarded costs against the Opponent, following the general rule that costs follow the event.