Oregon Brewing Company v Thira Holdings Pty Ltd

This matter concerned an opposition to the registration of a trade mark, brought by the Opponent against Beverage Holdings Pty Limited (later assigned to Thira Holdings Pty Limited) in the Trade Marks Hearings office. The Opponent sought to oppose the registration of the trade mark on grounds including those under sections 42, 58, and 60 of the relevant Act. The Hearing Officer, Debrett Lyons, indicated that only one ground needed to be established on the balance of probabilities for the opposition to succeed, and ultimately focused on the ground under section 58.

The central legal issue was whether the applicant, Beverage Holdings Pty Limited, was the owner of the trade mark at the time of the application. To succeed on this ground, the Opponent was required to demonstrate that a person or persons other than the applicant had first used the trade mark in Australia for goods of the same kind as those covered by the application, either before the application's filing date or before the applicant's first use, whichever was earlier. The case law under section 58 requires the opponent to establish prior use of the trade mark for "the same kind of thing" as the goods specified in the application.

The Hearing Officer found that the Opponent had established prior use of the trade mark ROGUE in Australia in relation to beer. Evidence was presented showing the Opponent's use of the trade mark since 1999, including participation in beer competitions and the Australian International Beer Awards, and sales of various beer products marketed under the ROGUE brand. The earliest evidence of sales to an Australian distributor, Innspire Pty Ltd, dated from August 2008. Based on this evidence, the Hearing Officer concluded that the Opponent had established the ground of opposition under section 58.

Consequently, the Hearing Officer refused to register the trade mark application. As the Opponent had succeeded in its opposition, it was awarded its costs. The Hearing Officer ordered that these costs be paid by Thira Holdings Pty Limited, as the assignee of the application, on the official scale.