Pacific Satellite Holdings Ltd v Pacific Satellite (Aust) Pty Ltd

This matter concerned an opposition to a trade mark application brought by Pacific Satellite Holdings Ltd (the opponent) against Pacific Satellite (Aust) Pty Ltd (the applicant). The hearing officer, Ian Thompson, acting as a delegate of the Registrar of Trade Marks, heard the opposition in Sydney. The applicant did not appear at the hearing or file written submissions.

The primary legal issue before the hearing officer was whether the applicant was the owner of the trade mark, as provided for under section 58 of the *Trade Marks Act*. The opponent also raised grounds under sections 42, 60, and 62 of the Act, but the hearing officer considered these redundant given the strength of the section 58 argument.

The hearing officer reasoned that section 58 of the Act allows for opposition if the applicant is not the owner of the trade mark. This ground can be established if the opponent can demonstrate use of a trade mark in Australia that is identical or substantially identical to the opposed mark, used in respect of the same kind of goods or services, and that this use predates the applicant's first use or priority date. The evidence showed that the opponent had used an identical trade mark in Hong Kong since 1990 and commenced exporting goods bearing this mark to Australia in 1996 for distribution and sale by the applicant. This evidence, including receipts and revenue figures, was considered sufficient to establish the ground under section 58, aligning the circumstances with those in *Settef v. Riv-Oland Marble Co (Vic) Pty Ltd*.

Consequently, the hearing officer refused to register the trade mark application. As the opponent had succeeded in its opposition, the hearing officer ordered that the applicant pay the opponent's costs.