Paige Stainless Pty Ltd v Aco Polycrete Pty Ltd

This matter concerned an application to register the trade mark "HEELGUARD" in Australia, brought by Paige Stainless Pty Ltd (the applicant) and opposed by Aco Polycrete Pty Ltd (the opponent). The dispute centred on whether the opponent had established grounds for opposing the registration of the trade mark. The decision was made by Iain Thompson, a Hearing Officer in the Trade Marks Hearings.

The legal issues before the court were whether the applicant's trade mark application should be refused registration, and if so, on what grounds. Specifically, the Hearing Officer was required to consider the grounds of opposition raised by the opponent, which related to the prior use and ownership of the "HEELGUARD" trade mark in Australia.

The Hearing Officer's reasoning focused on the evidence presented by the opponent, particularly the declaration of David Anthony Eisenhuth, a director of the applicant. This evidence established that the "HEELGUARD" trade mark was authored by ACO UK in or about 1989 and introduced into the Australian market by ACO UK around the same time. ACO UK had sold grate products under this trade mark in Australia until 1993, when ACO Australia commenced trading in its own capacity. The evidence also demonstrated that ACO UK was the predecessor in business and title to the "HEELGUARD" trade mark in Australia, and that both entities belonged to the same multinational group. Based on this evidence, the Hearing Officer concluded that the opponent had established grounds for opposing the registration.

The Hearing Officer refused to register the trade mark application. As the opponent was successful in its opposition, the Hearing Officer awarded costs against the applicant on the official scale.