Palmlake Investments Pty Ltd v Mister Rollershutter Pty Ltd

This matter concerned an application to register a trade mark, opposed by Mister Rollershutter Pty Ltd. The applicant, Palmlake Investments Pty Ltd, did not appear at the hearing. The opponent's opposition was based on section 58 of the *Trade Marks Act* (the Act), which allows for opposition on the ground that the applicant is not the owner of the trade mark.

The primary legal issue before the Registrar of Trade Marks was whether the applicant was the owner of the trade mark in question. To succeed on this ground, the opponent was required to demonstrate that it had used a trade mark substantially identical to the applied-for mark, in relation to the same kind of goods or services, prior to the priority date of the application. The Registrar noted that there was no evidence from the applicant regarding its use of the trade mark, meaning the relevant date for assessing ownership was the filing date of the opposed application, 1 June 2005.

The Registrar found that a company named Allenswood Holdings Pty Ltd had used the trade mark from approximately 1989 until three months before its deregistration in July 1999. The opponent presented evidence that it purchased the trading name "MR ROLLERSHUTTER," the associated logo, and a telephone line from Allenswood in March 1999 for $100. The Registrar agreed with the opponent's argument that this transaction effectively transferred the business name, logo, and the goodwill subsisting in the trade mark. The Registrar accepted that goodwill is an intangible asset arising from a business's reputation and customer relations, and that the opponent had used the trade mark from the date of purchase until the filing of the opposed application.

Consequently, the Registrar was satisfied that the opponent had established its ground of opposition under section 58 of the Act. Accordingly, the Registrar refused to register the trade mark and awarded costs against the applicant in favour of the opponent.