Peet Limited v Feldbay Pty Ltd

This decision concerns an application to register a trade mark, application number 1381344, by Peet Limited (the Applicant) and opposition by Feldbay Pty Ltd (the Opponent). The Registrar of Trade Marks was required to decide whether to register the trade mark.

The legal issue before the Registrar was whether to register the trade mark, having regard to the grounds on which the application was opposed. Specifically, the Registrar considered the extent to which the grounds of opposition had been established and whether the specified goods and/or services for which registration was sought were appropriate.

The Registrar reasoned that while the Applicant's proposed trade mark was unlikely to cause aural confusion or deception in relation to the services it performs or intends to perform, namely "the market trade of residential derivative products," the current specification of services was broad. The Registrar noted that the Opponent manages real estate investment funds, but these were not advertised on radio or television. Ultimately, the Registrar refused to register the trade mark as it stood but indicated that the application could proceed to registration if the Applicant amended its specification of services to "the market trade of residential derivative products" within two weeks. The Registrar also ordered that the Opponent was entitled to its costs.