Penta Hotel Holdings Ltd v Tomas Floden [Sec=Unclassified]

This matter concerned an opposition by Penta Hotel Holdings Ltd (the opponent) to an application for an international registration designating Australia (IRDA) by Tomas Floden (the holder). The opponent sought to prevent the registration of the IRDA on the grounds of opposition under section 44 of the *Trade Marks Act 1995* (Cth). The hearing officer was delegated to hear and decide the matter.

The primary legal issue was whether the applicant's trade mark was substantially identical with, or deceptively similar to, the opponent's registered trade mark, and whether the priority dates aligned appropriately, as required by section 44(1) of the Act. The opponent relied on its Protected International Trade Mark (PITM) registration number 1185697 for the word PENTA, which had a priority date of 24 July 2006, and covered services in Classes 35, 41, and 43.

The hearing officer noted that while the opponent had filed evidence in support of its opposition, this evidence had not been served on the holder because the holder had not provided an Australian address for service as required by regulation 17A.33. Despite this, the hearing officer proceeded to consider the opposition. However, the hearing officer ultimately concluded that the opponent had not established a ground of opposition under section 44.

Consequently, the hearing officer ordered that protection in Australia be extended in respect of all goods and services listed in the IRDA, one month from the date of the decision, subject to any appeal. No award of costs was made to the holder, given its lack of participation in the opposition proceedings.