Peter Hosking v TK Holdings (WA) Pty Ltd

This matter concerned an opposition by Peter Hosking (the Opponent) to the registration of trade mark application no. 2109949 by TK Holdings (WA) Pty Ltd (the Applicant). The Opponent sought to prevent the registration of the trade mark on various grounds, including that its use would be contrary to law. Evidence was filed by both parties, and the Opponent requested a hearing by written submissions. The decision was made by Nicholas Smith, Hearing Officer and Delegate of the Registrar of Trade Marks.

The primary legal issue before the Hearing Officer was whether the Opponent had established its grounds of opposition, specifically whether the use of the trade mark by the Applicant would be contrary to law under section 42(b) of the relevant legislation. A secondary issue arose concerning the confidentiality claims made by the Applicant over its evidence, which the Opponent argued prevented the Hearing Officer from properly considering the evidence. The Hearing Officer also considered the question of costs.

The Hearing Officer adopted the approach of a previous delegate in *Source Homeloans Pty Ltd v Coles Group Ltd*, holding that a claim of confidentiality over the entirety of the evidence would unduly hinder the determination of the opposition. The Hearing Officer stated that parties claiming confidentiality must identify specific information as sensitive. While acknowledging that some evidence might contain commercially sensitive matters, the Hearing Officer found that these did not require detailed discussion and that the evidence as a whole satisfied him on various points. Ultimately, the Hearing Officer was not satisfied that the use of the trade mark by the Applicant would be contrary to law, and therefore the Opponent failed to establish the ground of opposition under s 42(b).

The Opponent failed to establish any of the grounds of opposition. Accordingly, trade mark application no. 2109949 was permitted to proceed to registration, subject to a stay of one month or until any appeal was withdrawn or discontinued. The Applicant was awarded costs against the Opponent.