Peter Lynch v CDM Holdings Pty Ltd and Knockout Events Australia Pty Ltd

This matter concerns an opposition to the registration of a trade mark by Peter Lynch against CMD Holdings Pty Ltd and Knockout Events Australia Pty Ltd. The decision under review addresses the same trade mark and applicants as a prior decision by a Registrar's delegate, where there was a similar lack of evidence presented.

The primary legal issue before the court was whether the trade mark was inherently adapted to distinguish the applicant's goods and services from those of other traders, as required by section 41 of the relevant Act. This involved considering the "presumption of registrability" under section 33 of the Act and how it interacts with section 41, particularly in light of amendments made by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012. The court also had to determine the onus of proof on the opponent in establishing grounds for opposition under section 41.

The court reasoned that while amendments to section 41 shifted the onus onto the Registrar during examination, they did not alter the standard for registrability. The delegate applied the principle that any doubt regarding a mark's capacity to distinguish should be resolved in the applicant's favour. The court referred to established judicial tests, including the analysis in *Clark Equipment Company v Registrar of Trade Marks* and *Cantarella Bros Pty Limited v Modena Trading Pty Limited*, which require consideration of the "ordinary signification" of the words in the trade mark and the likelihood of other traders legitimately needing to use them. The opponent bore the onus of satisfying the court that the mark was not sufficiently adapted to distinguish.

As the opposition was not established, the court decided to register the trade mark. The application was to proceed to registration one month from the decision date, unless a notice of appeal was filed, in which case registration would be stayed pending the outcome of the appeal.