Petesal Enterprises Pty Ltd v Grayson's International Pty Ltd

This decision concerns an opposition filed by Petesal Enterprises Pty Ltd against the trade mark application number 2248940, for the mark LEAFSCREENER (fig.), in class 6, by Grayson’s International Pty Ltd. The opposition was brought before a delegate of the Registrar of Trade Marks.

The legal issues before the delegate were whether the opposition grounds under sections 41 and 58 of the *Trade Marks Act 1995* (Cth) were established. Section 58 concerns whether the applicant is the owner of the trade mark, requiring proof of an earlier identical or substantially identical trade mark used in respect of goods of the same kind, and that a person other than the applicant has an earlier claim of ownership based on prior use. Section 41 addresses whether the trade mark is capable of distinguishing the applicant's goods from those of other persons, considering its inherent distinctiveness and actual use.

The delegate found that the opponent bore the onus of establishing the grounds of opposition on the balance of probabilities, with the relevant date for determination being the filing date of the application. Regarding section 58, the opponent alleged that the applicant was not the designer or inventor of the mark and lacked rights, citing a design award to a third party and the applicant's website. However, no evidence was filed by the opponent to support these allegations, leading to the dismissal of this ground. For section 41, the delegate considered the ordinary signification of "leafscreener" in the context of the applicant's goods, which are metallic building components including gutter protection parts. While acknowledging that "leafscreener" might be considered descriptive, the delegate found that the trade mark, as a composite mark featuring the word "leafscreener" shaped along the outline of a leaf with an interior grid, was capable of distinguishing the applicant's goods. This was due to the combination of the word and the device element, which was not likely to be desired by other traders for similar goods.

Consequently, neither ground of opposition was established. The delegate ordered that the trade mark may proceed to registration subject to the resolution of any pending oppositions and the expiry of the appeal period. Costs were awarded against the opponent.