Pewter Products Pty Ltd v Kirra Collectables Pty Ltd

This decision concerns an opposition by Kirra Collectables Pty Ltd to the registration of the trade mark KIRRA, applied for by Pewter Products Pty Ltd. The application was accepted for a range of pewter ware, including drinking vessels, trophies, and decorative articles. The opponent, Kirra Collectables Pty Ltd, opposed the registration on grounds that were not fully detailed but did not specifically refer to a conflict with a pending application in its own name. Crucially, the opponent failed to serve any evidence in support of its opposition, despite being granted extensions of time.

The legal issues before the delegate of the Registrar of Trade Marks were threefold: firstly, whether the goods specified in Pewter Products' application were "goods of the same description" as those covered by Kirra Collectables' earlier application, thereby engaging section 33 of the Trade Marks Act 1955; secondly, if section 33 applied, whether the provisions of section 34, concerning honest concurrent use, were available to allow registration; and thirdly, whether the trade mark KIRRA itself was registrable, given the opponent's argument that it is a geographical name.

The delegate reasoned that while the opponent had raised issues outside the scope of its Notice of Opposition and without supporting evidence, section 50 of the Act permitted consideration of such matters. The delegate noted that the word KIRRA had been in use for fifteen years prior to the application and that its geographical significance was not major, nor was it adopted to indicate origin. Therefore, the delegate considered it appropriate to apply section 24(2) and deem the mark distinctive. Regarding the conflict under section 33, the delegate found that while general pewter domestic ware was not of the same description as photo frames, the broader scope of Pewter Products' application, including trophies, plaques, and tourist articles, created an unidentifiable scope that would likely include goods of the same nature, use, or trade channels as the opponent's photo frames. However, the delegate also found that the applicant's honest use of the mark was restricted to a narrower set of goods than claimed, thus limiting the availability of section 34.

Ultimately, the delegate allowed Pewter Products Pty Ltd to amend its application to more precisely define the goods, excluding any items that were or incorporated photo frames or menu or card holders. With this amendment made, the opposition was dismissed, and costs were awarded to the applicant.