Playgirl Keyclub Inc v Speedlight Pty Ltd

This matter concerned an opposition to a trade mark application brought by Playgirl Key Club, Inc. (the opponent) against Speedlight Pty Ltd (the applicant). The dispute arose from the applicant's attempt to register a trade mark, and the opponent alleged that the use of this mark would be contrary to law and that the applicant lacked the intention to use the mark in Australia. The hearing was conducted before a delegate of the Registrar of Trade Marks.

The court was required to determine two grounds of opposition: firstly, whether the trade mark's use would be contrary to law under section 42 of the relevant Act, specifically by contravening section 52 of the *Trade Practices Act 1974* (misleading or deceptive conduct); and secondly, whether the applicant had the requisite intention to use the trade mark in Australia, as required by section 59 of the Act. The opponent argued that the applicant's proposed use of the trade mark would be misleading or deceptive, given the established use of the "Playgirl" trade mark by the opponent in relation to publications and merchandise.

The delegate found that while there was no evidence of current use of the trade mark by the applicant in Australia, the opponent had provided sufficient evidence to cast doubt on the applicant's intention to use the mark. In the absence of any rebuttal from the applicant, the delegate was satisfied that the applicant lacked the necessary intention to use the trade mark in Australia. Consequently, the ground of opposition under section 59 was made out.

As the opponent had successfully established grounds for opposition, the application for registration of the trade mark was refused pursuant to section 55 of the Act. The opponent was awarded costs against the applicant.