Re/Max, LLC v Resimax IP Pty Ltd

This matter concerned an opposition by Re/Max, LLC (the Opponent) to the registration of a trade mark application by Resimax IP Pty Ltd (the Applicant). The dispute arose from the Applicant's attempt to register a trade mark for certain services, which the Opponent contended should not be permitted. The decision was made by a Hearing Officer of the Trade Marks and Designs office.

The primary legal issue before the Hearing Officer was whether the Applicant was the owner of the trade mark, as required by section 58 of the *Patents Act 1990* (Cth). The Opponent argued that a predecessor company, Resimax Group Holdings Pty Ltd (RGH), had used a substantially identical trade mark for the same services prior to the Applicant's incorporation, and therefore the Applicant could not be the owner. The Applicant countered that the intention of the sole director was for the Applicant to own the intellectual property rights, and that RGH had intended to abandon ownership in favour of the Applicant.

The Hearing Officer considered the evidence filed by both parties, including declarations from various individuals. The relevant date for determining the rights of the parties was the filing date of the application, 28 March 2019. The Hearing Officer found that the grounds of opposition under sections 42, 44, 59, 60, and 62A of the Act were not pursued by the Opponent, and the ground under section 62 was treated as abandoned. The core of the decision rested on the interpretation of ownership under section 58, in light of the evidence regarding prior use and the intention of the controlling mind behind the companies.

Ultimately, the Hearing Officer refused to register the trade mark application. The Opponent was successful in its opposition, and the Hearing Officer ordered that costs follow the event, meaning the Applicant was to pay the Opponent's costs.