Re: Opposition by Conquip Holdings Pty Ltd to the registration of trade marks 594459(42) and 594460(42) - bennigan's grill and bennigan's - filed in the name of S & A Restaurant Corp

This matter concerned an opposition by Conquip Holdings Pty Ltd to the registration of two trade marks, "bennigan's grill" and "bennigan's", filed by S & A Restaurant Corp. The opposition was brought under the provisions of the *Trade Marks Act 1955* (Cth), as preserved by transitional provisions of the *Trade Marks Act 1995* (Cth). Conquip sought to oppose the registration on three grounds: that S & A Restaurant Corp had no intention to trade under the marks, that Conquip had acquired prior rights through use in Australia, and that Conquip's mark was so well known that the applicant's marks were likely to deceive or cause confusion. The decision was made by a Delegate of the Registrar of Trade Marks.

The legal issues before the Delegate were whether Conquip had established its grounds for opposition. Specifically, the Delegate had to determine if S & A Restaurant Corp lacked a bona fide intention to use the trade marks at the time of application, if Conquip's use of the name "bennigans" in Australia established prior rights superior to S & A Restaurant Corp's claims, and whether the use of S & A Restaurant Corp's marks would be likely to deceive or cause confusion given Conquip's use of a similar mark. The Delegate also considered whether S & A Restaurant Corp's long-standing registration of "bennigan's" without Australian use weakened its claim to an intention to use the new marks.

The Delegate reasoned that the onus was on Conquip to prove S & A Restaurant Corp's lack of intention to use the marks, and that the evidence presented by S & A Restaurant Corp, including declarations of intent to expand internationally and into Australia, rebutted any inference of abandonment. Regarding prior rights, the Delegate found that Conquip commenced use of "bennigans" after S & A Restaurant Corp's application date and in full knowledge of S & A Restaurant Corp's registered and pending trade mark rights, thus not establishing a superior claim. On the issue of deception or confusion, the Delegate determined that as Conquip had not commenced business or used its mark at the time of S & A Restaurant Corp's application, there was no likelihood of deception or confusion arising from Conquip's use at that point. Consequently, all grounds of opposition failed.

The opposition was dismissed, and the trade mark applications by S & A Restaurant Corp were permitted to proceed to registration. Costs were awarded to S & A Restaurant Corp, as the Delegate found no reason for costs not to follow the event, noting that Conquip had knowledge of S & A Restaurant Corp's existing and prospective trade mark rights when it commenced its own use.