Real Estate Institute NSW Ltd v Hollard Insurance Company Pty Ltd

This matter concerned an application by Hollard Insurance Company Pty Ltd (Hollard) to remove a registered trade mark from the Register and an opposition by Hollard to the registration of an application trade mark. The Real Estate Institute of NSW Ltd (REI) was the respondent in the removal application and the applicant in the opposition. The proceedings were heard by Jock McDonagh, Hearings Officer, at the Trade Marks Hearings.

The legal issues before the Hearings Officer included whether to admit certain evidence (Grainger 2) into the opposition proceedings, whether the grounds for removal of the registered trade mark in Class 35 had been established, and whether the grounds for opposing the registration of the application trade mark in Class 35 and Class 36 had been established. Specifically, the opposition grounds related to whether the applicant was the owner of the trade mark and whether the applicant intended to use the trade mark.

The Hearings Officer determined that Grainger 2 should be considered as evidence in both the removal and opposition phases, deeming it overly technical to exclude it from the opposition phase. REI conceded the removal of its registered trade mark in Class 35 and the opposition to its application trade mark in Class 35. However, the Hearings Officer found that the grounds for removal had not been established in relation to Class 36 services, and therefore refused to remove the registered trade mark in Class 36. Regarding the opposition to the application trade mark, the Hearings Officer found that Hollard had not established the grounds of opposition in relation to Class 36 services, but had established them in relation to Class 35 services. Consequently, the application trade mark was refused registration in Class 35 but permitted to proceed to registration in Class 36, subject to any appeal. Costs were awarded against Hollard.