Retail Royalty Company v Aloe Vera of America, Inc

The proceedings involved an opposition by Retail Royalty Company against the registration of three trade mark applications by Aloe Vera of America, Inc. The opposition was based on grounds including sections 42(b), 44, and 60 of the relevant Act. The Hearing Officer, Bianca Irgang, was required to determine whether any of these grounds of opposition were established in relation to all the goods and services specified in the opposed trade mark applications.

The primary legal issue before the Hearing Officer was whether the applicant's trade marks were substantially identical with, or deceptively similar to, a registered trade mark owned by the opponent, and whether this registered trade mark had an earlier priority date. Specifically, the court considered section 44 of the Act, which mandates the rejection of an application if the applicant's trade mark is substantially identical or deceptively similar to a registered trade mark for similar or closely related goods or services, and the priority date of the registered trade mark is earlier than that of the applicant's trade mark.

The Hearing Officer found that the opponent had successfully established the ground of opposition under section 44. This was based on the opponent's ownership of trade mark registration no. 1112956, which had priority dates earlier than those of the opposed trade mark applications. The opponent's registered trade mark covered a wide range of goods and services across Classes 3, 18, and 25, including cosmetics, toiletries, bags, luggage, clothing, footwear, and accessories, as well as retail store services. The Hearing Officer concluded that the onus on the opponent to prove its case under section 44 had been met.

Consequently, the Hearing Officer ordered the refusal to register the trade mark applications numbered 1506390, 1506397, and 1506400. The Hearing Officer also awarded costs against the applicant in accordance with the usual practice that costs follow the event.