Roshtech Pty Ltd v Kyl Newton

Roshtech Pty Ltd (the applicant) sought to register the trade mark VIPC. The opposition was brought by a party holding a registered trade mark for VIPC. The dispute concerned whether the applicant's proposed use of the trade mark for certain goods and services would infringe the opponent's existing rights. The matter was heard by Tracey Berger, Delegate of the Registrar of Trade Marks.

The primary legal issues before the court were whether the applicant's trade mark application should be opposed under sections 44, 58, 62(b), and 62A of the *Trade Marks Act 1995* (Cth). Section 44 concerns the likelihood of confusion with an earlier trade mark, section 58 deals with the registration of a trade mark that is identical or deceptively similar to a registered trade mark, section 62(b) relates to the registration of a trade mark that would be contrary to law, and section 62A addresses the registration of a trade mark that is the same or deceptively similar to a trade mark registered by another person for the same or similar goods or services.

The Delegate found that the ground of opposition under section 62A was unsuccessful. However, the opposition was successful under section 44 in relation to certain goods and services. Applying the principle that an application must fail in its entirety if it fails in one respect, the Delegate initially considered refusing the application as a whole. Nevertheless, the Delegate exercised discretion to allow the applicant to amend the specification of goods and services. Following the amendment, the Delegate directed that the application, as amended, could proceed to registration. Costs were declined as both parties had achieved a degree of success.