Sally Paynter v Trellini Pty Ltd

This matter concerned an opposition by Mrs Sally Paynter to the registration of a trade mark by Trellini Pty Ltd. The opposition was heard by Deirdre O'Brien, a Hearing Officer delegated by the Registrar, on 17 February 2006. Mrs Paynter, the opponent, pressed grounds under sections 42(b), 43, 58, 59, and 60 of the *Trade Marks Act 1995*, with the onus on her to establish at least one of these grounds.

The primary legal issue before the Hearing Officer was whether the applicant, Trellini Pty Ltd, was the owner of the trade mark, as provided for in section 58 of the *Trade Marks Act 1995*. The opponent contended that her late husband, Mr Robert Paynter, had used the trade mark in relation to women's clothing from 1985 until his death. The applicant, however, argued that by December 2000, it believed the trade mark had been abandoned by Mr Paynter, citing his financial difficulties and cessation of business activities. The opponent disputed this claim of abandonment, asserting that the company identified by the applicant as a supplier was merely a minor one and that Mr Paynter's authorised user, Marketing Manoeuvres Pty Ltd, continued to trade.

The Hearing Officer found that while both parties agreed Mr Paynter was the first user of the trade mark in Australia for women's clothing, the applicant's assertion of abandonment was not sufficiently supported by evidence. The opponent argued, and the Hearing Officer accepted, that abandonment cannot be inferred from mere non-use or the liquidation of a company, citing *Riv-Oland Marble Co (Vic) Pty Ltd v Settef SpA*. Crucially, there was no evidence before the Hearing Officer demonstrating an actual intention by Mr Paynter to abandon the trade mark. Consequently, the opposition succeeded on the ground that the applicant was not the owner of the trade mark under section 58.

As the opposition was successful on the section 58 ground, the Hearing Officer did not consider the other grounds raised. The decision was to refuse the registration of trade mark application 932317, and costs were awarded against the applicant.