Sara Lee Corp v Bali Blue Pty Ltd

This matter concerned an opposition by Sara Lee Corporation (the opponent) to an Australian trade mark application by Bali Blue Pty Ltd (the applicant) for the word "BALI" in class 25, relating to clothing. The opposition was heard by a delegate of the Registrar of Trade Marks.

The primary legal issues before the delegate were whether the grounds of opposition under sections 58 and 60 of the relevant Act were established. Section 58 concerns opposition on the basis that the applicant is not the owner of the trade mark, requiring proof that the opponent's mark and the subject mark are substantially identical, the goods are of the same kind, and the opponent's use predates the applicant's claim to ownership. Section 60 relates to opposition on the grounds that the applicant's trade mark is deceptively similar to a trade mark that the opponent has used or acquired a reputation in Australia.

The delegate considered evidence of the opponent's use of the "BALI" trade mark since 1936, primarily on brassieres and intimate apparel, with continuous use in Australia since 1986. However, the delegate found the sales figures to be modest and the promotional materials, while of high quality, did not demonstrate sufficient public exposure or awareness of the trade mark in Australia to establish the necessary reputation for the purposes of section 60. The delegate noted that while invoices showed sales of brassieres, they did not explicitly confirm the use of the "BALI" trade mark on those goods. Consequently, the delegate concluded that neither section 58 nor section 60 grounds of opposition were established.

The opposition was unsuccessful, and the delegate directed that the trade mark application could proceed to registration, subject to payment of the registration fee, unless an appeal was filed. No order for costs was made against the opponent.