Shahin Enterprises Pty Ltd v Exxonmobil Oil Corporation

Shahin Enterprises Pty Ltd ("the opponent") filed a notice of opposition against an application by Exxonmobil Oil Corporation ("the applicant") to register a trade mark. The opposition was based on seven grounds under the *Trade Marks Act 1995* (Cth), including that registration would prejudice the opponent's business. The opponent filed evidence in support of its opposition, but the applicant did not. At the hearing, the opponent elected to rely solely on written submissions concerning the ground of opposition under section 58 of the Act, which relates to the applicant not being the owner of the trade mark.

The legal issue before the Hearing Officer was whether the opponent had established that the applicant was not the owner of the trade mark. To succeed on this ground, the opponent was required to demonstrate prior use of the trade mark in Australia before the applicant's priority date. This required showing that the applied-for trade mark was substantially identical to an older trade mark and applied to the same kind of goods, and that the prior use was public use in Australia of the mark as a trade mark. The opponent also argued it was the author of the mark, having first adopted it with the intention to use it as a badge of origin.

The Hearing Officer dismissed the remaining grounds of opposition as the opponent did not appear at the hearing to argue them. Regarding the section 58 ground, the opponent submitted evidence of market testing, registration of business names, and design of signage incorporating the words "on the run" between January 1999 and the priority date, with signage commencing use from at least 19 July 1999. The applicant contended that these actions did not constitute public trade mark use, or if they did, they were not in respect of the same kind of goods. The Hearing Officer found that authorship and intention alone, without actual prior use, were insufficient to establish a greater claim to ownership. Applying the principles from *Re Hicks’ Trade Mark* and *Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2)*, the Hearing Officer was not satisfied that the opponent had established prior public use of its mark.

Consequently, the Hearing Officer dismissed the section 58 ground of opposition and, having dismissed all grounds, dismissed the opposition in its entirety. The applicant was awarded costs, and the trade mark application was permitted to proceed to registration one month from the decision date, subject to any appeal.