Sharon Booker v Claire Solomon

This matter concerns an opposition to a trade mark application filed by Sharon Booker (the Opponent) against Claire Solomon (the Applicant). The dispute arose after the Applicant's trade mark was advertised for acceptance in the Australian Official Journal of Trade Marks. The Opponent filed a Notice of Intention to Oppose and a Statement of Grounds and Particulars, which included a ground of opposition under section 60 of the Act. The Applicant subsequently filed a Notice of Intention to Defend. The decision was made by Nicholas Smith, a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the Opponent had established its ground of opposition under section 60 of the Act. This section requires proof that the Opponent has a reputation in a particular mark. The delegate also had to consider the extent to which any ground of opposition had been established, having regard to the evidence and submissions filed by the parties.

The delegate found that the Opponent had failed to discharge the onus of proof. The evidence filed by the Opponent was not in the approved form of a declaration and was therefore not considered. Furthermore, the material that was filed did not demonstrate any use of a trade mark by the Opponent in Australia, nor did it establish any reputation. As the Opponent had filed no evidence and no submissions, the delegate concluded that the ground of opposition under section 60 had not been established. The delegate also awarded costs against the Opponent in favour of the Applicant. The trade mark application was permitted to proceed to registration, subject to a one-month waiting period and any potential appeal.