Shawky & Yehia El Hgar v Sam Ashry

This matter concerns an opposition by Shawky and Yehia El Hgar (the "Hgars") to the registration of a trade mark application, "MR EL OMDA AND DEVICE," filed by Sam Ashry. The application was initially filed by Ali Attia and later assigned to Mr Ashry. The Hgars had previously filed their own trade mark application, which was accepted and registered after an opposition by Mr Ashry's wife, who was involved in a joint family business with Mr Ashry. The present opposition arose after the Hgars' trade mark application was found to be deceptively similar to Mr Ashry's application, but Mr Ashry's application was permitted to proceed under section 44(4) of the *Trade Marks Act 1995* (Cth) due to evidence of prior use.

The primary legal issues before the delegate of the Registrar of Trade Marks were whether the trade mark application should be refused registration on the grounds of opposition under sections 60 and 62 of the *Trade Marks Act 1995* (Cth). Section 60 concerns a conflicting and deceptively similar trade mark that has acquired a reputation such that its use would be likely to deceive or cause confusion. Section 62 provides that registration may be opposed if the application or a supporting document was amended contrary to the Act, or if the Registrar accepted the application based on false representations or evidence.

The delegate found the evidence regarding section 60 difficult to discern with confidence and therefore preferred to determine the opposition under section 62. The delegate noted that the application had been accepted under section 44(4) based on the finding that the trade mark had been used prior to the filing date of the Hgars' application. However, upon examination of the evidence presented during the opposition, it became clear that the trade mark actually in use at the critical date was "EL OMDA," which was significantly different from the "MR EL OMDA AND DEVICE" logo for which registration was sought. The delegate concluded that Mr Ashry had either made an innocent misstatement or failed to fully disclose relevant facts to the Trade Marks Office, leading to the acceptance of the application under section 44(4) based on a false premise. Consequently, the ground of opposition under section 62 was established.

As the ground of opposition under section 62 was established, the delegate refused to register the trade mark. In the circumstances of the case, no order was made as to costs.