Simon Dodd v Eden RS Pty Ltd

This matter concerned an opposition to the registration of a trade mark by Simon Dodd (the Opponent) against Eden RS Pty Ltd (the Applicant). The dispute arose from the Applicant's application to register a logo that the Opponent claimed was created by Meriton Group in 2003 for use in relation to a residential complex known as Eden at 6-10 Romsey St Waitara NSW. The Opponent, appointed by the SP72648 Owners Corporation, alleged that the Applicant, whose director was the building manager of the property, had been using the logo for its own real estate business without the Owners Corporation's approval and had misrepresented itself as the creator of the logo in its application. The decision was made by a delegate of the Registrar of Trade Marks.

The legal issues before the delegate were whether the grounds of opposition raised under sections 58, 62(b), and 62A of the relevant legislation had been established. Specifically, the delegate had to determine if the Applicant's conduct fell short of acceptable commercial behaviour, as contemplated by section 62A, and if any other grounds of opposition were proven. The delegate was required to decide whether to refuse or register the trade mark, taking into account the evidence and submissions presented.

The delegate found that the Opponent had established the ground of opposition under section 62A. The reasoning was that the Applicant's use of the logo, for which it was informed it held no copyright and had done so beyond any implied licence, created an inference of connection or association with the property. This conduct was deemed to fall short of the standards of acceptable commercial behaviour expected of reasonable and experienced persons. Consequently, the delegate refused to register the trade mark. The Applicant was ordered to pay the Opponent's costs.