Slap N Tickle Pty Ltd v Noble Wines Pty Ltd

Slap N Tickle Pty Ltd (the applicant) sought to register a trade mark, which Noble Wines Pty Ltd (the opponent) opposed. The dispute concerned whether the applicant was the rightful owner of the trade mark, as the opponent alleged prior use of an identical mark on similar goods. The matter was heard by Iain Thompson, a Hearing Officer in the Trade Marks Hearings.

The central legal issue before the Hearing Officer was whether the applicant's claim to ownership of the trade mark, established by its application date of 19 March 2009, was displaced by the opponent's claims of prior use of the same trade mark in trade in respect of wines and non-alcoholic wines. This required the court to determine the respective rights of the parties based on use and application dates, as provided for under the relevant sections of the Act.

The Hearing Officer reasoned that ownership of a trade mark in Australia is established by either prior use in trade or the filing of an application to register, whichever occurs first. Applying this principle, the Hearing Officer found that the opponent had not established any grounds for opposition. Consequently, the trade mark application was permitted to proceed to registration one month from the date of the decision, subject to any appeal. The applicant, having been successful, was awarded its costs.