Southcorp Brands Pty Ltd v Can Industries Pty Lt

This decision concerns an opposition by Southcorp Brands Pty Ltd (the Opponent) to a trade mark application by Can Industries Pty Ltd (the Applicant). The dispute centred on whether the Applicant intended to use the trade mark in Australia in relation to the services specified in its application.

The court was required to determine whether the Opponent had established a ground for opposition under section 59 of the relevant Act, which pertains to an applicant's intention to use a trade mark. Specifically, the court had to consider whether the Applicant intended to use, or authorise the use of, the trade mark in Australia in relation to the nominated services.

The court reasoned that while the Opponent bears the onus of establishing a ground for opposition, this is subject to the qualification that the Opponent must first demonstrate a prima facie case of lack of intention to use the trade mark. Once a prima facie case is established, the evidentiary onus shifts to the Applicant. The court noted that subsequent actions or inactions by the Applicant can shed light on their intentions at the relevant priority date. In this instance, the Opponent presented evidence of the Applicant's lack of response to settlement offers and absence of submissions, which, in conjunction with the Applicant's own evidence, was deemed sufficient to establish a prima facie case. Applying the principles from *Jones v Dunkel*, the court drew an inference that the Applicant's failure to provide evidence demonstrating an intention to use the trade mark in relation to the nominated services indicated that such an intention did not exist.

Consequently, the court found that the Opponent had established the ground of opposition under section 59 of the Act. The application to register the trade mark was therefore refused.