Studio S R L v Buying Systems Australia Pty Ltd

This case concerned an opposition by Buying Systems (Australia) Pty Ltd ("the opponent") to the registration of the trade mark STUDIO, applied for by Studio S.r.l. ("the applicant") for fashion and hairdressing magazines. The opponent alleged that the applicant was not the proprietor of the mark, intended to traffic in it, and that the application should be refused under section 28 of the Trade Marks Act 1955 due to blameworthy conduct leading to deception and confusion. The decision was made by a Delegate of the Registrar of Trade Marks.

The legal issues before the Delegate were whether the applicant was the proprietor of the trade mark STUDIO at the time of application, and whether the application should be refused under section 28 of the Act. The Delegate considered the relevant date for assessing rights under section 28 to be the date of the application, not the current date or the date of opposition, drawing on established case law. The Delegate also examined the common law principle of proprietorship, which vests in the first person to use a trade mark in Australia.

The Delegate reasoned that the opponent had not established prior use of the mark in Australia before the applicant's application date of 8 December 1983. The opponent's activities, such as circulating a brochure and booking advertising space, were found to be preparatory steps or occurred after the application date, and did not constitute use in trade sufficient to establish proprietorship. The Delegate also found no evidence of fraud or a lack of intention to use the mark on the part of the applicant. Consequently, the applicant was deemed to be the proprietor of the mark at the time of application.

The opposition was dismissed on all grounds, and costs were awarded to the applicant.