Sunswipe, Inc v Topero Nominees Pty Ltd

Sunswipe, Inc. opposed the registration of a trade mark application filed by Nuc-One Enterprises Pty Ltd for the mark "SUN WIPES logo" in Class 3, in respect of sunscreen wipes and self tan wipes. The opposition was heard by a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether Nuc-One Enterprises Pty Ltd was the owner of the trade mark for which registration was sought, pursuant to section 58 of the *Trade Marks Act 1995*. This ground of opposition required the opponent to demonstrate that it had used a substantially identical trade mark in respect of the same kind of goods prior to the applicant's filing date of 6 May 1997.

The delegate reasoned that to succeed on the ground of ownership under section 58, the opponent must establish prior use of a substantially identical mark on the same kind of goods. While the delegate was satisfied that the opponent's proposed goods (individually wrapped sunscreen impregnated towelettes) were the same kind of thing as the applicant's goods (sunscreen wipes and self tan wipes), and that the trade marks were not substantially identical, the opponent failed to establish actual use. The evidence presented by the opponent only demonstrated preparations for sale in Australia of towelettes under the trade mark SUNSWIPE in February 1997, but no evidence of actual sales or offers to trade was provided. As mere preparations do not constitute use, the delegate found that the ground of opposition failed.

Consequently, the delegate dismissed the opposition and directed that application 733839 should proceed to registration, subject to any appeal.