Suyen Corporation v Americana International Limited

In the Federal Court of Australia, Suyen Corporation appealed against a decision made by the Delegate of the Registrar of Trade Marks Office, which had rejected its application for registration of a trade mark. The trade mark in question, which was for the word "Aussie" in relation to clothing, including boots, shoes, and slippers, under class 25, had been opposed by Americana International Limited. Following the withdrawal of the opposition, the parties proposed consent orders to allow the appeal and proceed with the registration of the trade mark.

The court was required to decide whether it could make the proposed consent orders, given that the opposition had been withdrawn and the Registrar had no objection to the draft orders. The legal issues included whether the court could allow an appeal and permit the registration of a trade mark when the opposition had been withdrawn and the Registrar had no objection to the decision being set aside.

The court referred to previous cases such as Cadbury Schweppes Pty Limited v Effem Foods Pty Ltd and Société des Produits Nestlé S.A. v Aldi Stores (a limited partnership) to support its decision. The court held that where the opponent has withdrawn, the Registrar has no objection to the draft orders, and there is no evidence before the court capable of supporting any actual or potential ground of opposition, there is no basis on which the court can uphold the opposition. The statutory scheme under the Trade Marks Act 1990 (Cth) also supported the court's decision, as section 68(1) of the Act provides that the Registrar must register a trade mark if the opposition has been withdrawn.

The court allowed the appeal from the decision of the Delegate of the Registrar of Trade Marks Office, set aside the decision, and ordered that the trade mark application number 989448 proceed to registration. The parties' proposed consent orders were approved by the court, and the Registrar had no objection to the decision being set aside so that the application may proceed to registration.