Tahi Oils Limited v Tahi Estate Limited

This matter concerned an opposition by Tahi Oils Limited against the registration of a trade mark by Tahi Estate Limited. The dispute centred on Tahi Estate Limited's application to register the trade mark "TAHI" for various goods, including cosmetics and non-medicated oils. Tahi Oils Limited opposed this application, arguing that it had prior rights to the "TAHI" trade mark for similar goods. The decision was made by Bianca Irgang, a Hearing Officer at Trade Marks Hearings.

The primary legal issue before the Hearing Officer was whether Tahi Estate Limited's trade mark application should be refused registration, in whole or in part, based on Tahi Oils Limited's grounds of opposition. Specifically, the Hearing Officer had to determine the extent to which the grounds of opposition, particularly those relating to the use of the "TAHI" trade mark for certain goods, had been established.

The Hearing Officer found that Tahi Estate Limited had met the onus of proof regarding the ground of opposition under section 58 of the Act in relation to some of the goods within class 3. Consequently, Tahi Estate Limited was given an opportunity to amend its application by deleting the conflicting goods. Tahi Estate Limited elected to do so, and the Hearing Officer accepted the amended trade mark application for possible registration in respect of the amended specification for goods in class 3, as well as all goods in classes 5 and 30. Given that both parties had achieved some success in their claims, the Hearing Officer ordered that each party bear their own costs.