Tailsco Limited v Oasis Capital Pty Ltd

This decision concerns an opposition by Tailsco Limited against an application by Oasis Capital Pty Ltd for registration of a trade mark. The dispute arose from Oasis Capital's application, which Tailsco opposed on grounds including those under section 60 of the *Trade Marks Act 1995* (Cth) and regulation 4.15A of the *Trade Marks Regulations 1995* (Cth). The matter was heard by a delegate of the Registrar of Trade Marks.

The primary legal issues before the delegate were whether Oasis Capital's trade mark application should be rejected based on the grounds of opposition raised by Tailsco. Specifically, the delegate had to determine if the trade mark was substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which notification of an IRDA had been received, in respect of similar goods or closely related services, and if the priority date of Oasis Capital's application was not earlier than the priority date of the other trade mark.

The delegate found that Tailsco had not relied on the section 60 ground of opposition. However, the ground under regulation 4.15A was established in part, specifically in relation to goods in class 5 and class 31 of the application. Applying the principle that an application may fail in its entirety if a ground of opposition is established for some, but not all, of the specified goods or services, the delegate exercised discretion. The delegate offered Oasis Capital the opportunity to amend its application by deleting the goods in class 5 and 31. Oasis Capital requested these deletions, and consequently, the trade mark application was permitted to proceed to registration with a restricted specification. Tailsco was awarded costs against Oasis Capital.