Terranora Group Management Pty Ltd v Rise Projects Pty Ltd

This matter concerned an opposition filed by Terranora Group Management Pty Ltd (the Opponent) against the trade mark application of Rise Projects Pty Ltd (the Applicant). The Opponent sought to prevent the registration of the Applicant's trade mark on several grounds, including alleged contravention of law under section 42(b) of the *Trade Marks Act 1995* (Cth), as well as grounds under sections 44, 58, 58A, and 60 of the Act. The decision was made by Nicholas Smith, Hearing Officer, acting as delegate of the Registrar of Trade Marks.

The primary legal issues before the Hearing Officer were whether the Opponent had established any of the grounds for opposition it had pleaded. Specifically, the Hearing Officer had to determine if the Applicant's proposed trade mark use would be contrary to law (s 42(b)), if the trade mark was substantially identical or deceptively similar to a trade mark in relation to which an earlier trade mark right existed (s 44), or if other grounds relating to prior use or misrepresentation were made out. The Hearing Officer also had to consider the Applicant's claim of confidentiality over its evidence and how this impacted the assessment of the opposition.

The Hearing Officer found that the Opponent had failed to establish the ground of opposition under section 42(b), as the use of the trade mark by the Applicant was not found to be contrary to law. While the ground under section 44 was established, the Hearing Officer applied the provisions of section 44(3)(b), which allows for registration in certain circumstances despite the existence of an earlier trade mark. None of the other grounds of opposition were successfully established by the Opponent. The Hearing Officer adopted the approach of a previous delegate regarding claims of confidentiality over evidence, noting that parties must specifically identify sensitive information and that the onus is on the opponent to prove its case.

Consequently, the Hearing Officer ordered that the trade mark application could proceed to registration, subject to an endorsement reflecting the application of paragraph 44(3)(b) and/or Regulation 4.15A(3)(b). The Opponent was ordered to pay the Applicant's costs.