The Grapevine BVBA v Are Media Pty Limited

The matter before the delegate of the Registrar of Trade Marks concerned an opposition filed by The Grapevine BVBA (the Opponent) against the proposed registration of trade marks by Are Media Pty Limited (the Applicant). The Opponent sought to oppose the registration of the Applicant's trade marks on several grounds, including those provided by sections 42(b), 44, 58, 60, and 62A of the *Trade Marks Act 1995* (Cth).

The primary legal issues for determination were whether the grounds of opposition, particularly under section 44, were established. Section 44 concerns the registration of a trade mark that is identical or deceptively similar to an earlier trade mark. The court was required to consider the extent to which the Opponent's grounds of opposition had been established, having regard to the evidence and submissions presented by both parties.

The delegate noted that this was the second opposition proceeding concerning the Applicant's trade mark, with a prior decision having found in favour of the Opponent on the section 44 ground in relation to different, though similar, services. In the present case, the Opponent, a media company operating an influencer platform under the mark 'The Insiders', relied on its registered trade marks. The delegate found that the section 44 ground was established in respect of a subset of the services for which the Applicant sought registration. Consequently, an amendment was made to the application, deleting the services for which the section 44 ground had been established. The remaining trade marks were then permitted to proceed to registration.