The H.D. Lee Company, Inc. v Tracey Taylor

This matter concerned two trade mark applications, Nos. 1322652 and 1330541, brought by Tracey Taylor (the Applicant) and opposed by The H.D. Lee Company, Inc. (the Opponent). The dispute centred on the Applicant's proposed registration of the trade mark LADY RIDER for clothing and accessories directed at motorcycle enthusiasts. The Opponent, which uses the LADY LEE RIDERS trade mark internationally for jeans, contended that the Applicant's mark should not proceed to registration. The decision was made by John Spence, a Hearing Officer of the Trade Marks Hearings.

The primary legal issue before the court was whether the Registrar should allow the Applicant's trade mark applications to proceed to registration, pursuant to section 55 of the relevant Act, having regard to the grounds of opposition raised by the Opponent. The court was required to determine if any of the grounds on which the application was opposed had been established by the Opponent.

The Hearing Officer found that the Opponent had not established any of the three grounds of opposition relied upon at the hearing. The evidence presented by the Opponent, including declarations from Gregory Morris Chambers and Christopher Turk, detailed their extensive advertising and promotional activities in Australia for the RIDERS and LEE RIDERS trade marks, and the international use of the LADY LEE RIDERS trade mark since 1947. However, there was no evidence demonstrating the use of the LADY LEE RIDERS trade mark in Australia. Conversely, the Applicant's evidence, including declarations from Tracey Taylor and Adam Law, established that the LADY RIDER business was founded in 2006 and had been continuously conducted throughout Australia by the Applicant since her purchase of the business in 2009, targeting motorcycle enthusiasts with a range of clothing and accessories. The prior registration of the LADY RIDER trade mark without objection was also noted.

Accordingly, the Hearing Officer decided that each of the two trade mark applications could proceed to registration one month from the date of the decision, unless a notice of appeal was served on the Registrar, in which case registration would be stayed pending the outcome of the appeal. The Hearing Officer also awarded costs against the Opponent in favour of the Applicant, to be assessed in accordance with Schedule 8 of the Trade Mark Regulations 1995.