The Land of Legends Pte Ltd v DIWAN EMIRI

This decision concerns an opposition filed by The Land of Legends Pte. Ltd. (the Opponent) against the trade mark application "Arabian Land Of Legends" by DIWAN EMIRI (the Applicant). The opposition was lodged following the advertisement of the application for registration across multiple classes, including retail, tourism, entertainment, accommodation, and spa services. Both parties elected to proceed to a decision without a hearing, with the matter being determined by a delegate of the Registrar of Trade Marks based on the written submissions and evidence.

The Opponent pursued grounds of opposition under sections 42(b) and 60 of the *Trade Marks Act 1995* (Cth). Section 60 requires the Opponent to demonstrate that another trade mark had acquired a reputation in Australia before the relevant date, and that the use of the applied-for mark would be likely to deceive or cause confusion due to that reputation. Section 42(b) requires the Opponent to establish that the use of the applied-for mark would be contrary to law, which in this instance was argued to be misleading or deceptive conduct under the Australian Consumer Law, stemming from the alleged reputation of the Opponent's mark. The onus rested on the Opponent to establish these grounds on the balance of probabilities.

The delegate found that the Opponent had not established a reputation in its trade mark "THE LAND OF LEGENDS" in Australia as at the relevant date. While the Opponent provided evidence of its overseas operations, including a hotel and theme park in Turkey, and some engagement from Australian consumers, the evidence was considered insufficient to demonstrate a significant or substantial reputation amongst the Australian public. The delegate noted that much of the evidence was undated or dated after the relevant period, and the number of Australians exposed to the Opponent's mark through website visits, social media, or actual visits to its facilities was modest. Consequently, the ground of opposition under section 60 was not established.

Given that the Opponent's claim under section 42(b) relied on the same alleged reputation to establish misleading or deceptive conduct under the Australian Consumer Law, and the delegate had already determined that this reputation was not proven in Australia, the ground under section 42(b) also failed. The delegate concluded that neither ground of opposition had been established and therefore ordered that the trade mark application proceed to registration.