The Warehouse Ltd v B&B Warehouse Sales Pty Ltd

The proceedings involved an opposition by B&B Warehouse Sales Pty Ltd against an application by The Warehouse Ltd for registration of a trade mark. The dispute concerned whether the applicant's trade mark was capable of distinguishing its goods and services from those of other persons, as required by section 41 of the relevant Act. The hearing officer of the Trade Marks Hearings was tasked with determining this issue.

The primary legal issue before the hearing officer was whether the applicant's trade mark had become capable of distinguishing the designated goods and services, or had in fact become distinctive, despite potentially lacking inherent capacity to do so. This required an assessment of the evidence presented by both parties regarding the use and recognition of the trade mark.

The hearing officer considered evidence of the applicant's use of the trade mark since approximately 1991 or 1993, originating from shops known by various "Warehouse Centre" names. The applicant's stores were subsequently named in the format "The Warehouse – [Location]", and the applicant had engaged in extensive marketing and advertising. While the opponent presented evidence disputing some aspects of the applicant's use, the hearing officer found that the totality of the evidence demonstrated consistent use of the trade mark in a specific font, with a bordering dotted line appearing frequently. The applicant had also invested substantially in advertising and promotion. The hearing officer concluded that the opponent had not established its opposition.

Consequently, the hearing officer ordered that the application may proceed to registration, subject to the opponent notifying the Registrar of an appeal within one month. The hearing officer also ordered costs against the opponent, as the applicant had been successful in the proceedings.