The Wonderful Company LLC v Jian Zhou

The Wonderful Company LLC ("Opponent") opposed the registration of the trade mark "WONDERFUL MOMENT" (application number 2174283) in Class 29, filed by Jian Zhou ("Applicant"). The opposition was heard by a Delegate of the Registrar of Trade Marks. The Opponent alleged that the trade mark should not proceed to registration on the grounds of sections 42(b), 44, and 60 of the Trade Marks Act 1995 (Cth).

The legal issues before the Delegate were whether the Applicant's trade mark was substantially identical with or deceptively similar to any registered trade marks of the Opponent for similar goods or services, whether the registration would be contrary to law or honest commercial practices, and whether the trade mark was, at the priority date, likely to deceive or cause confusion due to its use or reputation. The Opponent bore the onus of proving these grounds on the balance of probabilities, with the relevant date for determination being the priority date of the Applicant's trade mark, 28 April 2021.

The Delegate considered the evidence filed by the Opponent, which detailed extensive use and promotion of trade marks incorporating the word "WONDERFUL" in Australia, including "POM WONDERFUL" and "WONDERFUL PISTACHIOS," in relation to various food products such as nuts, fruits, and juices. The Opponent also relied on its registered trade marks for similar goods. However, the Delegate found that the Opponent had not established any of the grounds of opposition. Specifically, in relation to section 44, the Delegate concluded that the Opponent's trade marks were not substantially identical with or deceptively similar to the Applicant's trade mark for the purposes of the section. The Delegate also found that the evidence did not support the grounds under sections 42(b) or 60.

Consequently, the Delegate ordered that the opposition be dismissed and that the trade mark application proceed to registration.