Think Schuhwerk GmbH v Thinx Inc

This matter concerned an opposition to the registration of a trade mark by Think Schuhwerk GmbH (the Opponent) against Thinx Inc (the Applicant). The Opponent, an Austrian company dealing in footwear under trade marks containing the element ‘Think’, opposed the Applicant's trade mark application, which was originally sought for goods and services in classes 25 and 35, including clothing. The Applicant subsequently amended its application to remove these specific goods and services. The decision was made by a delegate of the Registrar of Trade Marks based on the written record, as the Opponent elected for a decision without a hearing.

The legal issues before the delegate were whether the grounds of opposition, including those under sections 44, 58A, and 60 of the *Trade Marks Act 1995* (Cth), had been established. The Opponent contended that its registered trade marks for footwear were similar to the Applicant's mark and that the Applicant's proposed use would cause confusion or be contrary to law. The Applicant, a United States company involved in feminine hygiene clothing, argued against the opposition.

The delegate found that the Opponent had failed to establish any of the grounds of opposition. While the Opponent had demonstrated significant global sales of its ‘Think’ branded footwear since the early 1990s and sales in Australia since 2010-11, the delegate noted that these sales were minimal in the context of the Australian market, primarily occurring in only six stores. Crucially, the Applicant's amendment to remove goods and services in classes 25 and 35, which were the primary focus of the opposition, significantly altered the scope of the dispute. The delegate concluded that the Opponent had not established the ground of opposition under section 60, nor any other nominated grounds.

Consequently, the delegate ordered that the Applicant's trade mark application could proceed to registration not less than one month from the date of the decision, unless a notice of appeal was filed. The delegate also declined to award costs to either party, reasoning that the Applicant's substantial narrowing of its specification after the opposition commenced meant both parties had achieved a measure of success.