THOIP v Stephen Akrap

This matter concerned an opposition by THOIP (the Opponent) to the registration of a trade mark by Stephen Akrap (the Applicant). The dispute arose from the Applicant's attempt to register a trade mark for use in relation to hemp-based products. The Opponent, which owns registered trade marks for the well-known "Mr. Men" and "Little Miss" characters and logos, opposed the application on several grounds, including those related to misleading and deceptive conduct and the potential for confusion with its established brands. The hearing was conducted by Jock McDonagh, a Hearing Officer for Trade Marks Hearings.

The primary legal issues before the Hearing Officer were whether the Applicant's proposed trade mark was likely to deceive or cause confusion, and whether its use would be contrary to Australian Consumer Law provisions concerning misleading or deceptive conduct. Specifically, the Opponent argued that the Applicant's mark, particularly when considered in relation to certain goods, would be confused with the Opponent's extensive and long-standing "Mr. Men" and "Little Miss" brands, which are widely recognised and used in relation to children's books and merchandise. The critical question was whether the grounds of opposition were established at the date of filing the application for registration.

The Hearing Officer found that the Opponent had established two grounds of opposition, sections 60 and 42(b) of the relevant Act, in respect of goods within Class 16 as the application originally stood. However, the Hearing Officer concluded that if the specification of goods in Class 16 were amended to exclude children's books and printed matter for children, these grounds of opposition would not be established. Consequently, the Applicant was given an opportunity to amend its application, which it accepted. The specification was amended to include "Artwork; Printed artwork; Printed material; Printed matter; none of the aforementioned including children’s books or printed matter for children." With this amendment, the Hearing Officer determined that none of the grounds of opposition were established.

Given the outcome, the Hearing Officer made no award of costs. The Opponent had succeeded in its opposition to the original application, but the Applicant ultimately secured registration of its trade mark with an amended specification that did not diminish its intended use. The Hearing Officer considered that both parties had succeeded to an equal measure, making it appropriate for each party to bear its own costs. The trade mark application was permitted to proceed to registration one month from the decision date, subject to any notice of appeal.