Tomkin Australia Pty Ltd v Jab Design Pty Ltd

This matter concerned an opposition by Tomkin Australia Pty Ltd (the Applicant) to the registration of a trade mark by Jab Design Pty Ltd (the Opponent). The proceedings were heard by Cristy Condon, acting as a delegate of the Registrar of Trade Marks. The core of the dispute revolved around the Applicant's claim to common law rights in the trade mark, which the Opponent sought to oppose.

The primary legal issue before the court was whether the Applicant had established sufficient evidence to support its opposition to the registration of the trade mark. Specifically, the court had to determine if the Applicant had discharged its onus of proof, particularly in light of the Opponent's failure to file any evidence in support of its opposition. The court was required to decide whether to refuse or register the trade mark based on the evidence presented.

The court noted that the Applicant was the sole party to have provided evidence, consisting of a declaration from its director, Barry John James Nolan. The Opponent, however, failed to file any evidence in support of its grounds for opposition, nor did it seek extensions of time to do so. The court found this lack of evidence from the Opponent to be baffling and detrimental to its case, as an opponent is expected to provide probative evidence to support its grounds for opposition. The court also found that it was untenable to be satisfied on the balance of probabilities that the Applicant's common law rights in the trade mark had transferred to the Opponent during the period of employment of Mr and Mrs Nolan with the Opponent, due to the absence of supporting evidence. The court considered the Opponent's attempt to remedy the lack of evidence by issuing a Notice to Produce to the Applicant shortly before the hearing to be unsuccessful.

Given the Applicant's failure to provide evidence in support of its opposition, the court was unable to be satisfied that the grounds of opposition had been established. Consequently, the court decided to register the trade mark in respect of the goods and/or services specified in the application.