Undefeated, Inc. v Behaviour Interactive Inc

The Registrar of Trade Marks was required to decide whether to register trade marks applied for by Undefeated, Inc. (the Applicant) in opposition to Behaviour Interactive Inc. The dispute concerned the Applicant's proposed specifications of goods and services for its trade mark applications, which were opposed by Behaviour Interactive Inc. on grounds including those under section 44 of the *Trade Marks Act 1995* (Cth) and regulation 4.15A of the *Trade Marks Regulations 1995* (Cth).

The central legal issue before the Registrar was whether the grounds of opposition established by Behaviour Interactive Inc. necessitated a refusal of the trade mark applications, or if the applications could proceed to registration subject to amendments to the specified goods and services. The Registrar had to determine the extent to which the grounds of opposition were established and, consequently, whether to refuse registration or register the trade marks with or without conditions or limitations, as provided by section 55 of the *Trade Marks Act 1995* (Cth).

The Registrar found that grounds of opposition under section 44 and regulation 4.15A were established in respect of at least some of the Applicant's proposed goods and services. Following communication with the Applicant, the Registrar offered the option to amend the specifications to remove the offending elements. The Applicant's representative subsequently agreed to specific amendments, deleting certain words and adding others to the specifications. Consequently, the Registrar decided that the trade marks could proceed to registration subject to these agreed amendments, with registration to occur no earlier than one month from the date of the decision, unless an appeal was filed.