Urban Purveyor Group Pty Ltd v Sake No Hana Limited

This matter concerned an opposition by Urban Purveyor Group Pty Ltd (the Opponent) to the extension of protection of an International Registration Application (IRDA No. 1644895) to Australia, sought by Sake No Hana Limited (the Holder). The dispute centred on the Holder's claimed use of the word "Sake" as an unregistered trade mark and its registered trade marks for restaurant services. The Opponent contended that the Holder's trade marks were not entitled to protection in Australia. The decision was made by Katrina Brown.

The legal issues before the court were whether the grounds of opposition raised by the Opponent had been established, and consequently, whether protection should be extended to the Holder's IRDA. Specifically, the court had to consider the evidence of the Holder's use of the trade mark "Sake" in relation to restaurant services, including the date of first use, the extent of use, and any associated marketing and publicity. The court was required to determine if this evidence was sufficient to overcome the grounds of opposition.

The court found that the Opponent had not established any grounds for opposition. The evidence presented by the Holder, including a Sydney Morning Herald article from 20 October 2009, demonstrated use of "Saké Restaurant and Bar" in plain text from around that date. Further evidence indicated substantial revenue, industry awards, and significant marketing expenditure prior to the priority date, as well as media appearances and promotions. Regulation 17A.34N of the Trade Marks Regulations 1995 outlines the Registrar's decision-making process in opposition proceedings.

Accordingly, the court ordered that protection may be extended to IRDA No. 1644895 in respect of all claimed services, one month from the date of the decision, unless an appeal was filed. The court also awarded costs against the Opponent in favour of the Holder.