US Dairy Export Council v Consorzio Per La Tutela Del Formaggio Gorgonzola

The US Dairy Export Council (the Applicant) sought to register a trade mark, and the Consorzio Per La Tutela Del Formaggio Gorgonzola (the Opponent) opposed this application. The matter came before Hearing Officer Nicholas Smith of the Trade Marks Office. The Opponent's opposition was based on grounds including sections 42(b), 58, 59, and 177 of the *Trade Marks Act 1995* (Cth).

The primary legal issue before the Hearing Officer was whether the Applicant's proposed trade mark was capable of distinguishing the Applicant's goods from other goods, as required by section 177 of the Act. This involved assessing the inherent adaptability of the trade mark to distinguish and the extent of its use in the market prior to the filing date. The Hearing Officer also considered the admissibility of certain evidence filed by the Applicant after the prescribed timeframes, which the Opponent objected to.

The Hearing Officer reasoned that the trade mark lacked inherent adaptability to distinguish the Applicant's goods. Furthermore, the evidence presented did not demonstrate sufficient use of the trade mark in relation to the size of the relevant market before the filing date. Consequently, the Hearing Officer was not satisfied that the trade mark met the requirements of section 177 of the Act. The Hearing Officer also allowed the consideration of some of the late-filed evidence, noting that much of it was publicly available and the Opponent had an opportunity to respond.

The Hearing Officer found that the Opponent had established the ground of opposition under section 177 of the Act. Accordingly, the Hearing Officer refused to register the trade mark and awarded costs to the Opponent.