Valvoline Licensing and Intellectual Property LLC v Adyjohns Pty Ltd

Valvoline Licensing and Intellectual Property LLC (the Opponent) opposed the registration of Trade Mark 1874303 by Adyjohns Pty Ltd (the Applicant). The dispute concerned the Opponent's objection to the registration of the Applicant's trade mark, with the hearing officer considering the ground of opposition under section 60 of the *Trade Marks Act 1995* (Cth).

The primary legal issue before the hearing officer was whether the Opponent had established its ground of opposition under section 60 of the Act. This section pertains to the registration of a trade mark that is identical or deceptively similar to a trade mark that has acquired a reputation in Australia.

The hearing officer found that the Opponent had discharged the onus of proof required for the section 60 ground. The Opponent provided evidence demonstrating its extensive and long-standing use of the VALVOLINE brand and associated trade marks in Australia for over 150 years, including significant sales, marketing, and distribution efforts across all Australian states and territories. This evidence established that the VALVOLINE trade marks had acquired a substantial reputation in Australia in relation to lubricants and automotive services.

Consequently, the hearing officer refused to register Trade Mark 1874303. The Applicant was ordered to pay the Opponent's costs in accordance with the relevant regulations.