Vieri Restaurant (Darling Harbour) Pty Ltd & Vieri Restaurant (NSW) Pty Ltd v Steve Di Giorgio

This matter concerned an opposition to the registration of a trade mark by Vieri Restaurant (Darling Harbour) Pty Ltd and Vieri Restaurant (NSW) Pty Ltd (the opponents) against an application by Steve Di Giorgio (the applicant). The proceedings were heard by Jock McDonagh, a delegate of the Registrar of Trade Marks, in Sydney on 17 March 2004. The applicant sought to register the trade mark "vieri" for services, and the opposition was based on several grounds, including that the trade mark did not distinguish the applicant's services, was scandalous or contrary to law, had a misleading connotation, was identical to existing trade marks, and that the applicant was not the owner of the trade mark.

The court was required to determine whether the grounds of opposition were made out, thereby justifying the refusal of the applicant's trade mark application. Specifically, the delegate considered grounds relating to sections 41, 42, 43, 44, and 58 of the relevant legislation, as well as the broader discretion under section 55. The applicant sought to introduce further evidence at the hearing, but this was not permitted under the statutory regime, and the applicant ultimately made submissions limited to the law and the opponent's evidence.

The delegate dismissed grounds 1 and 2 (section 41) as there was no evidence or submission to disturb the examiner's original decision. Ground 3 (section 42) was also dismissed due to a lack of supporting evidence or submissions. For ground 4 (section 43), the delegate found no readily apparent secondary implied or associated meaning within the trade mark itself, suggesting the opponent was relying on its own existing mark, which was an issue for a different ground. Ground 5 (section 44) was dismissed as there was no evidence of prior registration or application. Ground 6 (section 58) required the opponent to demonstrate the applicant was not the first user in trade, which was not sufficiently established. However, the delegate found that the opponent had established grounds of opposition under section 55, leading to the refusal of the trade mark application.

Consequently, the delegate refused to register Application No. 915067 "vieri" and awarded costs against the applicant in favour of the opponent.