Volex Group Plc v TH & EE Tunley Pty

The decision concerns an application by Volex Group Plc for registration of a trade mark, opposed by TH & EE Tunley Pty. The Registrar, Iain Thompson, was tasked with determining whether to register the trade mark based on the grounds of opposition raised.

The primary legal issue before the Registrar was whether the grounds of opposition, specifically under section 44 of the relevant Act, had been established to the extent that they warranted refusal of the trade mark application. The Registrar also considered the possibility of amending the specification of goods to allow for registration.

The Registrar reasoned that the opponent had successfully established its ground of opposition under section 44 of the Act concerning power cords, extension cables, and domestic plug-in power-boards for domestic/household purposes. Consequently, the Registrar refused to register the trade mark as initially applied for. However, the Registrar offered the applicant an opportunity to amend the specification of goods to "Electrical switchgear; and other contacts (electric connections); none of the aforesaid being for domestic/household purposes" within two weeks, in which case the application could proceed to registration. The Registrar also ordered that the successful opponent be awarded costs on the official scale against the applicant.