Volkswagen AG v Tungpei Industrial Co., Ltd

This matter concerned an opposition filed by Volkswagen AG (the Opponent) against a trade mark application by Tungpei Industrial Co., Ltd (the Applicant). The Opponent, a German automobile manufacturer, opposed the registration of the Applicant's trade mark on grounds including ss 42(b), 44, 60, and 62A of the relevant Act. The decision was made by Nicholas Smith, a delegate of the Registrar of Trade Marks, based on the written record as no hearing was requested by the parties.

The legal issues before the delegate were whether the grounds of opposition raised by the Opponent had been established. Specifically, the delegate had to consider whether the Applicant's proposed trade mark, if registered, would be contrary to law (s 42(b)), whether it was substantially identical or deceptively similar to the Opponent's registered trade marks (s 44), whether it had acquired distinctiveness through use (s 60), and whether it was disentitled to registration due to the Applicant's conduct (s 62A).

The delegate considered evidence filed by both parties, including declarations from legal representatives and company officials. The Opponent provided evidence of its long-standing use and significant sales of vehicles bearing its TDI and TSI trade marks in Australia since 2005 and 2009 respectively. However, the delegate found that the Opponent had not established that the use of the Applicant's trade mark would be contrary to law, thus failing to establish the ground under s 42(b). As the Opponent failed to establish any of the nominated grounds of opposition, the delegate concluded that the trade mark application could proceed to registration.