Walton International Limited v Ferdinando Giordano S.p.A

Walton International Limited (the opponent) opposed the registration of the word mark GIORDANO by Ferdinando Giordano S.p.A. (the applicant) for edible oils in class 29 and wines in class 33. The opposition was heard by a delegate of the Registrar of Trade Marks.

The primary legal issues before the delegate were whether the applicant's proposed trade mark registration would be contrary to the provisions of the *Trade Marks Act 1995* (Cth), specifically concerning the opponent's existing trade mark rights and reputation. The opponent argued that its significant reputation in the GIORDANO mark, particularly in relation to clothing and accessories, extended to Australia through a "spillover effect" and that the applicant's proposed use for wines and edible oils would adversely affect its goodwill and potentially cause confusion among consumers. The applicant contended that its goods were unrelated to the opponent's fashion items, that the opponent's reputation in Australia was not substantial enough to warrant opposition, and that considerations of infringement under section 120 of the Act were outside the Registrar's purview.

The delegate determined that while claims relating to infringement under section 120 were not within the Registrar's jurisdiction, the opponent's arguments could be considered under section 60 of the Act, which deals with the reputation of a trade mark. The delegate found that the opponent had not provided sufficient evidence or submissions to succeed on grounds other than section 60. Regarding section 60, the delegate noted the extensive evidence submitted by both parties concerning the opponent's reputation in Asia and its use of the GIORDANO mark in Australia. The delegate also considered the applicant's argument that the goods were too dissimilar for confusion to arise and that the opponent's reputation in Australia was not sufficiently established. The delegate also addressed the applicant's challenge to the admissibility of the opponent's evidence in reply, concluding that it could be considered a response to the applicant's evidence in answer. The delegate also briefly commented on section 44, noting the existence of identical or deceptively similar prior registrations by the opponent for the GIORDANO mark, but the decision text does not fully elaborate on the outcome of this specific ground.

The delegate found that the opponent was not successful in relation to grounds under sections 41, 42, 43, 59, and 62(a) due to a lack of supporting evidence and submissions. While the delegate acknowledged the existence of prior identical or deceptively similar registrations under section 44, the full reasoning and outcome for this ground were not definitively stated within the provided text. The delegate also indicated that the consideration of infringement under section 120 was outside the Registrar's jurisdiction. The ultimate outcome of the opposition, particularly concerning the core issue under section 60, was not fully detailed in the provided excerpt.