Watches of Switzerland Pty Ltd v Mappin & Webb Limited

This matter concerned an opposition by Watches of Switzerland Pty Ltd (the Opponent) to the registration of a trade mark by Mappin & Webb Limited (the Applicant). The Opponent, an Australian company operating retail stores selling Swiss-made watches since 1995, argued that the Applicant, a UK company that licenses the use of its trade mark for similar retail operations in the United Kingdom, had not demonstrated an intention to use the trade mark in Australia. The dispute was heard by Debrett G. Lyons, a Hearing Officer of the Trade Marks Hearings.

The primary legal issue before the Hearing Officer was whether the Opponent had established a prima facie case that the Applicant lacked the intention to use the trade mark in Australia, as required by section 59 of the relevant legislation. The Opponent contended that the Applicant's evidence was silent on any planned use in Australia, thereby shifting the onus onto the Applicant to prove its intention. The Applicant, conversely, argued that the filing of a trade mark application itself constitutes prima facie evidence of an intention to use, and that the onus was on the Opponent to establish a lack of intention, which it had failed to do by merely pointing to the Applicant's silence.

The Hearing Officer agreed with the Applicant's submissions. It was held that the onus rests on the opponent to establish a prima facie case of lack of intention to use. The Hearing Officer found that the Opponent had not met this onus by simply noting the absence of evidence from the Applicant regarding proposed use in Australia. The filing of the application was considered prima facie evidence of intention, and no adverse inference could be drawn from the Applicant's silence on an issue not raised in its evidence in support. Consequently, the section 59 ground of opposition was found to be without foundation.

As the Opponent had not established any grounds for its opposition, the Hearing Officer decided that the trade mark application could proceed to registration one month from the date of the decision, unless a notice of appeal was served. The Applicant was awarded its costs against the Opponent.