Waysco Pty Ltd v Danjohn Investments Pty Ltd

The Registrar of Trade Marks considered an application by Waysco Pty Ltd for registration of a trade mark, opposed by Danjohn Investments Pty Ltd. The dispute concerned whether the trade mark should be registered in respect of the goods specified in the application, or if certain goods should be removed from the specification.

The primary legal issue before the Registrar was to decide, pursuant to section 55 of the relevant legislation, whether to register the trade mark or refuse registration, having regard to the grounds of opposition. Specifically, the Registrar had to determine the extent to which the opposition, based on section 58, had been established in relation to the applicant's specified goods.

The Registrar reasoned that the opponent had established the ground of opposition under section 58 in respect of some of the applicant's goods. Consequently, the Registrar proposed to refuse registration unless the applicant agreed to amend the specification of goods by deleting certain items related to solar energy collection and generation. The applicant's attorney subsequently confirmed agreement to this amendment.

As a result, the Registrar ordered that the trade mark may proceed to registration with the agreed amendment, subject to the expiry of the relevant appeal period. The Registrar declined to make an award of costs, noting that both parties had achieved some measure of success in the proceedings.