Wilhelm Sihn Jr KG v Wi-Fi Alliance

Wilhelm Sihn Jr KG (the opponent) opposed the registration of a trade mark by Wi-Fi Alliance (the applicant). The opposition was based on several grounds under the *Trade Marks Act 1995* (Cth), including sections 27(1)(a), 27(1)(b), 41, 42(b), 43, 44, 60, 62(a), and 62(b). The proceedings were heard by Debrett Lyons, a Hearing Officer in the Trade Marks Hearings.

The primary legal issues before the Hearing Officer were to determine which of the grounds of opposition were properly pleaded and applicable to the applicant's trade mark, which was identified as a certification trade mark. Specifically, the court had to consider whether sections 27(1)(b) and 41, as relied upon by the opponent, were applicable to certification trade marks, given the provisions of Part 16 of the Act. The court also needed to assess the opponent's substantive submissions, which focused on sections 44 and 60 of the Act, and to clarify whether references to section 43 were intended to be references to section 42(b).

The Hearing Officer found that sections 27(1)(b) and 41 of the Act did not apply to certification trade marks, as their operation was excluded by section 170 of the Act, which directs to different provisions within Part 16. Section 177 was identified as the relevant counterpart to section 41 for certification trade marks, but it contained significant differences. Furthermore, section 27(1)(a) was not considered a standalone ground of opposition, and if the claim related to ownership, section 58 would be the appropriate ground. The opponent's submissions were interpreted as primarily addressing sections 44 and 60, with references to "contrariety to law" being treated as references to section 42(b). The ground of opposition based on section 62(b) was also found to fail.

Ultimately, the opposition was dismissed. The Hearing Officer directed that the application for registration be registered one month from the date of the decision, subject to the payment of the sealing fee and any potential appeal proceedings. The opponent was ordered to pay the applicant's costs.