Zhejiang Cereals, Oils & Foodstuffs Import & Export Company Limited v Oriental Merchant Pty. Limited

This matter concerned an opposition by Zhejiang Cereals, Oils & Foodstuffs Import & Export Company Limited (the Opponent) to an application by Oriental Merchant Pty. Limited (the Applicant) to register the trade mark "DALI BRAND". The Opponent, described as a large foreign trade enterprise in China's Zhejiang Province, exports a wide range of products, including mushrooms, under the "DALI BRAND" trade mark. The Opponent adopted the mark around 1987 and has used it continuously in China and overseas, including in Australia since 1990. The Opponent claimed to be the first user of the mark for mushrooms in Australia. The proceedings were before a delegate of the Registrar of Trade Marks.

The primary legal issue before the court was whether the Applicant was entitled to registration of the "DALI BRAND" trade mark, specifically whether the Opponent had established that the Applicant was not the owner of the mark under section 58 of the relevant legislation. This required the court to determine if the Opponent had established prior use of the mark in Australia and whether the Applicant, as an uninvolved third party, could claim ownership and registration in the absence of such prior use or entitlement.

The court found that the Opponent had established its ground of opposition. The Opponent demonstrated use of the "DALI BRAND" trade mark in Australia prior to the priority date of the Applicant's application, evidenced by sales to the Applicant and another Australian entity, HOA Australia Pty. Limited. The court also determined that the Applicant was neither the author nor the owner of the trade mark, with evidence suggesting the Opponent was the author. Crucially, the court noted the established business relationship between the parties, indicating the Applicant was aware of the Opponent's interest in the trade mark. Applying principles from cases such as *In the Matter of Trade Mark of the New Atlas Rubber Company Limited* and *Estex Clothing Manufacturers Pty. Limited v. Ellis and Goldstein Limited*, the court held that goods remain in the course of trade while on the market for sale, and a manufacturer continues to use its mark even when goods are sold to distributors.

Consequently, the court was satisfied that the Opponent had met the onus of establishing that the Applicant was not the owner of the "DALI BRAND" trade mark under section 58. The Applicant's claim to entitlement to registration was therefore unsuccessful, and the opposition was upheld.