My Brilliance Pty Ltd v Brilliance Publishing Inc [2015] ATMO 63 (2 July 2015)

This matter concerned the opposition filed by My Brilliance to the registration of Brilliance Publishing’s trade mark BRILLIANCE AUDIO in Australia for publishing goods and services.

The applicant’s trade mark was initially accepted on the basis of evidence of use. During the opposition, the opponent attempted to attack the applicant’s evidence in relation to the initial application and the opposition matter.

The Hearing Officer noted that the opponent’s attack appeared to be based on a misreading of the ‘Gallo’ case (E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144). The opponent led arguments that the ‘use’ of the applicant’s trade mark should not be considered ‘use’ in Australia as it was not ‘targeted at’ Australia, however, the Hearing Officer found that, in line with Gallo, use by a distributor constitutes ‘use’ and use with a logo may (and in this case did) constitute ‘use’ of the plain word element.

Based on the applicant’s consistent ‘use’ of its trade mark from as early as 1999 (well before the filing date of any of the marks raised under section 44), the section 44 ground failed.

The opponent’s argument that the trade mark BRILLIANCE AUDIO lacked the required capacity to distinguish was dismissed by the Hearing Officer, noting that the opponent is the owner of a prior registration for BRILLIANCE and if one is capable of distinguishing, so must the other be.

The Hearing Officer dealt with the remaining grounds led without any detailed comment required. It suffices to say that the opponent was not able to demonstrate a reputation in its trade mark (section 60) or a failure of intent to use by the applicant (section 59).

To view the Office decision, click here.