SOLA TUBE AUSTRALIA PTY LTD V GABRIEL ANDREWS (2014) ATMO 103
Sola Tube opposed registration of trade mark application No. 1430638 HEAVENLY in the name of Gabriel Andrews. The opposed application covered various building products in Classes 6 and 19, and building construction, repair and installation services in Class 37.
The opponent used a range of trade marks including the word “HEAVENLY”, and claimed a first use date of 1998 for the HEAVENLY mark in connection with skylights. Included in the opponent’s evidence was a catalogue dated 1 July 2001 showing a range of skylights advertised under the HEAVENLY mark. The applicant did not file any evidence.
The main opposition ground considered by the Hearing Officer was Section 58 – proprietorship. The Hearing Officer found that the opponent’s use of its marks constituted use of the word HEAVENLY per se, which was substantially identical to the applied for mark. Further, the opponent’s skylights were considered the same kind of thing as the opponent’s building products, as well as the Class 37 services which consumers would reasonably expect to be provided in connection with skylights. In light of this, the 2001 advertisement, in combination with the remaining evidence, was sufficient for the opponent to succeed under Section 58.
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