CFX FUNDS MANAGEMENT PTY LTD V PAUL MCMAHON  ATMO 52 (19 JULY 2016)
Paul McMahon applied to register the trade mark DFO for a range of Class 39 transportations services. That application was opposed by CFX Funds Management on the basis that the applicant did not intend on using the trade mark at the time the application was filed.
Within the Statement of Grounds and Particulars the opponent alleged that the applicant did not intend on using the trade mark at the time the application was filed. The applicant filed a Notice of Intention to Defend, but otherwise took no part in the opposition proceedings and filed no evidence or submissions.
As further background, the applicant was previously involved in opposition matters where applications were filed to register DFO in respect of business services. These applications were refused.
Additionally, applicant’s Notice of Intention to Defend was not correctly filed leading to the Trade Marks Office attempting to contact the applicant to have it update and/or refile a corrected Notice. No response was received from the applicant. Further, the Hearing Officer noted that the applicant has recently filed numerous applications covering a wide range of unrelated goods and services using the same address and email address as the ones that the Trade Marks Office was attempting to correspond with the applicant on relating to the Notice of Intention to Defend issues.
In the context of the above, the Hearing Officer took the view that if the trade mark was of genuine interest to the applicant, the applicant would have taken steps to refute the claim that it had no intention to use the mark. As no such refutation was forthcoming, the Hearing Officer found that the applicant had not met its onus with respect to intention to use and the application was, therefore, refused.
To view the Office decision, click here.
This article is an extract from Spruson & Ferguson’s Asia-Pacific Regional Trade Mark Update. You can view the entire summary here.