NICE ONE SYDNEY’S PTY LTD V FANTASTIC HOLDINGS LTD [2014] ATMO 53

Trade Mark application for THE PACKAGE DEAL KINGS covering furniture and retailing was filed by Fantastic Holdings and opposed by Nice One Sydney’s pressing sections 58 and 60.

In its evidence the opponent alleged its use of the trade marks THE PACKAGE DEAL KING and/or SYDNEY THE PACKAGE DEAL KING continuously since 1994. Most of the evidence attested to some use around 1999, but even this was, in the Hearing Officer’s view, ‘not clear’ trade mark use. Rather, the opponent relied on its business name registrations which it had acquired and dated back as far as 1994. Of course, as noted by the Hearing Officer, a business name does not, of itself, provide the owner with any intellectual property rights.

In its evidence-in-answer, the applicant was able to demonstrate ‘use’ of the trade mark THE PACKAGE DEAL KINGS continuously since 1992. Having established use prior to even the opponent’s unsubstantiated claimed date of first use, the applicant defeated the section 58 ground.

Turning to section 60, the Hearing Officer gave some consideration to the use that the opponent demonstrated in its evidence, however, he duly noted that ‘at the priority date, in the order of 20 times higher than those under the Opponent’s trade marks’. Accordingly, the Hearing Officer was forced to conclude that it would not be possible for the use of the applicant’s trade mark to lead deception or confusion in light of the opponent's mark, when the greater reputation is clearly held by the applicant.

The section 60 ground failed and the application is to proceed to registration

To view the Office decision, click here.