IP SERVICE INTERNATIONAL defends Opposition against ST. MRLO Trade Mark Application before IP Australian

IP SERVICE INTERNATIONAL successfully defended a trade mark opposition against the Trade Mark Application for "ST. MRLO" in the name of Australian Brands Alliance Pty Ltd.

The Opponent opposed the registration of the Applicant’s trade mark application for "ST. MRLO" in Class 25 covering apparel (clothing, footwear, headgear). The application was filed 25 October 2019, accepted and advertised, then opposed under several opposition grounds of the Trade Marks Act 1995 (Cth). Evidence was filed by both sides; an oral hearing occurred on 7 April 2022.

The Opponent pursued opposition grounds under:

• s 58 (ownership)
• s 60 (reputation leading to likely deception/confusion)
• s 62A (bad faith)

A pleaded s 59 ground was treated as abandoned.

Key Issue

The “relevant date” for assessing rights and reputation was the filing/priority date 25 October 2019.

The Opponent carried the onus to establish at least one ground on the balance of probabilities.

Findings

s 58 (ownership): not established.

The Opponent relied on SAINT MARLO as the mark said to confer earlier ownership. The delegate found the marks were not identical or substantially identical: while “ST.” and “SAINT” were treated as effectively interchangeable, MRLO was not shown to be the same essential feature as MARLO, and there was insufficient evidence that consumers would read or pronounce MRLO as MARLO. On that basis, the ownership challenge failed.

s 60 (reputation): not established.

The delegate held the Opponent did not prove that SAINT MARLO had acquired a reputation in Australia by the relevant date. Use had commenced about 13 months prior, sales figures and promotional reach were modest, retail stockists and market activity were limited and localised, and there was insufficient evidence of meaningful Australian consumer exposure (including limited metrics for website/social media reach). Without a qualifying reputation, the likelihood of deception/confusion limb did not arise in the Opponent’s favour.

s 62A (bad faith): not established.

The delegate was not satisfied the Applicant knew of the Opponent’s mark at the relevant date, nor that the application fell short of acceptable commercial standards. Post-relevant-date social media exchanges only showed awareness from December 2020, not in October 2019. The evidence did not support “prolonged competition” before filing, and the serious allegation of bad faith was not made out.

Outcome

No grounds of opposition were established. The application for ST. MRLO was permitted to proceed to registration. Costs were awarded against the Opponent in accordance with the Trade Mark Regulations.

Our client was represented by Max Steinhausen (2022 ATMO 62).

Contact our Intellectual Property Lawyers at IP SERVICE INTERNATIONAL

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