IP SERVICE INTERNATIONAL successful in cross-opposition case for DETOX26 Trade Mark in Australia
IP SERVICE INTERNATIONAL successfully defended trade mark DETOX26 for our client Slim By Nature in a cross-opposition case before IP Australia involving multiple trade mark applications and opposition proceedings.
The decision concerned cross-oppositions between our client and the opponent, each claiming entitlement to the trade mark DETOX26 for goods and services in the weight-loss and dietary supplement field. Three applications were in issue, with each party opposing the other’s filings under various provisions of the Trade Marks Act 1995 (Cth).
Key Issue
The Delegate of the Registrar treated ownership (s 58 Trade Marks Act) as the key value driver and largely determinative across all three matters, given both sides’ competing claims to first adoption/use and the overlapping commercial field.
Findings
On the evidence, our client established earlier use of the mark in Australia, including use in connection with a detox program and related goods from 2016. That use was found to go beyond mere planning or authorship and amounted to genuine use in the course of trade. By contrast, the opponent’s earliest position was characterised as, at best, authorship or preparatory steps, which was insufficient to establish ownership.
As a result, our client succeeded in opposing the opponent’s application, which was refused registration on ownership grounds. In relation to our client’s applications, the opponent failed to establish any of the grounds pressed. The opponent did not prove ownership, failed to demonstrate a relevant reputation at the priority date for the purposes of s 60, and did not establish that use of the mark would be contrary to law under s 42(b) or that our client acted in bad faith under s 62A. The delegate expressly rejected allegations of bad faith, noting that our client’s conduct was consistent with its belief that it was the rightful owner of the mark.
Outcome
Our client’s applications for DETOX26 were allowed to proceed to registration, the opponent’s application was refused, and costs were awarded in favour of our client, reflecting its overall success in the proceedings.
Our client was represented by Max Steinhausen (2019 ATMO 141).
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