Goodyear opposed the registration two trade mark applications filed by Dunlop for the trade marks DUNLOP and the D Device (shown below).
The applications were initially blocked by prior registrations for the identical trade marks owned by Goodyear. Dunlop was able to obtain acceptance of its applications on the grounds of prior and honest concurrent use, respectively.
It was clear, to the Hearing Officer, that Goodyear owned identical prior trade marks covering the same goods as those of the Dunlop applications.
There is a long and complicated history between Goodyear and Dunlop involving UK and Australian entities. However, the crux of the issue was whether, as Dunlop alleged, that Goodyear had,by way of abandonment or acquiescence, lost its rights in its earlier identical trade marks.
Key to the Hearing Officer’s consideration was that Dunlop had knowingly applied to register trade marks owned by Goodyear rather than applying for the non-use removal of Goodyear’s allegedly abandoned trade marks. Based on this, the Hearing Officer found it inappropriate to apply the provisions of section 44(3)(b).
Dunlop did not pursue acceptance under 44(3)(a) or 44(4), so the applications were refused.
To view the Office decision, click here.
This article is an extract from Spruson & Ferguson’s monthly summary of Australian Trade Mark Office decisions. You can view the entire month’s summary here.
Litigation Team, Trade Marks Team
Trade Marks Team