This matter concerned an opposition to an application to register a trade mark.
The application was made in respect of classes 35 and 36, broadly for retail services, second-hand goods and financial services including personal loans.
A Notice of Opposition was filed by Cash Converters Pty Ltd on the grounds that the applied for mark was acceptably similar to its CASHIES mark.
The grounds of opposition included sections 44, 60, 62A and 43, however, most discussion was dedicated to section 44.
This was because earlier in the year a separate but otherwise identical application was filed and opposed by the same parties, and the Delegate in that instance found that there was likely to be deceptive similarity between the two marks and therefore refused to register the mark.
As such the Delegate considered whether the principal of res judicata applied to tie the hands of the Delegate in this instance. The Delegate found that certain matters that were addressed by the other Delegate previously were subject to res judicata, and as such, only those matters not addressed by the previous delegate remained to be considered. In this respect it was concluded that although the hearing before a delegate of the Trade Mark Office is administrative in nature, principles of judicial res judicata applied so that the Delegate was prevented from revisiting previous decisions of fact made by another Delegate.
The only matter for discussion (not discussed at the earlier hearing) was of the defence of honest concurrent use under section 44(3).
The Delegate noted that honesty was an important factor for such an application (being honesty in a commercial sense). As a fact peculiar to this case, the trade mark Applicant was a former franchisee of the trade mark Opponent. Understandably the Delegate had difficulty finding honesty as contemplated under this provision of the Act. Further, as the length and extent of use is to be considered (the greater such use, the better the prospects of honest concurrent use) the length of use prior to the filing date of the trade mark application was not found to be significant.