Case Summary: Ponani Pty Ltd v Patel Building Group Pty Ltd [2024] ATMO 185 (PATEL BUILDING GROUP v PATEL HOMES)
In this case, Opposition proceedings were commenced by Ponani who subsequently went into voluntary administration. On that basis, the Opposition continued to run without any evidence or active participation by the Opponent. This decision provides some useful takeaways to Applicant’s who are stuck in opposition proceedings where the Opponent subsequently fails to engage.
Applicant’s Mark
Opponent’s Mark
The Applicant’s Mark was filed subsequent to the Opponent’s Mark and found to be deceptively similar to that mark, but was accepted for registration on the basis of provision of evidence of prior continuous use (section 44(4).
Ponani’s grounds focussed on establishing that the Applicant’s mark should not have been accepted based on the prior use evidence provided. Ultimately, it failed to produce any evidence to back up those grounds and the Hearing Officer was satisfied that the mark had been properly accepted based on prior use, and the Applicant’s Mark was permitted to proceed to registration.
S44 (deceptive similarity of marks)
S58A (earlier prior use of Opponent’s mark)
S60 (Likelihood of Confusion based on reputation of the Opponent’s Mark)
S42(b) (Use of mark would constitute misleading or deceptive conduct or passing off)
Hire of construction apparatus and equipment was consider NOT to be services of the same description as construction services.
The marks were considered to be deceptively similar primarily based on the same main identifying element, being the name PATEL.
Notwithstanding the deceptive similarity, the Applicant was successful in demonstrating that there was basis for registration based on its prior continuous use of its trade mark.
This grounds failed based on failure of the Opponent to provide any evidence demonstrating it has earlier prior use of its mark predating the Applicant’s first Use
Further, there was no evidence produced showing that the Opponent had any established reputation in its mark which could give rise to market confusion or mislead the public.
