Selected Cases

Karen Walker Limited v Premonition Designs Pty Ltd and Mamta Group Pty Ltd [2025] ATMO 103

(acting for successful opponent)

Planet Fitness Limited v PFIP International, LLC [2024] NZHC 2745

Before La Hood J., acted as junior counsel to Greg Arthur K.C. in the High Court of New Zealand. Trade Marks – opposition to application – appeal and cross appeal from Commissioner’s decision – Court’s approach on appeal Ground of opposition under s 17(1)(a) Trade Marks Act 2002 (NZ) – sufficient level of awareness of opponent’s mark – discussion of principles – applicant had not discharged the onus on it of showing no risk of confusion or deception Ground of opposition under s 17(2) Trade Marks Act 2002 (NZ) – Bad Faith – cross appeal from Commissioner’s dismissal of this ground – onus or burden of proof for bad faith – where objective circumstances give rise to a prima facie case of bad faith the presumption of a good faith application is displaced – evidential burden shifts to the applicant to show a genuine intention to use the mark applied for – the facts showed a prima facie case of bad faith – respondent applicant had failed to discharge the evidential burden to explain its intentions at the date of application Trade Marks Act 2002 (NZ) ss 17(1)(a) and 17(2).

Joines v Bruichladdich Distillery Company Limited [2024] NZIPOTM 30

(acting for successful opponent)

Sunnya Pty Limited v Supermega Market Limited [2023] NZHC 3266

(successful application to stay proceedings and refer to arbitration)

Australasian Conference Association Limited v Target Brands Inc [2023] ATMO 154 (10 October 2023)

(acting for successful opponent)

O/0757/23 IN THE MATTER OF IR NOS. WO0000001526904, WO0000001527244 AND WO0000001526171 DESIGNATING THE UK BY SHOPEE SINGAPORE PRIVATE LIMITED IN CLASSES 9, 35, 36, 38, 39, 42 AND 45 OPPOSITIONS UNDER NOS. 434571, 434572 AND 434575 BY SHOPIFY INC

Before Ms. S Wilson in a decision dated 9 August 2023, acted as counsel for the opponent, Shopify, Inc. in a successful opposition hearing under section 5(2)(b) and 5(3) of the Trade Marks Act 1994. The applications were refused entirely in Classes 9, 36, 38, 39, 42 and 45 but for the non-essential services in Class 35 namely "Business investigations; import-export agencies; procurement services for others (purchasing goods and services for other businesses)." The hearing officer Ms. Wilson noting that the "... proportion of success is so overwhelmingly in favour of the opponent that I do not consider it appropriate to make a reduction to the costs awarded. In the circumstances, I award the opponent [full costs on the scale] ..."

O/1054/22 IN THE MATTER INTERNATIONAL TRADE MARK 1476270 IN THE NAME OF PXG PHARMA GMBH AND DESIGNATION OF THE UK FOR PROTECTION AND OPPOSITION No. 418921 BY PARSONS XTREME GOLF, LLC

Before Mr. Allan James of the UKIPO in a decision dated 1 December 2022, acted for the Opponent in an opposition to the registration of PXG Pharma for goods and services "associated with goods/services associated with a chemist shop-type retailer". The Opponent is a well-known golf club brand and owner of the PXG trade mark. The Opponent was only partially successful under section 5(2)(b) of the Act for a narrow range of goods and services in Classes 8, 10, 16 and 35. The opposition was unsuccessful under sections 5(3) and 5(4)(a) of the Act.

Gopro Inc v Ross Walmsley [2021] ATMO 76 (2 August 2021)

(acting for successful removal applicant)

Cresilon, Inc v Biologische Heilmittel Heel GmbH [2021] NZIPOTM 13 (23 June 2021)

(acting for successful opponent)

O/353/21 IN THE MATTER OF INTERNATIONAL TRADE MARK No. 1456480 IN THE NAME OF SEW-EURODRIVE GmbH & Co. KG AND DESIGNATION OF THE UK FOR PROTECTION AND OPPOSITION No. 416792 BY PARSONS XTREME GOLF, LLCO/353/21 IN THE MATTER OF INTERNATIONAL TRADE MARK No. 1456480 IN THE NAME OF SEW-EURODRIVE GmbH & Co. KG AND DESIGNATION OF THE UK FOR PROTECTION AND OPPOSITION No. 416792 BY PARSONS XTREME GOLF, LLC

Before Mr. Allan James of the UKIPO in a decision dated 11 May 2021, acted for the Opponent in an opposition to the registration of PxG for goods in Class 7. The Opponent is a well-known golf club brand and owner of the PXG trade mark. The Opponent was unsuccessful in its opposition with the hearing officer finding that the goods at issue "wrenches" and "gears/gearboxes" are not complementary or similar.

O/344/21 IN THE MATTER OF APPLICATION No. 3386572 BY DIGIT AGENCY LIMITED AND IN THE MATTER OF OPPOSITION No. 416884 BY PUBLICIS GROUPE SA AND IN THE MATTER OF AN APPEAL TO THE APPOINTED PERSON BY THE OPPONENT

Before Mr. Simon Clark dated 7 May 2021, successfully acted for the Appellant in the appeal before the Appointed Person. Appellant successful, application number 3386572 refused registration
pursuant to sections 5(2)(b), 5(3) and 5(4)(a) of the Trade Marks Act. Costs awarded to the Appellant.

O/365/19 IN THE MATTER OF THE UK DESIGNATION OF IR NOS. 1330134, 1336257 AND 1344000 BY CENTURION CORPORATION LIMITED for DWELL STUDENT, DWELL and DWELL STUDENT LIVING (figurative) AND OPPOSITIONS NOS. 410349, 410381 AND 410384 BY COIN FURNITURE LIMITED

in a supplementary decision of Ms. Clare Boucher before the UKIPO dated 1 July 2019, acted for the Opponent. In this supplementary decision a partially revised specification was accepted by the hearing officer and the Opponent was successful in relation to sone of the services in Class 43. The parties were ordered to bear their own costs.

O/189/19 IN THE MATTER OF THE UK DESIGNATION OF IR NOS. 1330134, 1336257 AND 1344000 BY CENTURION CORPORATION LIMITED for DWELL STUDENT, DWELL and DWELL STUDENT LIVING (figurative) AND OPPOSITIONS NOS. 410349, 410381 AND 410384 BY COIN FURNITURE LIMITEDO/189/19 IN THE MATTER OF THE UK DESIGNATION OF IR NOS. 1330134, 1336257 AND 1344000 BY CENTURION CORPORATION LIMITED for DWELL STUDENT, DWELL and DWELL STUDENT LIVING (figurative) AND OPPOSITIONS NOS. 410349, 410381 AND 410384 BY COIN FURNITURE LIMITED

Before Ms. Clare Boucher before the UKIPO in a decision dated 9 April 2019, acted for the Opponent in a partially successful opposition under section 5(2)(b) of the Act. The decision allowed for revised specification which was the subject of a supplementary decision. Costs were reserved.

O/765/18 IN THE MATTER OF REGISTRATION NO. 2626480 IN THE NAME OF THE BRITISH STANDARDS INSTITUTION IN RESPECT OF THE KITEMARK TRADE MARK AND AN APPLICATION FOR A DECLARATION OF INVALIDITY THERETO UNDER NO 501689 BY OMEGA FLEX LIMITED

Before Mr. Mark Bryant for the Registrar at the UKIPO in a decision dated 28 November 2018, acted for the Applicant for Invalidity as instructing solicitor and briefed Michael Bloch QC (now KC) and Tom Cleaver, both of counsel for the hearing. In summary the Applicant for Invalidity was largely successful, and the BSI was ordered to pay the costs of the Applicant for Invalidity. At paragraph 66 of the decision "In respect of the grounds based upon section 3(1)(b), section 3(3)(a) and section 3(3)(b) of the Act, the application for invalidation fails only in respect of the services set out at paragraph 34, but succeeds in respect of all other goods and services for which the original registration covered and those surrendered in March 2018. In respect of the ground based upon section 3(6), it fails only in respect of the services set out in paragraph 62 and is successful in respect of all other goods and services including those surrendered by the proprietor in March 2018.

O-606-18 IN THE MATTER OF TRADE MARK NO 3,003,117 IN THE NAME OF NUANTI LIMITED IN THE MATTER OF AN APPLICATION FOR INVALIDATION BY GOOGLE INC AND IN THE MATTER OF AN APPEAL FROM THE DECISIONS OF LOUISE WHITE DATED 22 FEBRUARY 2018 (O/122/18)

Before Mr. Phillip Johnson dated 24 September 2018, successfully acted for the Respondent, Google, Inc in an appeal before the Appointed Person. The appeal was dismissed and, accordingly, the application for invalidation of the mark was successful. UK registration number 3003117 refused registration pursuant to sections 5(4)(a) of the Trade Marks Act. No order as to costs.

O/351/18 IN THE MATTER OF APPLICATION NO. 3139659 BY RWH TRAVEL LIMITED FOR THE TRADE MARK CHAPTERS IN CLASSES 36, 39, 41 AND 43 AND THE OPPOSITION THERETO UNDER NUMBER 406388 BY NEW LIGHT HOTELS LIMITED

Before Ms. Judi Pike for the Registrar at UKIPO in a decision dated 12 June 2018, acted for the Opponent in, an opposition, on the papers. Neither party chose to be heard and neither filed written submissions in lieu of a hearing. The Opponent's opposition was partially successful for the core services of concern in Classes 36, 39 and 43 and the Opponent was awarded scale costs.

O-481-16 IN THE MATTER OF THE TRADE MARKS ACT 1994 TRADE MARK APPLICATION No, 3093665 BY CAFFÈ NERO GROUP LTD AND OPPOSITION No. 404855 BY ELAH-DUFOUR S.p.A.

Before Mr. Allan James, for the Registrar in a decision dated 12 October 2016, acted as counsel for the Applicant, CAFFÈ NERO GROUP LTD in a defended trade mark opposition for the trade mark NERO EXPRESS. The Applicant was partially successful and there was no order as to costs.

Hoyle v Hoyle [2017] NZCA 516; Hoyle v Hoyle [2016] NZHC 3120

(copyright infringement proceedings involving industrially applied copyright, acting for successful plaintiff / copyright owner)

O/068/16 IN THE MATTER OF TRADE MARK APPLICATION Nos. 2635619 & 2635620 BY CIRCLE HEALTH LIMITED AND IN THE MATTER OF CONSOLIDATED OPPOSITIONS THERETO UNDER NOS 104481 & 400409 BY CIRCLE ANGLIA LTD

Before Mr. Mark King before the UKIPO in a decision dated 9 February 2016, acted for the Opponent (no appearance at hearing) in a partially successful decision under section 5(2)(b) of the Act.