An “all or nothing” approach to trade mark opposition proceedings in Australia?

A Hearing Officer at IP Australia recently upheld McDonald’s opposition against the mark McKosher in respect of a broad range of goods and services in classes 29, 30, 32 and 43. McDonald’s demonstrated a reputation in Australia in various earlier Mc-formative trade marks such that there was a likelihood of contextual confusion. The McKosher mark was “of the same conceptual genre as the Opponent’s McXXX formative trade marks which have a particular strong association with both the restaurant services and its marketing activities”.

What is perhaps most interesting about the decision is the manner in which the Hearing Officer disposed of the matter as against the entirety of the specification, notwithstanding that the grounds appear to only have been established for a part of the specification. The Hearing Officer noted that there were “no submissions from the Applicant concerning the fate of the Trade Mark for those services within the specification other than the food-related goods and services in relation to which the opposition has been established” (our emphasis). The Hearing Officer may have had in mind here goods such as “algae prepared for human foods” (class 29) and “rental of drinking water dispensers” (class 43) as covered by the McKosher application.

The Hearing Officer went on to refer by way of support to a recent Federal Court decision in which the fate of a trade mark application in respect of one class of goods was considered determinative as regards the remaining classes. In the result, the McKosher application was rejected for all the goods and services.

The McKosher decision is now one of a number of recent decisions in which trade mark applications have been rejected as against the entirety of the specification, following a hearing, notwithstanding that the grounds for rejection were not necessarily made out to this extent.

We may have to wait until substantive grounds are only (or are only likely to be) partially made out against goods and services of core commercial importance to an applicant before this practice is fully tested. Until then, opponents will clearly welcome outcomes of this nature. Applicants defending trade mark oppositions may wish to consider whether to take proactive steps such as filing a divisional application for those goods and services against which an opposition has lesser prospects.