Accentuation Pty Limited v Accenture Global Services GmbH

Accentuation Pty Limited (the opponent) opposed the registration of the trade mark ACCENTURE by Accenture Global Services GmbH (the applicant). The dispute concerned the potential for confusion between the two trade marks, given that Accentuation had provided consultancy services to Accenture (formerly Andersen Consulting) since 1995. The opponent argued that the similarity in the names, colours, and font types used by the applicant had led to instances of confusion among consumers. The matter was heard by Mary Skivington, a Hearing Officer at the Trade Marks Hearings.

The primary legal issue before the Hearing Officer was whether the opponent had established sufficient reputation in its trade mark ACCENTUATION in Australia to warrant opposition to the applicant's proposed registration. This involved determining whether the opponent's use of its trade mark had amassed a reputation sufficient to lead consumers into deception or confusion if another trader used a substantially identical or deceptively similar trade mark. The opponent also sought to rely on grounds of opposition under subsections 44(1) and (2) of the relevant Act.

The Hearing Officer found that while the opponent had provided evidence of its business operations and some instances of confusion, it had not sufficiently established the requisite reputation in its trade mark at the relevant date. The Hearing Officer noted that reputation in Australia must be established as a question of fact and that simply providing services under a trade mark does not automatically demonstrate a reputation that would lead to consumer deception. Despite this, the Hearing Officer found that the opponent had established grounds of opposition under subsections 44(1) and (2) of the Act in relation to specific classes of goods and services.

Consequently, the Hearing Officer ordered that the applicant's trade mark be refused registration as it stood. However, the applicant was given an opportunity to consent to restrict its specification of goods and services by deleting certain classes and services. If this restriction was made within fourteen days, the trade mark could proceed to registration one month thereafter, unless an appeal was filed. The Hearing Officer also awarded costs against the applicant in favour of the opponent, given the opponent's significant degree of success.