ACP Masthead Nominees Pty Ltd v Bourne Properties Pty Ltd

This matter concerned an opposition by ACP Masthead Nominees Pty Ltd (the opponent) to the registration of a trade mark by Bourne Properties Pty Ltd (the applicant). The opposition was brought under sections 42 and 60 of the *Trade Marks Act 1995* (Cth), which incorporate grounds under section 52 of the *Trade Practices Act 1974* (Cth). The court was required to determine whether the opponent had established these grounds for opposition.

The legal issues before the court were whether the applied-for trade mark was substantially identical with, or deceptively similar to, the opponent's registered trade mark "BELLE", which had acquired a reputation in Australia prior to the applicant's priority date. Crucially, the court had to determine if the use of the applied-for trade mark would be likely to deceive or cause confusion, as required by section 60 of the *Trade Marks Act 1995*. The court noted that the threshold for establishing a ground under section 52 of the *Trade Practices Act 1974* was potentially higher than under section 60 of the *Trade Marks Act 1995*, and therefore considered section 60 first.

The court reasoned that to succeed under section 60, the opponent needed to demonstrate that the applied-for mark was substantially identical or deceptively similar to its "BELLE" trade mark, which had a reputation in Australia at the relevant time, and that this reputation would lead to deception or confusion through the use of the applied-for mark. The evidence indicated that the opponent published a magazine focused on design and interior furnishings under the "BELLE" trade mark, which had been published in Australia since the early 1970s and had established a reputation. The opponent also licensed the "BELLE" trade mark for use in relation to real estate services. The court found that the opponent had not established the grounds of opposition under sections 42 and 60 of the *Trade Marks Act 1995*, nor consequently under section 52 of the *Trade Practices Act 1974*.