Air Express International (Australia) Pty Limited v Australian European Insurance (Brokers) Pty Ltd

Air Express International (Australia) Pty Limited (the opponent) opposed the registration of two trade mark applications, AEI (plain letters) and AEI (stylised), filed by Australian European Insurance (Brokers) Pty Ltd (the applicant). The applications sought registration for insurance services, including those for the transport industries. The opponent, a freight forwarder and transport services provider, argued that its own long-standing use of the AEI trade mark for transport and storage services, and its offering of insurance as an ancillary service, would lead to confusion and deception if the applicant's marks were registered. The opposition was heard by the Registrar of Trade Marks.

The Registrar was required to determine several grounds of opposition, including whether the application trade marks were inherently capable of distinguishing the applicant's services under section 41 of the *Trade Marks Act 1995*, whether their use would be contrary to law under section 42(b), whether their use would be likely to deceive or cause confusion due to a connotation under section 43, and whether they were substantially identical or deceptively similar to the opponent's registered trade mark for similar services under section 44. The Registrar also considered grounds relating to ownership and passing off, though these were noted as being outside the exhaustive grounds specified in Division 2 of Part 5 of the Act.

Regarding section 41, the Registrar applied the current practice that three-letter trade marks are prima facie capable of distinguishing, unless they are well-known acronyms or abbreviations. The Registrar found that AEI did not fall into this category and that the likelihood of other insurance suppliers needing to use these initials was not high, thus dismissing this ground. Under section 42(b), the Registrar held that illegality must be inherent in the mark itself, and that potential confusion or deception alone did not render use contrary to law. As no specific legislation or court finding indicated illegality, this ground was dismissed. The section 43 ground was dismissed as there was no evidence of any connotation in the AEI marks beyond the letters themselves that would cause deception or confusion.

The Registrar found that the application trade marks were substantially identical or deceptively similar to the opponent's registered mark, and that the priority dates were not in dispute. The crucial issue under section 44 was the similarity of services. The applicant's services were "insurance services including insurance services to transport industries," while the opponent's services included "Transporting goods, storing goods...". Applying the principles of nature, purpose, and trade channels, and referencing a previous Registry decision concerning American Express and travel services, the Registrar concluded that insurance services and transport services were services of the same description. Therefore, the opposition succeeded on the ground of section 44.