Alliance Consultants Pty Ltd

Alliance Consultants Pty Ltd sought to register the trade mark "emortgage" across several classes of goods and services, including computer hardware and software, business consultancy, and services related to electronic commerce. The application faced rejection on grounds of non-distinctiveness under section 41 of the *Trade Marks Act 1995* (Cth) and potential conflict with an earlier trade mark application under section 44 of the Act. The delegate of the Registrar of Trade Marks was required to determine whether the mark was capable of distinguishing the applicant's offerings and whether it was deceptively similar to the cited mark.

The delegate considered the word "emortgage" to be descriptive of online mortgage-related goods and services, thus lacking inherent distinctiveness. While the stylised representation of the letter 'e' on a disc added some degree of inherent adaptation, the evidence of use presented was deemed insufficient to establish that the mark had acquired the capacity to distinguish the applicant's goods and services. Regarding the section 44 objection, the delegate found that while the applicant's mark was not substantially identical to the cited mark "epeople," there was a strong likelihood of confusion due to the shared prominent "e disc" element, leading to a belief of common trade origin.

Despite the finding of deceptive similarity, the delegate considered that the circumstances surrounding the relationship between the applicant and the owner of the cited trade mark, including their initial joint venture and subsequent separate development with mutual knowledge, suggested honest concurrent use. Therefore, the delegate indicated a willingness to accept the application subject to obtaining a letter of consent from the owner of the cited trade mark, thereby overcoming the section 44 objection under paragraph 44(3)(b) of the Act. The delegate also noted that the description of services in class 42 lacked clarity and required a more suitable statement.