Blue River Finance Pty Ltd v Lendi Pty Ltd

[2023] ATMO 132

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Lendi Pty Ltd to registration of trade mark application number 2095363 (class 36) – Lendigo – in the name of Blue River Finance Pty Ltd

Delegate:	Nicholas Barbey
Representation:	Opponent: Cooper Mills Lawyers Pty Ltd Applicant: Self-represented
Decision:	2023 ATMO 132 Trade Marks Act 1995 (Cth) – opposition under s 52 – ss 42(b), 44 and 60 pursued – none established – trade mark may proceed to registration

Background

1. This decision concerns an opposition brought by Lendi Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to registration of the following trade mark:

   Trade mark:  Lendigo          (‘Trade Mark’)         

   Application number:              2095363

   Owner:  Blue River Finance Pty Ltd    (‘Applicant’)

   Filing date:  11 June 2020

   Specification:  Class 36: advisory services relating to loan services; financial loan services; guaranteeing loans; loan financing; loan services; loan services for property investment; loans (financing); loans against securities; mortgage loan services; mortgage loans; provision of bridging loans; provision of loans; provision of mortgage loans; provision of real estate loans; provision of secured loans; revolving loan services; secured loans; syndicated loans; advisory services relating to mortgages; agency services for lending on mortgage; commercial mortgage brokerage; lending on mortgage; mortgage brokerage services; mortgage brokering; mortgage broking; mortgage financing services; mortgage investment management; mortgage lending; mortgage services; provision of information relating to mortgages; provision of mortgage funds; provision of mortgages; financial investment management services; investment management; investment management of funds; portfolio investment management; real estate investment management; corporate trustee services; executor and trustee services; investment trusteeship; trustee advisory services; trustee services; unit trust trusteeship; arranging finance for construction projects; corporate finance services; provision of commercial finance; provision of equipment finance; provision of finance; advice regarding lending services; commercial lending; corporate lending; financial lending; lending against securities; lending against security; money lending; capital investment; capital investment advisory services; capital investment in real estate; financial management of capital investment funds; investment trust management; investment trust services; commercial property investment services; advisory services relating to financial investment; advisory services relating to investments; financial advisory services

   (‘Services’)

2. The acceptance of the Trade Mark for possible registration was advertised on 12 November 2020. The Opponent filed a notice of intention to oppose on 11 January 2021, followed by a Statement of Grounds and Particulars (‘SGP’) on 5 February 2021. The Applicant filed a notice of intention to defend on 28 March 2021.

3. Evidence in Support (‘EIS’) was filed by the Opponent. In turn, the Applicant filed Evidence in Answer (‘EIA’) and a hearing by way of written submissions was subsequently requested. Neither party filed written submissions.

4. The matter has been allocated to me, a delegate of the Registrar of Trade Marks (‘Registrar’), to decide based on the abovementioned materials.

   Grounds of opposition, onus and standard of proof

5. The SGP nominated grounds of opposition under ss 42(b), 44 and 60 of the Act. To be successful, the Opponent bears the onus of establishing at least one of these grounds.[1] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2]

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot

6. The date at which the rights of the parties are to be determined is 11 June 2020 (‘Relevant Date’), being both the filing and priority date of the Trade Mark.

   Evidence

7. The following declarations were filed:

EIS

• Declaration made on 7 July 2021 by Zara Cobb (Chief Marketing Officer of the Opponent) with Annexure ZC-1 and Confidential Annexure ZC-2 (‘Cobb Declaration’).

EIA

• Declaration made on 7 October 2021 by Ulrika Lobo (Director of the Applicant) with Annexure UL (‘Lobo Declaration’).

1. As a preliminary matter, the Lobo Declaration contains a blanket statement that its contents are confidential.[3] This statement is difficult to reconcile with the discussion of publicly available records and information that occurs within the declaration. Plainly, the Applicant has an interest in preserving its confidential information. However, the Registrar must provide reasons for her findings. In discharging this duty, the information claimed to be confidential may require discussion. This is particularly relevant when little to no effort has been made to identify the allegedly confidential information. Accordingly, where such discussion is unavoidable, broad statements will be used to minimise the risk of divulging commercially sensitive information.

   EIS

   [3] Lobo Declaration, [9].

2. According to the Cobb Declaration, the Opponent is ‘a leading Australian mortgage broking and technology company’ that was established in 2013.[4] Its mission is ‘to disrupt the status quo in the home loan market by using technology to improve customer experience and outcomes’.[5] The Opponent achieves this via its proprietary technology platform which allows customers ‘to search, compare, apply for and settle home loans entirely online’.[6]

   [4] Cobb Declaration, [12].

   [5] Ibid [13].

   [6] Ibid [14].

3. The Opponent is the owner of various Australian trade mark registrations that incorporate the term ‘lendi’.[7] These registrations include (together ‘Lendi Marks’):

   [7] See Australian trade mark registrations 1757087, 1839725, 2148237, 2148241, 2149898.

Number	Trade mark	Specification	Priority date
1757087	Lendi (‘87 Mark’)	Class 35: price comparison services Class 36: provision of home loans; advice relating to mortgages for residential properties; advice services relating to enhancement of mortgages; advisory services relating to mortgages; agency services for lending on mortgage; commercial mortgage brokerage; insurance services for the protection of mortgages; lending on mortgage; mortgage advice; mortgage and savings services; mortgage banking; mortgage banking and brokerage; mortgage brokering; mortgage broking; mortgage lending; mortgage loan services; provision of information relating to mortgages; provision of mortgage loans; provision of mortgages; provision of online mortgage repayment calculators	7 March 2016
1839725	(‘25 Mark’)		20    April 2017

1. The Opponent has offices throughout Australia as well as ‘a team of mortgage brokers and home loan specialists who provide its customers with loan advisory and consultancy support and services’.[8] Its panel of lenders include major banks, mid-tier banks as well as specialist lenders. Ms Cobb declares that ‘over 2 million Australians had visited the Lendi website’ and the Opponent had ‘processed over 20,000 home loan applications’ as at the Relevant Date.[9]

   [8] Cobb Declaration, [15].

   [9] Ibid [19].

2. The Opponent promotes its services under the Lendi Marks through ‘a range of marketing channels, including outdoor advertisements, online advertisements, large scale sports sponsorships and television commercials’.[10] Annual turnover and total marketing spend figures for the financial years 2016 to 2020 are provided. The figures disclosed indicate that the Opponent has enjoyed considerable year on year growth in turnover and there has been a significant level of annual promotional expenditure.

   [10] Ibid [24].

3. It is declared that the Opponent embarked on a joint venture with Domain Group (‘Domain’) in June 2017. Ms Cobb describes Domain as ‘Australia’s leading real estate media and technology business’ and remarks that this venture produced ‘Australia’s first end-to-end property search and financing platform’.[11] Similarly, she states that the Opponent ‘completed a merger with Aussie Home Loans to form the Lendi Group’ in May 2021.[12] In Ms Cobb’s opinion, the Opponent is ‘Australia’s leading online home loan platform’ and the Lendi Marks have ‘established a substantial reputation in Australia’.[13]

   [11] Ibid [18].

   [12] Ibid [22].

   [13] Ibid [17], [34].

4. The Cobb Declaration explains that ‘it is common for finance and banking businesses to combine their brand with another word as a sub-brand or product name’.[14] Examples of businesses adopting this practice include ‘Virgin Money [who] markets one of its personal banking products as Virgin Money Go’, ‘RAMS [who] markets one of its personal banking products as RAMS Action’ and ‘Gateway Bank’s banking app [which] is named Gateway 2go’.[15] In Ms Cobb’s view, the Trade Mark wholly encompasses the term ‘lendi’ and consumers are likely to be confused or deceived into believing that the Trade Mark is the Opponent’s sub-brand or is otherwise connected to the Opponent.

   EIA

   [14] Ibid [39].

   [15] Ibid.

5. The Lobo Declaration describes the Applicant as being ‘an investment management and lending business’ that was founded in 2019.[16] Ms Lobo declares that the Trade Mark is a derivative of ‘Lend2go’ and is intended to have the ‘connotation of being a lender with quick service and a fast turnaround of funds’.[17]

   [16] Lobo Declaration, [2].

   [17] Ibid [11], [13].

6. Ms Lobo claims that ‘lend’ is ‘an ordinary word which is common in the finance industry and a verb in the English language’.[18] In her estimation, consumers would pay more attention to the end of the Trade Mark because it is on trend for traders to add a suffix to an ordinary verb to transform it ‘into a single-word business name’.[19] Reference is made to Australian trade mark registrations for terms such as ‘Lendly’, ‘LendEx’, ‘Lendico’, ‘Lendo’ and ‘Lendium’ in class 36 to support this.[20] Ms Lobo opines that this naming practice is not limited to the financial services industry. Examples of other industries utilising this practice are said to include ‘Deliveroo and Deliveree’, ‘Flickity and Flickr’, ‘Sendle and Sendly’ as well as ‘Spotify and Spoterro’.[21]

   [18] Ibid [15].

   [19] Ibid [14].

   [20] See Australian trade mark registration numbers 1563363, 1604524, 1639435, 1755032, 1797042. For completeness, none of these trade marks were particularised in the SGP and no request to amend the SGP was filed by the Opponent.

   [21] Lobo Declaration, [20] (emphasis omitted).

7. The remainder of the Lobo Declaration contains statements in the nature of submissions rather than evidence. Relevantly, Ms Lobo asserts that the Trade Mark and a composite mark that includes the word ‘Lendigo’ are dissimilar to the Lendi Marks. It is claimed that the parties operate in different sections of the financial services industry and target different audiences. Ms Lobo criticises the alleged sub-brand practice advanced in the EIS. In her view, the examples provided reveal ‘that in every instance, the mark is separated from other words added to the series’ and thus are distinguishable from the present circumstances.[22] Ms Lobo asserts that consumers seeking financial services are ‘well informed and would make discerning decisions about which product/service they are seeking’.[23]

   Discussion

   [22] Ibid [53].

   [23] Ibid [56].

   Section 44

8. Section 44 of the Act relevantly provides:

   Identical etc. trade marks
   (2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if:

   (a) it is substantially identical with, or deceptively similar to:

   (i) a trade mark registered by another person in respect of similar services or closely related goods; or
   (ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

   (b) the priority date for the registration of the applicant's trade mark in respect of the applicant's services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

9. To establish this ground, the Opponent must identify at least one trade mark which satisfies the following requirements:

   (i)it is in the name of a person other than the Applicant;

   (ii)it has a priority date which is earlier than the Relevant Date;

   (iii)it is in respect of services and/or goods which are similar and/or closely related to the Services; and

   (iv)it is substantially identical with, or deceptively similar to, the Trade Mark.

10. The SGP identified the Lendi Marks as supporting this ground of opposition. The following discussion will be confined to a comparison between the 87 Mark and the Trade Mark. If the 87 Mark is not found to be at least deceptively similar to the Trade Mark, the same conclusion will follow in respect of the 25 Mark given it has additional points of dissimilarity to the Trade Mark.

11. The 87 Mark is in the name of a person other than the Applicant and has a priority date which is earlier than the Relevant Date. The 87 Mark’s registered claims for various mortgage services are notionally contained in and evidently similar to the Services which include claims for, inter alia, ‘financial advisory services’ and ‘loan services’. Requirements (i), (ii) and (iii) set out at [19] of this decision are satisfied.

12. Turning to requirement (iv) outlined at [19] of this decision, the test for determining ‘substantial identity’ was described by Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):

    In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[24]

    [24] [1963] HCA 66, [12] (‘Shell’).

13. Reproduced below are the trade marks:

87 Mark	Trade Mark
Lendi	Lendigo

1. A side by side comparison reveals clear differences. The 87 Mark is comprised of five letters whereas the Trade Mark is seven letters in length. Each trade mark commences with the prefix ‘lend-’, however, the tail end of each differs. The 87 Mark terminates with the single letter ‘i’ which markedly contrasts with the ‘-igo’ suffix of the Trade Mark. These obvious differences result in a total impression of dissimilarity emerging from the relevant comparison. As such, the trade marks are not substantially identical.

2. Section 10 of the Act provides that ‘a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion’. The assessment of deceptive similarity was considered in Shell by Windeyer J who said:

   The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].[25]

   [25] Ibid [13].

3. For the reasons which follow, I do not consider the trade marks to be deceptively similar.

4. As a general principle, the first part of a trade mark is the most important for comparative purposes.[26] Here, each trade mark commences with the identical prefix ‘lend-’. However, by itself, this does not automatically render the trade marks deceptively similar as regard must be had to the nature of the commonality in the context of the relevant services. In C A Henschke & Co v Rosemount Estates Pty Ltd, Finn J observed:

   [P]articular attention ought be paid to the first part of a name for generally the first word or syllable provides the most important means of distinguishing marks ... save where the initial word or syllable is both common to the marks and is common to the trade or is commonly used by a number of trade mark proprietors, in which case the emphasis is to fall on other portions of the mark as a means of distinguishing them.[27]

   [26] London Lubricants (1920) Limited's Application (1925) 42 RPC 264, 279 (Sargant LJ).

   [27] [1999] FCA 1561, [35] (emphasis added).

5. In the context of various investment and lending services, the prefix ‘lend-’ has an obvious descriptive significance. This is reflected in the EIA that shows numerous trade mark owners incorporate this prefix for their respective class 36 services.[28] The implications of this are twofold. First, consumers are likely to rely on the presence of other elements to distinguish between trade marks containing the prefix ‘lend-’. Second, any similarities arising from this commonality should, to an extent, be discounted when assessing the trade marks.

   [28] Lobo Declaration, Annexure UL, Tab 1.

6. A visual inspection of the trade marks reveals a baseline similarity insofar as ‘lendi’ forms the first five letters of the Trade Mark and it constitutes the entirety of the 87 Mark. However, this similarity is materially altered by the fusing of ‘lendi’ with ‘go’ which creates a unified word and changes the overall visual impact of the Trade Mark. The Opponent led no cogent evidence to suggest that ‘go’ is non-distinctive nor has it advanced any compelling reason as to why ‘go’ would be separately discerned within the Trade Mark. In short, the Trade Mark does not visually present as a conjoining of two words wherein ‘lendi’ would be readily apprehended as a discrete element within the Trade Mark.

7. Further dissimilarities emerge when the trade marks are compared aurally. The 87 Mark is disyllabic whereas the Trade Mark is trisyllabic. This variance distinguishes the trade marks because the Trade Mark’s structure places emphasis on the first and last syllables. Potentially, it may be mispronounced or slurred as, for example, ‘len-dee-o’ or ‘len-ee-go’. However, consumers failing to enunciate both the ‘g’ and ‘o’ in the Trade Mark simultaneously is, in my view, remote. This is particularly so given the close parallels that the Trade Mark shares with the Australian city name of ‘Bendigo’ which, conceivably, may influence how it is pronounced or referenced.

8. Conceptually, each trade mark appears to be an invented word. Ordinarily, this will exacerbate the potential for deception or confusion given neither trade mark has an established meaning by which to differentiate one from the other. However, a lack of conceptual dissimilarity does not necessarily prove conceptual similarity and, even if it did, ideational similarity alone is not sufficient to establish deceptive similarity.[29] Be that as it may, it remains that the trade marks look and sound quite different. Thus, a lack of conceptual dissimilarity is not determinative in this instance.

   [29] Telstra (n 2) [212].

9. In assessing whether there is a likelihood of deception or confusion, it is appropriate to consider all the surrounding circumstances including the nature of the prospective purchaser.[30] Here, the services offered under the trade marks are unlikely to be impulsively sought given they traditionally involve a sustained financial commitment. It is probable that consumers seeking investment and lending services will be attentive and exercise reasonable care when selecting the services. Naturally, this increased discernment reduces the potential for deception or confusion occurring.

   [30] Registrar of Trade Marks v Woolworths [1999] FCA 1020, [50(iii)] (French J).

10. Another surrounding circumstance is the environment in which the services will be acquired.[31] Broadly speaking, loans typically require documentation to be sighted by the consumer or, at the very least, materials to be visually inspected and compared. In these circumstances, the visual impression of the trade marks should be attributed greater significance as transactions may be processed without any verbal exchange taking place. Given the significant visual dissimilarities between the trade marks, the environment in which the services are acquired further diminishes the potential for deception or confusion between the trade marks.

    [31] Ibid.

1. In light of the above, I am satisfied that there is no real and tangible danger of confusion between the 87 Mark and the Trade Mark. Sufficient differences exist between the trade marks such that, even allowing for imperfect recollection, the trade marks are readily distinguished when judged as wholes. It follows that the 25 Mark is also not deceptively similar to the Trade Mark.

2. The s 44 ground of opposition has not been established.

   Section 60

3. Section 60 of the Act relevantly provides:

   Trade mark similar to trade mark that has acquired a reputation in Australia
   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
   (b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

4. To establish this ground, the Opponent must demonstrate the existence of another trade mark which had acquired a reputation in Australia before 11 June 2020. The Opponent must then establish that because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.

5. This ground of opposition was particularised in the SGP as follows:

   The Opponent provides a range of home loan services, including home loan advisory, comparison, brokerage and technology services, to customers in Australia.

   The Opponent has extensively used and promoted the trade mark LENDI (Lendi Mark) in Australia in connection with its services since at least 2016.

   As a result of the Opponent’s extensive promotion and use of the Lendi Mark, the Lendi Mark has developed an [sic] substantial reputation and is well known in Australia.

   Because of the reputation in the Lendi Mark, the use of the [Trade] Mark by the Applicant would be likely to deceive or cause confusion.

6. Accordingly, the Opponent does not rely on the 25 Mark. Instead, it relies solely on the reputation of the 87 Mark at the Relevant Date as the basis for this ground of opposition.

   Reputation

7. The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick (‘McCormick’) as referring to ‘the recognition of the [trade mark] by the public generally’.[32] Her Honour quoted with approval the following statement of Lockhart J in ConAgra Inc v McCain Foods (Aust) Pty Ltd (‘ConAgra’):

   [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum, and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner ... .[33]

   [32] [2000] FCA 1335, [81] (‘McCormick’).

   [33] [1992] FCA 159, [118] (‘ConAgra’).

8. Further, Kenny J observed in McCormick that:

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product … public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.[34]

   [34] McCormick (n 32) [86].

9. In Monster Energy Company v Mixi Inc, Stewart J explained that:

   The assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under the trade mark and contemplation of the advertising and promotional figures. The quantum of sales, advertising and promotions contribute to the “recognition” component of reputation. The credit, image and values projected by a trade mark attach to the “esteem” component of the reputation, as do the public events and other traders’ marks with which the owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, and so forth.[35]

   [35] [2020] FCA 1398, [16].

10. The reputation in the other trade mark must be amongst a ‘significant or substantial’ number of Australian consumers but this is tempered by the nature of the relevant market.[36] Meanwhile, the existence and extent of the asserted reputation must be established as a matter of fact by the Opponent.[37]

    [36] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

    [37] ConAgra (n 33) [77].

11. The relevant market for home loan services is not specialised and would inevitably include a wide cross section of the Australian population. The market would include first time borrowers, previous home owners, consumers seeking to refinance their existing loan as well as those with established property portfolios. As such, it is reasonable to characterise the relevant market as being a significant proportion of the adult population in Australia.

12. In my assessment, the evidence does not establish that the 87 Mark had acquired a reputation in Australia before the Relevant Date. At the outset, only a limited number of examples were provided in the EIS and many are undated[38] or demonstrate use of the 87 Mark with additions or alterations that substantially affect its identity – namely, the 25 Mark or the 25 Mark combined with the byline ‘Your home for home loans’. Of the relevantly dated evidence, there are examples where the 87 Mark is used by itself. However, such instances are limited and invariably appear in close proximity to the 25 Mark. Meanwhile, contrary to the particulars in the SGP which assert use since at least 2016, the earliest dated use of any trade mark in evidence is February 2017.[39] Again, these examples are generally dominated by use of the 25 Mark or variations thereof.

    [38] See, eg, Cobb Declaration, Annexure ZC-1, Tabs 1, 5–7.

    [39] Cobb Declaration, Annexure ZC-1, Tab 2.

13. With respect to the turnover and marketing spend, it is true that the figures disclosed are considerable. Normally, this lends credence to the existence of a reputation existing in the 87 Mark. However, the fundamental difficulty is that the evidence, as filed, indicates that these figures overwhelmingly pertain to use of the 25 Mark or variations thereof. This is apparent in the marketing examples which include television commercials and numerous videos uploaded to YouTube. The EIS contains ‘screen grabs’ of these videos. Whilst it may be the case that the audio component of these videos featured use of the 87 Mark,[40] the only evidence before me is of still images which show use of the 25 Mark. The same is true of the evidence provided in respect of the advertising on Sydney trams and the Opponent’s sponsorship of the West Coast Eagles Australian football club. It is the 25 Mark, not the 87 Mark, which is consistently featured.

    [40] Act s 7(2) which provides that ‘any aural representation of the trade mark is, for the purposes of this Act, a use of the trade mark’.

14. I acknowledge that the Cobb Declaration discusses a joint venture with Domain in June 2017. However, the EIS contains no material to substantiate the existence of this relationship or any commercial outcomes resulting from it. Similarly, Ms Cobb mentions the Opponent’s merger with Aussie Home Loans but there is no documentary evidence to support this and, in any event, the merger was completed in May 2021 which is after the Relevant Date. Finally, there are Facebook posts in evidence which indicate that the Opponent may have been shortlisted for, or potentially the winner of, some industry awards before the Relevant Date. However, these Facebook posts do not provide sufficient particulars regarding the nature or outcome of these awards and the articles hyperlinked within the posts have not been provided.

15. Overall, the EIS indicates that the 25 Mark had acquired a reputation in Australia before the Relevant Date. However, the 25 Mark is not relied on by the Opponent. The SGP makes it clear that the 87 Mark underpins this ground of opposition. Due to the aforementioned limitations, the EIS does not provide a cogent basis to conclude that the 87 Mark also enjoyed a reputation at the Relevant Date. Put simply, there is insufficient evidence before me demonstrating use of the 87 Mark before the Relevant Date. Importantly, the Opponent bears the onus of establishing a reputation as a matter of fact and the existence of a reputation in one trade mark does not necessarily flow to another trade mark that has a common element. Put differently, for the purposes of s 60, each trade mark must be considered separately based on the evidence filed.[41] Here, the Opponent has failed to discharge its evidential onus in respect of the 87 Mark.

    [41] See, eg, Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [89] (O'Bryan J); Qantas Airways Limited v Edwards [2016] FCA 729, [160] (Yates J).

16. Accordingly, I am not satisfied that the 87 Mark had acquired a reputation in Australia as at the Relevant Date amongst a significant or substantial number of Australian consumers. Therefore, consideration of s 60(b) of the Act is not required.

17. The s 60 ground of opposition has not been established.

    Section 42

18. Section 42(b) of the Act relevantly provides:

    Trade mark scandalous or its use contrary to law
    An application for the registration of a trade mark must be rejected if:

    …
    (b)  its use would be contrary to law.

19. To succeed under this ground, the Opponent must establish that use of the Trade Mark would be, rather than might be, contrary to law.[42]

    [42] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [411] (Rangiah J).

20. The SGP states the following:

    (a)The Opponent provides a range of home loan services, including home loan advisory, comparison, brokerage and technology services, to customers in Australia.

    (b)The Opponent has extensively used and promoted the trade mark LENDI (Lendi Mark) in Australia in connection with its services since at least 2016.

    (c)As a result of the Opponent’s extensive promotion and use of the Lendi Mark, the Lendi Mark has developed an [sic] substantial reputation and is well known in Australia.

    (d)Because of the substantial reputation of the Lendi Mark, the use of the [Trade] Mark by the Applicant would:

    (i) contravene the Australian Consumer Law; and

    (ii) constitute passing off.

21. The SGP seemingly identifies contraventions of ss 18 and 29 of the Australian Consumer Law (‘ACL’) in Schedule 2 of the Competition and Consumer Act 2010 (Cth) as well as the tort of passing off as underpinning this ground of opposition.

22. Section 18 of the ACL pertains to conduct or representations that have, or are likely, to mislead or deceive and s 29 of the ACL deals with representations that are false or misleading. The test for ‘misleading or deceptive conduct’ under s 18 of the ACL imposes a more stringent test than that for ‘deception or confusion’ under s 60 of the Act.[43] As the Opponent has failed to establish the s 60 ground of opposition, it follows that the Opponent has likewise failed to establish that use of the Trade Mark would be contrary to s 18 of the ACL. I reach the same finding regarding the assertion that use of the Trade Mark would be contrary to s 29 of the ACL.[44]

    [43] See, eg, Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).

    [44] Monster Energy Company v USA Nutraceuticals Group Inc [2017] ATMO 22, [58].

23. With respect to passing off, the observations of Hill J addressing the relationship between s 52 of the now repealed Trade Practices Act 1974 (Cth) (‘TPA’) and passing off in Re Equity Access Pty Ltd v Westpac Banking Corporation are relevant:

    The scope for the operation of s.52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s.52 or s.53 will invariably mean that proceedings for passing off would likewise fail.[45]

    [45] [1989] FCA 506, [40].

24. Section 18 of the ACL is the equivalent of s 52 of the TPA.[46] As such, I am not satisfied that use of the Trade Mark would amount to passing off because I have found that s 18 of the ACL would not be contravened.

    [46] See Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [410] wherein Rangiah J observed that ‘s 18 of the ACL replaced s 52 of the TPA and the provisions are in identical terms’.

25. The s 42(b) ground of opposition has not been established.

    Decision

26. Section 55 of the Act relevantly provides:

    Decision
    (1)  Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

    (a)  to refuse to register the trade mark; or
    (b)  to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

    having regard to the extent (if any) to which any ground on which the application was opposed has been established.

27. The Opponent has not established a ground of opposition. Trade mark application 2095363 may proceed to registration one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and the disposition of the application should be in accordance with the court’s order or direction.

    Costs

28. Both parties have sought an award of costs. Costs usually follow the event. Accordingly, I award costs against the Opponent per s 221 of the Act in the amounts set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth).

    Nicholas Barbey
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    5 September 2023

    
    

and Edelman JJ) (‘Telstra’).