Brilliance Publishing, Inc v My Brilliance Pty Ltd

This decision concerns a trade mark opposition proceeding before Hearing Officer Michael Kirov. The applicant, Brilliance Publishing, Inc, sought to register the trade mark "BRILLIANCE PUBLISHING" (the Opposed Mark). The opponent, My Brilliance Pty Ltd, opposed the registration on various grounds, including under section 60 of the relevant Act, which relates to the reputation of an earlier trade mark. The primary dispute revolved around whether the Opposed Mark was likely to cause confusion with the opponent's existing trade mark, the "s 60 Mark," which also prominently featured the word "BRILLIANCE" and was used in the publishing field.

The Hearing Officer was required to determine whether the opponent had established its grounds of opposition, particularly under section 60, and consequently, whether to refuse or register the Opposed Mark. A secondary issue, addressed at the outset of the hearing, concerned a request for further evidence from the applicant, which was permitted under regulation 21.15(4) of the Trade Marks Regulations. This regulation allows the Registrar to be informed in any way the Registrar reasonably believes to be appropriate, acknowledging that the Registrar is not bound by the rules of evidence.

In reaching his decision, the Hearing Officer considered the substantial use of the opponent's "s 60 Mark" in the publishing field, where the word "BRILLIANCE" was the dominant distinctive element. He noted that the Opposed Mark contained the identical word prominently, and that the opponent had used the "s 60 Mark" in conjunction with its name and domain name since 2013. Balancing these factors, the Hearing Officer was satisfied that the use of the Opposed Mark for the claimed goods and services was likely to cause confusion amongst a significant number of people, given the reputation of the "s 60 Mark" as at the priority date. The goods and services were considered broadly similar and aimed at the same market.

Accordingly, the Hearing Officer found that the opposition was successful on the ground raised pursuant to section 60 of the Act. As a result, trade mark application number 1655691 was refused. The opponent, as the successful party, was awarded costs against the applicant.