Clarity Software Pty Ltd v Clarity Corporate Communications Pty Ltd

This matter concerned an opposition by Clarity Corporate Communications Pty Ltd (the Opponent) to an application by Clarity Software Pty Ltd (the Applicant) to register a trade mark. The dispute centred on whether the Applicant's proposed trade mark should be registered for certain services, with the Opponent arguing it should be refused on grounds including those under sections 44 and 58 of the relevant Act. The decision was made by Michael Kirov, a Hearing Officer at Trade Marks Hearings.

The primary legal issues before the Hearing Officer were whether the Applicant's proposed trade mark was substantially identical or deceptively similar to a registered trade mark owned by the Opponent for similar services, and whether the Applicant had prior use of its mark that would justify registration despite the Opponent's rights. Specifically, the Hearing Officer had to determine if the Applicant could rely on the exceptions provided by sections 44(3) or 44(4) of the Act, which relate to honest concurrent use or continuous use prior to the Opponent's priority date, respectively. The Hearing Officer also considered the Opponent's ground of opposition under section 58.

The Hearing Officer found that the Opponent had established its grounds for opposition under sections 44(2) and 58 of the Act. The Applicant failed to demonstrate honest concurrent use under section 44(3)(a) or continuous use prior to the Opponent's priority date under section 44(4). The evidence presented by the Applicant, including declarations from individuals who had used their services, was insufficient to prove continuous use of the Opposed Mark for the relevant services before the critical priority date. Consequently, the Hearing Officer determined that the Applicant could not rely on these exceptions.

As a result of these findings, the Hearing Officer ordered that the Applicant's application be amended to delete the services in respect of which the opposition was upheld. The application would be amended one month from the date of the decision, unless a notice of appeal was served on the Registrar, in which case the disposition would be in accordance with any court direction. Given that each party had achieved partial success, no order was made regarding costs.