COMPASS Pathfinder Limited

COMPASS Pathfinder Limited sought to extend protection to Australia of its International Registration 1570415, designating it under number 2148840, for goods in Class 5 and services in Class 44. The application was examined by IP Australia, which provisionally refused the extension of protection based on a potential conflict with an earlier registered trade mark, registration number 1344003, known as "Compass Health Group," owned by Compass Health Group Pty Ltd. This refusal was maintained for the services in Class 44, but no objection remained for the goods in Class 5. COMPASS Pathfinder Limited requested a hearing before a delegate of the Registrar of Trade Marks to address the outstanding objection.

The delegate was required to determine whether the trade mark "COMPASS PATHWAYS" was substantially identical with or deceptively similar to the earlier registered trade mark "Compass Health Group," and whether the services offered under "COMPASS PATHWAYS" were similar or closely related to the services covered by the earlier registration. Specifically, the delegate had to consider if the common element "COMPASS" in both marks, when viewed in conjunction with the differing subsequent words and the nature of the respective goods and services, was likely to deceive or cause confusion among consumers, thereby infringing section 44 of the *Trade Marks Act 1995* (Cth).

In reaching a decision, the delegate noted that the first requirement for a valid objection – that the cited registration had an earlier priority date and was held by a different entity – was satisfied. The delegate also found the services offered under "COMPASS PATHWAYS" to be similar to those of the cited registration, encompassing therapy for mental health conditions, which was considered broad enough to include psychological services like assessment and counselling. However, the delegate did not consider the goods in Class 5 to be closely related to the cited services. The core of the delegate's reasoning focused on the assessment of deceptive similarity. Applying the principles from *Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd* and subsequent authorities, the delegate compared the marks, considering their visual, aural, and conceptual aspects, and the impression they would leave on consumers with imperfect recollection. The delegate concluded that while both marks shared the word "COMPASS," the additional words "PATHWAYS" and "Health Group" created sufficient differences in the overall impression conveyed by each mark, preventing them from being considered substantially identical or deceptively similar.

Consequently, the delegate was not satisfied that there were grounds for rejecting the extension of protection for the trade mark "COMPASS PATHWAYS" under section 44 of the *Trade Marks Act 1995* (Cth) in relation to the services in Class 44. The delegate therefore accepted the application for the extension of protection of International Registration number 1570415 designating Australia under number 2148840.