Crescent Capital Partners Management Pty Ltd v Crescent Wealth Investments Australasia Pty Ltd - [2023] ATMO 164

TRADE MARKS ACT 1995

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

Re:Opposition by Crescent Capital Partners Management Pty Ltd to registration of trade mark application numbers 1874318 and 1874320 (both in class 36) – CRESCENT WEALTH with device - in the name of Crescent Wealth Investments Australasia Pty Ltd.

Delegate:

Nicole Worth

Representation:

Opponent: Edward Heerey, counsel, instructed by Gilbert + Tobin Lawyers

Applicant: Samuel Hallahan, counsel, instructed by Corrs Chambers Westgarth

Decision:

2023 ATMO 164

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under ss 44, 58A, 58, 60, 42(b) and 62A pursued – s 44 established – 44(3)(a) applied in respect of certain services - no other grounds established in respect of services to which 44(3)(a) applies – registration may proceed in respect of amended services.

Background

This decision is pursuant to an opposition to registration under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’). Crescent Wealth Investments Australasia Pty Ltd (‘Applicant’) has filed applications to register two trade marks, detailed below.

Application no.: 1874318	Application no.: 1874320
Trade mark:	Trade mark:
Filing date: 20 September 2017	Filing date: 20 September 2017
Services: Class 36: Development of investment products; discretionary fund management services; financial information services; financial investment services; financial portfolio management; financial services; financing of property development; funds management; funds investment; investment funds management; investment portfolio management services; development and management of pension, retirement and superannuation plans, funds and schemes; management services for real estate investment; provision of investment information; real estate acquisition and development for the purpose of investment; services relating to unregistered managed investment schemes.

I will refer to the trade marks collectively as ‘the Trade Marks’, differentiating them as and if necessary (the first is represented in colour, but is not limited to those colours). Similarly, the services specified in each application are identical so I will refer to them collectively as ‘the Services’.
The Trade Marks were examined as required by s 33 of the Act. Grounds for rejection were raised under ss 44 and 42(b), on the bases that the Trade Marks were deceptively similar to two trade marks owned by Crescent Capital Partners Management Pty Ltd (‘Opponent’) and that registration of the Trade Marks would breach orders issued by the Federal Court pursuant to court action between the parties. The examination of the Trade Marks culminated in a hearing decision issued by this office which found that the provisions of s 44(4) were satisfied and that the ground for rejection under s 42(b) did not apply.[1] The Trade Marks were accordingly accepted for possible registration and their acceptance was advertised for opposition purposes on 13 July 2021.
[1] Crescent Wealth Investments Australasia Pty Ltd [2021] ATMO 63 (Hearing Officer Smith). Prior use under s 44(4) was not pursued in this opposition.
On 13 September 2021 the Opponent filed a Notice of Intention to Oppose registration of the Trade Marks, followed by a Statement of Grounds and Particulars (‘SGP’) on 13 October 2021. The Applicant filed a Notice of Intention to Defend the applications. The parties filed their evidence in due course, discussed in more detail below, after which they requested a hearing.
I heard the oppositions, as a delegate of the Registrar of Trade Marks, on 17 July 2023. Edward Heerey of counsel, instructed by Gilbert + Tobin Lawyers, made oral and written submissions on behalf of the Opponent. Samuel Hallahan of counsel, instructed by Corrs Chambers Westgarth, made oral and written submissions on behalf of the Applicant.

Grounds, onus and standard of proof

The SGP nominated grounds of opposition under ss 43, 44, 58A, 58, 60, 42(b) and 62A of the Act. The ground under s 43 was not pressed at the hearing, and I have therefore not considered it in this decision.
In order to succeed in its opposition, the Opponent bears the onus of establishing at least one of the grounds of opposition.[2] If it does so, there is no requirement for the Registrar to consider the remaining grounds.
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is 20 September 2017 (‘Relevant Date’), being both the filing and priority date of the Trade Marks.[4]
[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2], wherein Kitto J stated that the rights of the parties are determined as at the date of the application (‘Southern Cross’).

Evidence

Declarations by the following persons were filed as evidence in the oppositions:
Evidence in support
Peter Lyon-Mercado, director of the Opponent, with Exhibits PLM-1 to PLM-23 and Confidential Exhibits PLM-1 to PLM-4, dated 18 March 2022 (‘Lyon-Mercado 1’).
Evidence in answer
Talal Yassine, managing director of the Applicant, with Annexures TY-1 to TY-41 including Confidential Annexures 9, 28 and 36, dated 21 May 2021 (‘Yassine 1’).
Talal Yassine with Annexures TY-42 to TY-47, dated 17 June 2022 (‘Yassine 2’).
Evidence in reply
Peter Lyon-Mercado with Exhibits PLM-24 to PLM-26, dated 26 August 2022. (‘Lyon-Mercado 2’)
Anna Smyth, partner at Gilbert + Tobin Lawyers, with Exhibits AS-1 to AS-6, dated 26 August 2022 (‘Smyth’).

A summary of the evidence follows.

Opponent’s evidence

The Opponent is a Sydney-based private equity funds management firm called Crescent Capital Partners. It has operated since November 2000, first as Crescent Capital Partners Limited (a predecessor) and from 2004 as the Opponent. Since nothing turns on it, I will refer to both entities as the Opponent for the purposes of this decision.
The Opponent raises money from investors in a series of pools, called funds, and uses these funds to either invest directly into a business or to acquire a business, with a view to selling it for a profit in the future and returning the proceeds to investors (after its own fees are paid). Lyon-Mercado 1 states that it typically holds investments for three to six years,[5] with the aim of improving and growing the underlying business, although Lyon-Mercado 2 points out that the Opponent’s investments can be up to 12 years.[6]
[5] Lyon-Mercado 1, [9].
[6] Lyon-Mercado 2, [11(c)].
Since 2000 the Opponent has offered seven funds. The funds have raised very substantial amounts from investors,[7] some of which are themselves funds (including superannuation and pension funds). The Opponent’s services have been offered and promoted under the names ‘Crescent’ and ‘Crescent Capital Partners’, as well as the logos below (the first used from 2000 to 2010, the second used from 2010 to present).

[7] Lyon-Mercado 1, Confidential Exhibit PLM-1, which provides figures of the capital raised by each fund.

The Opponent is also the owner of the following registered trade marks in Australia.

TM No.	Trade Mark	Priority Date	Services
1720170	CRESCENT	27 March 2013	Class 36: Financial services, including financial funds management but excluding insurance services; financial portfolio management; financial information services including on-line information services; banking and investment services; financial advisory and financial management services; all excluding insurance services.
1720171	CRESCENT CAPITAL PARTNERS	27 March 2013

The Opponent’s funds have performed well and the Opponent has won or been a finalist in multiple awards from industry bodies. It has also been the subject of media articles in mainstream and industry publications.
The Applicant and the Opponent have been aware of each other since at least September 2012. Initially, relations appeared to be cordial: the then chair of the Opponent met with the managing director of the Applicant, as did the managing partner of the Opponent. However, in April 2013 the Opponent’s legal representatives sent a letter of demand to the Applicant demanding, among other things, that it cease using the names CRESCENT and CRESCENT WEALTH on account of their asserted similarity to the Opponent’s trade marks.
In 2014 the Opponent commenced legal proceedings in the Federal Court of Australia against the Applicant and related parties, alleging misleading and deceptive conduct and false and misleading representations under the Australian Consumer Law (‘ACL’) and the Australian Securities and Investments Commission Act 2001 (Cth) (‘ASIC Act’). The Opponent’s trade marks listed at paragraph 14 of this decision had not, at that stage, achieved registration.
The Opponent gave evidence in the Federal Court of alleged instances of confusion, which it has adduced and supplemented in this opposition. They are discussed under s 44 of this decision.
On 9 March 2016 the Court handed down its judgment.[8] Justice Bennett found that a number of the Applicant’s entities and its founder had engaged in misleading and deceptive conduct by using names that included the word ‘Crescent’. Final orders were issued on 23 March 2016 restraining the Applicant’s use of such names, including the order below which allows use of, inter alia, CRESCENT WEALTH as long as it meets the conditions stated therein:
[8] Crescent Capital Partners Management Pty Limited v Crescent Funds Management (Aust) Limited [2016] FCA 229, (Bennett J) (‘Crescent Capital’).
(4)The First and Second Respondents, by themselves, their servants or agents, be restrained from, in trade or commerce, offering to provide, providing, advertising or marketing in Australia any investment services or products under and by reference to:
(a)         CRESCENT WEALTH;
(b)         Crescent Wealth Superannuation Fund;
(c)          Crescent Wealth International Equity Fund;
(d)         the CRESCENT WEALTH business name;
(e)         the crescentwealth.com.au domain name,
or any name substantially identical with the names in (a)-(e), without:
(f)including the Respondent’s logo[9] and stating clearly and prominently, and reasonably proximately (e.g. not by way of footnoted text) to where any such name appears, including in any webpage, product disclosure statement, or advertising or promotional materials:
“Neither [CRESCENT WEALTH] nor any of its products is associated or affiliated with Crescent Capital Partners”,
and, in the case of a radio commercial, television, video advertisement,
or promotional appearance also stating the same by way of a clear and
prominent, spoken statement of at least 6 seconds; or
(g)otherwise clearly distinguishing its business from the business carried on by the Applicants under the name Crescent Capital Partners.[10]
[9] The Respondent’s logo is the logo the subject of the Trade Marks, shown in the judgment as the coloured version but not explicitly limited to those colours.
[10] Lyon-Mercado 1, Exhibit PLM-14.
The judgment was upheld in 2017 in the appeal to the Full Federal Court of Australia, including the form of the order cited above.[11] These judgments are summarised later in this decision.
[11] Crescent Funds Management (Aust) Ltd v Crescent Capital Partners Management Pty Limited [2017] FCAFC 2 (Greenwood, Edelman and Markovic JJ) (‘Crescent Funds’).

Applicant’s evidence

The Applicant is a financial investment business.[12] It provides superannuation products (and up until 2019 it also provided investment products) that comply with Islamic investment principles (also described as Sharia compliant). A product disclosure statement for the Applicant’s first fund explains ‘Shariah Compliant investing excludes businesses that engage in the manufacturing and sales of amongst other things alcohol, tobacco, pork-related products, conventional financial services, defence, and most types of entertainment such as gambling and pornography’.[13] Although the Applicant’s business is directed to those of Muslim faith, its services are not restricted and are available to the Australian public at large.
[12] The Applicant operates as part of a group related companies, referred to in its evidence as the Crescent Wealth Group. In this decision, I refer to the Applicant, the group of companies, and to the Applicant’s declarant Mr Talal Yassine (one of the founders of the business) as ‘the Applicant’, distinguishing them as and if necessary.
[13] Yassine 1, Annexure TY-5.
The Applicant’s market is primarily retail investors, that is, relatively unsophisticated members with low to modest net worth (described as ‘Mum and Dad investors’). However, it is not restricted to that market and its financial services license allows it to provide services to both retail and wholesale clients.
The Applicant was incorporated in 2010 under the name Crescent Investments Australasia Pty Ltd, which was changed in 2017 to its current name. It was established after one of its founders Mr Talal Yassine, whilst working as an investment banker, developed a particular interest in providing financial services consistent with the Muslim faith. He and his associates undertook informal market research amongst the Muslim community during 2006 to 2010, and in 2010 Mr Yassine and two co-founders established the Applicant. According to Mr Yassine, the Applicant is ‘the first and only Australian investment manager which is dedicated solely to investment in accordance with Islamic investment principles’.[14]
[14] Yassine 1, [11].
Mr Yassine chose to call the founding company Crescent Investments Australasia Pty Ltd to signify that the investment products were for Muslim Australians: ‘crescent’ having particular significance for those of Muslim faith and being a symbol of their religion. He undertook a search of company names at the Australian Securities and Investments Commission website to determine that the chosen name was available, and another of the Applicant’s co-founders took steps to register domain names including ‘ The Applicant adopted the trading name ‘Crescent Wealth’ in 2011.
The Applicant’s services have been well promoted, both amongst the Muslim community and to the Australian public at large. The Applicant advertises its services online; in tangible advertising media (such as signage and brochures); through media releases, media reports, and radio; and through sponsorship and events (at which high profile attendees have spoken: the Hon Chris Bowen MP, then Federal Minister for Immigration and John Brogden, then CEO of the Financial Services Council of Australia, spoke at the official launch of its first fund in 2011).
Of the parties’ relations, the Applicant’s account is similar to that of the Opponent in that the parties were initially on cordial terms and their representatives met on a small number of occasions. However, Mr Yassine recounts his surprise when, at a meeting arranged in early 2013 between him and Mr Michael Alscher, the managing partner of the Opponent, Mr Alscher said words to the effect that the Opponent had decided to let the courts decide whether the Applicant could use its name, allegedly also stating ‘We are not worried about you now, but we can see that five years down the track you could be a problem for us’.[15]
[15] Yassine 2, [21]-[27].
Of the Federal Court proceedings, the Applicant notes that use of the Trade Marks (as opposed to the words CRESCENT WEALTH) was not conduct found to be misleading or likely to mislead or deceive. It also notes that the Federal Court orders do not require the Applicant to display the disclaimer when it uses the Trade Marks (as opposed to the words CRESCENT WEALTH), but that the Applicant does so in any event. The Applicant further states that in the six years since Bennett J’s first instance judgment, it has not received any complaint from the Opponent regarding alleged non-compliance with the order. Nonetheless the Applicant indicates that if the Registrar considered it necessary, the Applicant would consent to a condition of registration that, in essence, specifies what is said in 4(f) the Federal Court orders.
The Applicant declares it is unaware of any confusion between the parties and makes submissions to the effect that there is no real risk of confusion on account of the different market segments to which the parties’ services are directed. According to the Applicant, the Opponent approaches institutions and high net worth investors seeking funds to pursue investment opportunities in specific companies; a service which has the potential for high returns over a relatively short period of time, but also carries a high degree of risk. The Applicant on the other hand is declared to operate in an entirely different segment, offering Shariah compliant superannuation to small retail investors looking for long term safety and security of their funds with modest return.

Federal Court proceedings

As already stated, the Opponent sued the Applicant in the Federal Court alleging misleading and deceptive conduct and false and misleading representations under ss 18 and 29 of the ACL and ss 12DA and 12DB of the ASIC Act. The basis of its allegations was that various of the Applicant’s entities’ names, including Crescent Wealth, were misleading or deceptively similar to its own name giving rise to false or misleading representations that the parties’ services and products were in some way connected. The Applicant sought to resist these claims by distinguishing the nature of its activities from those of the Opponent, in order to demonstrate the unlikelihood of anyone being led into error by the similarity of the names Crescent Wealth and Crescent Capital.
In the first instance decision, Bennett J commenced her considerations by observing that there was no evidence to support an intention on Mr Yassine’s part to deceive or mislead and that there were cogent reasons for him to choose to use the word ‘crescent’.
Of the alleged separate markets in which the parties operated, her Honour found there was no neat division between retail and wholesale investors, sophisticated and unsophisticated clients, or those who invest in private equity and those who do not. Her Honour noted that any such distinction was artificial and not in accordance with commercial realities. Rather, fund managers and investors may make investments across many different asset classes in order to balance their portfolios and maximise their returns. Accordingly, investors do not restrict themselves to one class of investment or to one offeror of investment opportunities.
Whilst her Honour accepted that the Applicant had established a reputation in relation to Sharia compliant financial products,[16] her Honour also found that the Opponent had developed a reputation among the financial community as a successful private equity fund manager[17] and by 2011 established a reputation in the use of ‘Crescent’ in relation to funds.[18]
[16] Crescent Capital (n 8) [27].
[17] Ibid [11].
[18] Ibid [66].
Justice Bennett also considered the parties’ logos to be quite different, being the coloured version of the Trade Mark (as shown in application 1874318) and the Opponent’s logo used from 2010, copied from Bennett J’s judgment below for convenience.

Her Honour found:
Each [of the Opponent and the Applicant] operates under the name “Crescent” in circumstances where the distinguishing logos are not present. There is sufficient likelihood of investors and those advising them being misled or deceived or confused by Crescent Wealth’s [the Applicant’s] offerings into believing that Crescent Wealth’s funds are those of Crescent Capital [the Opponent] or are part of, or associated with, or managed by, or connected to Crescent Capital.
…
It follows that Crescent Wealth’s business activities have involved conduct which is likely to mislead or deceive.[19]
[19] Ibid [69]-[71].

In making orders, Bennett J considered those sought by the Opponent to be too wide. Broadly, the Opponent had sought orders restraining the Applicant from using the word ‘Crescent’, or a word deceptively similar to it, in providing or promoting the Applicant’s services. Her Honour noted that:
The conclusion that the first and second respondents have engaged in conduct which was misleading or likely to mislead or deceive follows from the use of “Crescent Wealth” and the names of the funds and domain names which use the name “crescent” together with generic words such as “investments”, “funds” and the like. It is this use that is likely to lead investors to believe that the funds, products or services are those of, or associated with, or affiliated with, Crescent Capital. However, this does not mean that all use of the word “Crescent”, alone or in association with other words, or in conjunction with a disclaimer, would result in the misleading of investors/consumers.[20]
[20] Ibid [89].
Accordingly, Bennett J made orders restraining the Applicant from using the names Crescent Funds Management (Aust) Limited, Crescent Investments Australasia Pty Ltd, Crescent Australian Equity Fund, Crescent Diversified Property Fund, Crescent Islamic Cash Management Fund, as well as associate domain names. In respect of CRESCENT WEALTH her Honour made the order reproduced at paragraph 19 of this decision.
The Applicant appealed the finding of misleading and deceptive conduct to the Full Federal Court, and the Opponent also appealed the primary judge’s orders, contending that the Applicant should be restrained from any use of ‘Crescent Wealth’ or ‘Crescent’ in relation to the services (such that the order reproduced at paragraph 19 should have been unqualified, rather than facilitating use in conjunction with a disclaimer).
The Full Federal Court dismissed both appeals. In dismissing the Applicant’s appeal Greenwood J found:
…I am satisfied that the primary judge did not fall into error in framing the representative member of the class [to whom the conduct was directed] in the way her Honour did. I am also satisfied that although an investor in private equity funds would likely bring an inquiring mind to investments in other funds focused upon traditional asset classes, there is a real likelihood that such an investor, within the class of investors, would likely be misled by Crescent Wealth’s use of the term “Crescent” and “Crescent Wealth”, in the description of its funds and in its presentation of itself to those with whom it deals.
I am satisfied that the primary judge in applying the test, properly identified by her Honour, did not reach conclusions which could be described as capricious, unreasonable or unpredictable: see [110] of these reasons. I am satisfied that the primary judge did not otherwise fall into error. For these reasons, the appeal by the Crescent Wealth appellants ought to be dismissed.[21]
[21] Crescent Funds (n 11) [125]-[126] (emphasis in original).
In dismissing the Opponent’s appeal Edelman J found:
It would have been open to the primary judge to restrain Crescent Wealth by a more absolute form of injunction, without any required disclaimer. However, I do not consider that the injunction ordered by the primary judge was outside the scope of proper orders to protect the rights of Crescent Capital, particularly having regard to: (i) the time that had elapsed; (ii) the lack of any evidence to support any inference that Mr Yassine intended to deceive or mislead anyone to believe that Crescent Wealth was associated with Crescent Capital ([55]); and (iii) the limited, or lack of, harm to Crescent Capital if the disclaimer were ordered. I have weighed against these factors the serious concerns enunciated by Lockhart J in Bridge Stockbrokers, but on the evidence before the Court I do not consider (and the primary judge did not conclude) there to be a considerable likelihood of damage to reputation to Crescent Capital by an appropriately worded disclaimer.[22]
[22] Ibid [163].

Section 58A

Section 58A may be dispensed with briefly. It is a section that applies when a trade mark is subject to registration on the basis of prior continuous use under s 44(4). An opponent may oppose on the basis that its own use of its mark which gave rise to s 44 predates the use shown by an applicant.
Here, the Trade Marks were accepted under the provisions of s 44(4) on the basis of prior continuous use. However, in these opposition proceedings the Applicant no longer relies upon s 44(4), but rather asserts honest concurrent use under the provisions of s 44(3)(a).
Given s 44(4) no longer applies, s 58A does not apply either.

Section 44

Section 44 of the Act relevantly provides:
44 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.
(3) If the Registrar in either case is satisfied:
(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
The Opponent relies upon its registered trade marks shown at paragraph 14 of this decision to substantiate the ground of opposition under s 44.
Thus the questions for determination are:
(a) are the priority dates of the Opponent’s registrations prior to the priority dates of the Trade Marks?
(b) are the Services the same or of the same description as the services specified in the Opponent’s registrations?
(c) are the Trade Marks substantially identical with, or deceptively similar to, the Opponent’s registrations?
If the above questions are all answered in the affirmative, it is then necessary to consider whether the exception under s 44(3)(a) should apply, namely, whether the Trade Marks should proceed to registration despite the existence of the Opponent’s registered trade marks on account of the honest concurrent use of the Trade Marks. The Applicant did not press the exceptions under ss 44(4) or 44(3)(b) relating to prior continuous use or other circumstances that would make registration proper.
The answers to questions (a) and (b) are straightforward. The priority date of the Opponent’s registered trade marks is 27 March 2013, approximately four and a half years prior to the Relevant Date. I consider that the Services specified in the Trade Marks all fall within the bounds of ‘similar services’, per s 14, to those specified in the Opponent’s registrations. The Applicant does not appear to dispute this: it states in its written submissions that ‘Similarity of services is not in issue’ and concedes that ‘the Applicant does not dispute that at least some of the services specified in the Applications are the same as or similar to at least some of the services specified in the Opponent’s registrations’. It does not elaborate further on which of the specified services it considers to be different.
As to question (c) I do not consider that the Trade Marks are substantially identical to either of the Opponent’s registered trade marks. The presence of the distinctive device in the Trade Marks, being a square incorporating a star and a shape most likely to be interpreted as a partial crescent (given the superimposed words CRESCENT WEALTH), and the absence of any such device in the Opponent’s registrations, is such that in a side-by-side comparison a total impression of resemblance does not emerge.[23]
[23] According to the test for substantial identity set out at [12] of Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, (Windeyer J).
I do however consider that the Trade Marks are deceptively similar to the Opponent’s registered trade marks. Section 10 of the Act defines ‘deceptively similar’ as:
For the purposes of this Act, 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.
Deceptive similarity relies upon a comparison of the impression of the Opponent’s trade marks (which may be imperfectly recalled) that persons of ordinary intelligence and memory would have, with the impression those people would get of the Trade Marks.[24] Deceptive similarity may also arise on the basis of what is frequently referred to as contextual confusion: that is, confusion that arises wherein differences between trade marks might be readily apparent, but nonetheless the trade marks are thought to be associated owing to some feature in common.[25]
[24] Ibid [13], citing Australian Woollen Mills Ltd v F.S. Walton & Co. Ltd [1937] HCA 51, referenced by the Applicant.
[25] Vivo International Corporation Pty Ltd v Tivo Inc [2012] FCAFC 159, [145]-[146] (Keane CJ, Dowsett and Nicholas JJ), and sources cited therein.
I consider both types of confusion relevant here. ‘Wealth’ and ‘capital partners’ are both relatively common in respect of the specified services,[26] and both have relatively descriptive meanings in the context of the Services. For that reason these words are likely to be discounted to a degree. On the other hand, ‘crescent’ is relatively rare in respect of these services,[27] and although one of its meanings is ‘increasing’ or ‘growing’[28] I consider that definition relatively unknown to the public at large. The presence of the device elements in the Trade Marks does offer a degree of differentiation. However, it is not to the extent that it sufficiently removes the risk that CRESCENT or CRESCENT CAPITAL PARTNERS will be imperfectly recalled or confused with the word elements of the Trade Marks, or that potential consumers will be confused, despite an appreciation of the differences between the parties’ marks, as to whether the services of the parties are connected owing to the common presence of the distinctive word CRESCENT.
[26] The Opponent exhibits searches of class 36 of the Register, demonstrating that there are 44 pending and registered trade marks containing the words ‘capital partners’ and 405 pending and registered trade marks containing the word ‘wealth’. Lyon-Mercado 1, Exhibits PLM-22 and PLM-23. All results are as at the date of that declaration, being 18 March 2022.
[27] There are only four pending and registered trade marks containing the word ‘crescent’ in class 36, being those of the Applicant and the Opponent. Lyon-Mercado 1, Exhibit PLM-21 (as at 18 March 2022).
[28] As apparently submitted by the Opponent before the Federal Court and shown on historical extracts of the Opponent’s web pages in Lyon-Mercado 1, Exhibit PLM-9. These definitions are also listed in the Macquarie Dictionary, online version, accessed 27 September 2023.
The risk of confusion is somewhat tempered by the nature of the market for financial services. Financial services are provided in a market involving significant consideration prior to purchase; are provided directly to the consumer from the provider; are usually promoted by way of visual media; and are subject to disclosure requirements. Nonetheless, the potential for confusion is not solely reliant upon the Opponent’s trade marks being mistaken for the Trade Marks, which these attributes of the financial services market might alleviate. The potential for confusion also arises from a connection being thought to exist (or wondered at) by virtue of the common presence of CRESCENT, even though the differences in parties’ trade marks are apparent – something the above attributes of the financial services market cannot entirely alleviate.
As to the proposed disclaimer, disclaimers do not inform whether trade marks are deceptively similar and are not a factor to be considered in the determination of whether s 44(2) applies. Several authorities state that factors external to the trade marks themselves are not relevant for the purposes of the comparison, summarised by Jackman J in The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd as follows (underline added):
The High Court cited with approval a number of authorities which have held that material external to the respondent’s mark is irrelevant to the issue of deceptive similarity. In [29], footnotes 67 and 68 cite with approval the Full Court’s decision in MID Sydney Pty Ltd v Australian Tourism Co Ltd [1998] FCAFC 1616; (1998) 90 FCR 236 at 245, in which Burchett, Sackville and Lehane JJ said that it is irrelevant that the respondent may, by means other than its use of the mark, make it clear that there is no connection between its business and that of the applicant, citing Mark Foy’s Ltd v Davies Coop & Co Ltd [1956] HCA 41; (1956) 95 CLR 190 at 205. On the same page, their Honours said that the comparison is between marks, not uses of marks, and hence it is no answer that the respondent’s use of the mark is in all the circumstances not deceptive, if the mark itself is deceptively similar.
Also at [29], in footnote 68 the High Court cited with approval Gummow J’s separate judgment in Wingate Marketing Pty Ltd v Levi Strauss & Co [1994] FCA 1001; (1994) 49 FCR 89 at 128, in which his Honour said that in infringement proceedings the Court is concerned for practical purposes only with the two marks themselves, ignoring any matter added (in advertisements or on the goods) to the allegedly infringing trade mark. Accordingly, his Honour said that disclaimers are to be disregarded, price differential is irrelevant, differences in use by the parties of colour and display panels are disregarded, and differences in the respective sections of the public to whom the goods are sold should be discounted.[29]
[29] [2023] FCA 482, [56]-[57].
Accordingly, I have not considered the effect of the proposed disclaimer in my determination of whether the parties’ trade marks are deceptively similar.
I bear in mind further that, as noted in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd,[30] the test is whether the Trade Marks are likely to cause confusion or deception, in the sense that they may be caused to wonder, or be perplexed or mixed up,[31] even if actual purchasers are not ultimately deceived.
[30] Southern Cross (n 4) [5].
[31] Coca-Cola Co v All-Fect Distributors Ltd [1999], [39] (Black CJ, Sundberg and Finkelstein JJ), referring to Pioneer Hi-Bred Corn Co v Highline Chicks Pty Ltd [1979] RPC 410, 423.
For the reasons explained above, I am satisfied that the Trade Marks are deceptively similar to the Opponent’s registered trade marks and that s 44(2) therefore applies. It therefore remains to be determined whether the provisions of s 44(3)(a) should be applied in order for the Trade Marks to proceed to registration.

Honest concurrent use

As noted by Kenny J in McCormick & Company Inc v McCormick (‘McCormick’),[32] s 44(3)(a) gives the Registrar a discretion to accept an application that would otherwise be rejected under s 44 if there has been honest concurrent use of the impugned trade mark(s). Her Honour observed:
The authorities establish that the principal criteria for determining whether registration should be permitted pursuant to s 44(3) include:
(1) the honesty of the concurrent use;
(2) the extent of the use in terms of time, geographic area and volume of sales;
(3) the degree of confusion likely to ensue between the marks in question;
(4) whether any instances of confusion have been proved; and
(5) the relevant inconvenience that would ensue to the parties if registration were to be permitted.
See In Re Alex Pirie & Sons Ltd's Application (1932) 49 RPC 195; (1933) 50 RPC 147 at 159-160; In Re John Fitton & Co Ltd's Application (1949) 66 RPC 110 at 112; and Stingray Surf Co Pty Ltd v Lister [1997] ATMO 3; (1997) 37 IPR 306 at 310-311. These factors are not necessarily exhaustive of the matters to be considered, but they are a useful guide: see In Re Electrix Ltd's Application [1957] RPC 369 at 379.[33]
[32] [2000] FCA 1335, [30] (‘McCormick’).
[33] Ibid.
Honesty of adoption has been described as a factor of considerable importance when determining honest concurrent use.[34] I am satisfied that when the Applicant first adopted names that included the word CRESCENT, it did so honestly. As noted by Bennett J in the first instance decision, the Applicant gives a cogent reason for adopting that word, and I consider that extends to the adoption of imagery relating to a crescent. I note also that there is no evidence of any intention on the Applicant’s part to confuse or deceive the public.
[34] See for example Re Parkington & Co Ltd’s Application (1946) 63 RPC 171, 182 (Romer J).
The Opponent submits that there was a lack of due diligence and therefore a lack of good faith on the Applicant’s part before adopting and commencing use of the Trade Marks, in that there is no evidence the Applicant conducted searches of (for example) Google® to ascertain the availability of the name. It cites a number of authorities which state, in summary, that a finding of good faith requires reasonable diligence to ascertain whether a chosen name does not conflict with a registered trade mark.[35]
[35] The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd [2023] FCA 482 (Jackman J). See also Flexopack S.A. Plastics Industry v Flexopack Australia Pty Ltd [2016] FCA 235 (Beach J); Anheuser-Busch, Inc v Budejovick Budvar, Nrodn Podnik & Ors [2002] FCA 390 (Allsop J); Notaras v Barcelona Pty Limited [2019] FCA 4 (Robertson J) and Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83 (Greenwood, Jagot and Beach JJ).
I observe firstly that when the Applicant first adopted the Trade Marks in 2011, the Opponent’s trade marks were not yet the subject of applications for registration (that would not occur until 2013). Any searches of the Register of Trade Marks would therefore not have revealed the Opponent’s trade marks. There is also no evidence of what results a Google® search may have returned at that time. The Opponent had been operating for a significant period of time by then, but at the same time I note the observation of Bennett J that ‘Crescent Capital does not advertise to the general public. It does operate a website, of which only part is publicly accessible’.[36] It is therefore possible that search results related to it would have been somewhat obscure had the Applicant conducted Google® searches for ‘crescent’ and similar in 2011. I therefore do not consider that the Applicant’s alleged failure to conduct relevant searches necessarily leads to a finding of a lack of good faith.
[36] Crescent Capital (n 8) [16].
The extent of concurrent use of the Trade Marks in terms of duration is significant, being approximately 12 years. The volume of the Applicant’s trade is also significant: the Applicant’s annual report for the financial year ending 30 June 2017 showing substantial funds under management as well as significant growth in the amount of funds under management.[37] However I bear in mind that much of the concurrent use has been in respect of superannuation, not in respect of the full suite of the Services. The bundles of advertisements in Exhibits TY-29 to TY-31 of Yassine 1, being signage, a leaflet and billboards, all relate solely to superannuation, as do the social media pages in Exhibits TY-33 and TY-34.
[37] Lyon-Mercado 2, [14(a)] and Exhibit PLM-25.

The degree of potential confusion is relatively high owing to the common presence of CRESCENT, especially bearing in mind the notional use of the Trade Marks in respect of all of the Services listed in the applications. There have been instances of confusion, as outlined below.
·     A conversation in 2012 wherein a person involved in one of the industries the Opponent sought to invest in asked an employee of the Opponent ‘Are you the Islamic equity fund’?[38]
·     A telephone enquiry in March 2013 to the Opponent asking to speak to Mr Yassine.[39]
·     A comment on 7 August 2013 from Mr Joe Hockey, then Federal Treasurer, to Mr Mortimer, Chairperson of the Opponent, that he had ‘met someone from Crescent last week…I think his name was something like Yassine’.[40]
·     An email dated 21 May 2015 from BNP Paribas (a multinational financial institution) to the Business Development Director of the Opponent seeking information on a number of the Opponent’s funds as well as one of the Applicant’s funds.[41]
·     Mail received in December 2020 from the Committee for Sydney, an advocacy and policy group, addressed to Mr Yassine but stating the name and address of the Opponent.[42]
·     A conversation in July 2022 between Mr Lyon-Mercado of the Opponent and a representative of a technology company servicing financial businesses, where upon hearing that Mr Lyon-Mercado was from ‘Crescent Capital’ the representative replied ‘Ah yes, I know Crescent, the Sharia fund manager’.[43]
[38] Smyth, Exhibit AS-2, being an affidavit of Mr Peter Scrine, Business Development Director of the Opponent, filed in the course of Federal Court proceedings.
[39] Smyth, Exhibit AS-4, being an affidavit of Ms Krystle Simpson, Executive Assistant with the Opponent, filed in the course of Federal Court proceedings.
[40] Smyth, Exhibit AS-3, being an affidavit of Mr David Mortimer, Chairperson of the Opponent, filed in the course of Federal Court proceedings.
[41] Smyth, Exhibit AS-5, being an affidavit of Mr Peter Lyon-Mercado, filed in the course of Federal Court proceedings.
[42] Lyon-Mercado 2, Exhibit PLM-24.
[43] Lyon-Mercado 2, [7(b)].
Nonetheless, as pointed out by the Applicant, it is not possible to connect the instances of confusion with the use of the Trade Marks (as opposed to other names containing the word CRESCENT), particularly those that occurred prior to the orders issued by the Federal Court. I take into account that two of the alleged instances of confusion occurred after the court issued its orders, however I consider these few in number (given the approximately seven years that have passed since the orders were made) and not clearly from the relevant class of people, being ‘potential customers’.[44]
[44] As described in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) and Australian Woollen Mills Ltd v F S Walton & Co Ltd [1937] HCA 51 (Dixon, Evatt and McTiernan JJ).
The inconvenience to either party is significant. The Opponent faces the prospect of potential damage to its reputation should registration of the Trade Marks be permitted. It gives evidence of the potential consequences of confusion, in particular whether any poor performance of the Applicant’s funds is mistakenly attributed to the Opponent and/or whether any potential negative perception of the Applicant’s viability (in terms of the amount of funds under management) is associated with the Opponent.[45] At the same time, the Applicant has now concurrently used its Trade Marks for more than a decade, with increasing growth in its customer base and exposure of the Trade Marks. To deny it registration, at least in respect of the services upon which the Trade Marks have primarily been used, would prejudice its ability to protect the now significant goodwill attributable to the business operating under the Trade Marks.
[45] Smyth, Exhibit AS-3.
Bearing the above considerations in mind, I am satisfied the Opponent has demonstrated that the Trade Marks are deceptively similar to its own trade marks. However, I am also satisfied that the Applicant has established honest concurrent use of the Trade Marks in respect of its specified services ‘development and management of pension, retirement and superannuation plans, funds and schemes’ (‘the Remaining Services’).
As such, the ground of opposition under s 44 is only partially established because the provisions of s 44(3)(a) may be applied in respect of the Remaining Services. Accordingly, I will address whether any of the remaining grounds of opposition apply to the Remaining Services.

Section 60

Section 60 of the Act provides:
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.
To establish this ground of opposition, the Opponent must demonstrate the existence of a reputation in another trade mark in Australia at the Relevant Date. The Opponent must then establish that because of the aforesaid reputation use of the Trade Marks would be likely to deceive or cause confusion.
The Opponent relies upon its registered trade marks to establish the ground, that is, the trade marks CRESCENT and CRESCENT CAPITAL PARTNERS.
For the purposes of s 60 ‘reputation’ is ‘the recognition of the [trade mark] by the public generally’.[46] It has also been expressed as recognition of the other trade mark by a ‘significant’ or ‘substantial’[47] number of people or potential consumers. Reputation cannot be assumed; it must be established as a matter of fact by the Opponent.[48] In Rodney Jane Racing Pty Ltd v Monster Energy Company it was observed that:
The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[49]
[46] McCormick (n 33) [81].
[47] Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).
[48] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159 [77] (Lockhart J).
[49] [2019] FCA 923 [83] (O’Bryan J).
In McCormick, Kenny J further explained:
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.[50]
[50] McCormick (n 33) [86].
I am satisfied that the Opponent has established a reputation in CRESCENT CAPITAL PARTNERS in respect of private equity funds. It has successfully managed a number of private equity investments, performing in the top 25% of private equity funds in terms of return to investors.[51] It has also won awards accordingly, including ‘Best Management Buy-out’, ‘Best Buyout Investment’, ‘Private Equity Deal of the Year’, ‘Excellence in Investor Reporting’ (all from the Australian Private Equity & Venture Capital Association Limited), and ‘Operational Excellence’ and finalist places for Firm of the Year in Australia by Private Equity International.[52] The awards identify ‘Crescent Capital’ or ‘Crescent Capital Partners’ as the recipient.
[51] Based on aggregate data collated by Cambridge Associates and the Australian Investment Council, formerly known as the Australian Private Equity & Venture Capital Association Limited, Lyon-Mercado 1, [11].
[52] Lyon-Mercado 1, [13].
The Opponent has been referenced in several articles in industry and mainstream media, including Syndey Morning Herald, The Australian and the Australian Financial Review. The articles make mention of ‘Crescent’, ‘Crescent Capital’ and ‘Crescent Capital Partners’. All of the articles discuss the Opponent in terms of venture capital and private equity.[53]
[53] Lyon-Mercado 1, Exhibit PLM-10.
It has impressive sums of funds under management, and its annual revenue from management fees is extensive.[54]
[54] Lyon-Mercado 1, Confidential Exhibit PLM-1 and Confidential Exhibit PLM-2.
The reputation in the single word CRESCENT is less evident, although I bear in mind that it is the distinctive element of CRESENCET CAPITAL PARTNERS. The media articles described above do mention the Opponent as ‘Crescent’, either in the heading or in the body of the text, and I accept that they appear in mainstream publications with wide readerships.
The Opponent’s customer-facing materials such as prospectuses, presentations, letters to investors and a media release refer to CRESCENT (albeit not without CRESCENT CAPITAL PARTNERS also appearing in the material). Some of them also refer to the series of funds raised in terms of the word ‘crescent’ combined with a number, such as CRESCENT I, CRESCENT II, CRESCENT IV and so on. However, there is little information as to how many customers received or were presented with this material, other than broad statements such as ‘I estimate that hundreds of copies of each of these documents were distributed to investors and their advisors…’.
Similarly, the Opponent’s website uses the word CRESCENT solus however there is no information relating to traffic to the website and I note Bennett J’s comment that the website is only partially available to the public (the remainder presumably being open only to current investors). I observe also that the trade mark function of the word is somewhat obscured by its presentation as simply a word with its definition, below what is more obviously a trade mark (being the logo incorporating a crescent device), as seen below.[55]

[55] Example taken from Lyon-Mercado 1, Exhibit PLM-9.

The Opponent conducts an educational lecture series under the name ‘Crescent Lecture Series’. One of these occurred prior to the Relevant Date. Although it is stated that the lecture series ‘is made available to over 100 senior executives…’, the number of attendees is not given. The Opponent also conducted a summit in Malaysia, however this occurred in 2018, after the Relevant Date.
The Opponent also points to Bennett J’s comments that it ‘had and has a reputation and goodwill in the financial services and financial management industry in the name Crescent Capital, and is often referred to as Crescent’;[56] ‘I accept that Crescent Capital has developed a reputation among the financial community as a successful private equity fund manager’[57] and ‘By 2011 Crescent Capital had already established a reputation in the use of Crescent in relation to funds, having raised both Crescent I and Crescent II by this time’.[58]
[56] Crescent Capital (n 8) [9].
[57] Ibid [11].
[58] Ibid [66].
Weighing these examples and manners of the uses, I am satisfied that the Opponent has established a reputation in CRESCENT CAPITAL PARTNERS in respect of private equity funds. This reputation may somewhat extend to CRESCENT solus, also in respect of private equity funds, however on the evidence before me I am not positively satisfied that this is so.
As to the risk of deception or confusion between the reputation of CRESCENT CAPITAL PARTNERS and the Trade Marks, I bear in mind that the Applicant’s services under consideration are now ‘development and management of pension, retirement and superannuation plans, funds and schemes’. I note also that there is no honest concurrent user exception to s 60.[59]
[59] McCormick (n. 33) [93].
There is no required standard of similarity between the parties’ trade marks or their respective services for the purposes of s 60 of the Act. Moreover, the threshold for confusion is ‘not high’.[60] At the same time:
Confusion can not arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent's trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.[61]
[60] Australian Postal Foundation Corporation v Digital Post Australia Pty Ltd [2013] FCAFC 153 [70] (North, Middleton and Barker JJ).
[61] Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd [2010] ATMO 5 [39] (emphasis in original).
The Opponent’s CRESCENT CAPITAL PARTNERS trade mark has an established reputation in respect of private equity funds. The market for such services is relatively narrow given the large amount of capital required to take part in the Opponent’s funds. I bear in mind that there is no neat division between retail or wholesale investors and that, as noted by Greenwood J, ‘investors do not necessarily or practically restrict themselves to one class of investment, or to one offeror of investment opportunities (whether within an asset class or across asset classes)’.[62] However, that the Applicant has managed to provide superannuation for more than a decade under the Trade Marks with few instances of confusion and to develop its own reputation in that time, tends to signify that there is some difference in the parties’ spheres of activity (or, at least, that the market perceives a difference).
[62] Crescent Funds (n 8) [112] (emphasis in original).
It is perhaps the case too that the visual differences between the parties’ trade marks somewhat alleviate the risk of confusion based on reputation. The existence of a reputation rests upon what has actually been used, and in that sense acquired reputation can be a double-edged sword and may either reinforce or mitigate the effect of differences between the trade marks.[63]
[63] Flight Centre Pty Ltd v World Flight Centre Pty Ltd [2003] ATMO 60, [21] (Hearing Officer Williams).
The low level of actual confusion that has occurred over a quite significant period of time suggests that the risk of confusion at the Relevant Date due to the reputation in the Opponent’s CRESCENT CAPITAL PARTNERS mark was not significant.
For these reasons I find that the ground of opposition under s 60 is not established in respect of the services ‘development and management of pension, retirement and superannuation plans, funds and schemes’.

Section 42(b)

Section 42(b) of the Act provides that an application for the registration of a trade mark must be rejected if its use would be contrary to law.
The Opponent must satisfy the Registrar that use of the Trade Marks would, not could, be contrary to law.[64] It asserts the ground on two bases. The first is that use of the Trade Marks would be misleading or deceiving such that it would contravene ss 18 and 29 of the ACL and/or constitute the common law tort of passing off. The second is that the us of the Trade Marks would be contrary to the orders issued by the Federal Court, cited in paragraph 19 of this decision.
[64] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).
The relevant provisions of the ACL require that I be satisfied that it is likely consumers would be misled or deceived into believing that the Applicant’s ‘development and management of pension, retirement and superannuation plans, funds and schemes’ have a connection with the Opponent. The threshold for this is higher than that in relation to s 60, which requires only that consumers would be likely to be deceived or confused. Given I am not satisfied that s 60 is established, it follows that, on the stricter test posited by the ACL, I am not satisfied that the use of the Trade Marks us likely to mislead or deceive under the ACL.
For similar reasons I am not satisfied that use of the Trade Marks amounts to passing off. Justice Hill in Re Equity Access Pty Ltd v Westpac Banking Corporation addressed the relationship between s 52 of the Trade Practices Act 1974 (Cth) (the equivalent provision to ss 18 and 29 of the ACL) and passing off. His Honour considered that:
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.[65]
[65] [1989] FCA 506, [40] (citations omitted).
Given that contravention of ss 18 and 29 of the ACL is not established, the ground based on passing off likewise fails.
As to the alleged contravention of the Federal Court’s orders, the order restrains the use of various names including the words CRESCENT WEALTH, but it does not restrain the use of the Trade Marks (the same sign as that referred to in the order as ‘the Respondent’s logo’). Nor does it require the Trade Marks to be used with the disclaimer identified in 4(f) of the orders. Rather, the Trade Marks (along with the disclaimer) comprise material serving to differentiate the parties’ signs. Moreover, as noted above in the summaries of the judgments, the Full Federal Court dismissed the Opponent’s appeal seeking broader restraint orders. Accordingly, the ground based on a contravention of the Federal Court’s orders cannot be established.
The ground of opposition based on s 42(b) therefore fails.

Section 58

Section 58 of the Act provides:
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
In order to establish a ground of opposition under s 58, the Opponent must establish three factors, one of them being that the parties’ trade marks are at least substantially identical. This was recognised by Gummow J in Carnival Cruise Lines Inc. v Sitmar Cruises Limited wherein his Honour stated:
It requires a total impression of similarity to emerge from a comparison between the two marks. In a real sense a claim to proprietorship of the one extends to the other. But to go beyond this is, in my view, not possible.[66]
[66] [1994] FCA 936, [62].
As discussed under ‘Section 44’ of this decision, I do not consider that the Trade Marks are substantially identical to the Opponent’s trade marks. For this reason, the ground of opposition under s 58 cannot succeed.

Section 62A

Section 62A of the Act provides:
Application made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
The phrase ‘bad faith’ is not defined in the Act. In DC Comics v Cheqout Pty Ltd, Bennett J explained:
Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards.
The question is whether the conduct falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area. It is whether the knowledge of the applicant was such that the decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[67]
[67] [2013] FCA 478, [62].
The Opponent puts its case in the following terms:
In the present case, the Applicant had a clear choice as at the Priority Date when it sought application for registration of the Opposed Marks. The Opponent relies on the following matters, individually and cumulatively:
(a)The Applicant was on notice of the Opponent’s objection to its use of the name CRESCENT WEALTH, having received a cease and desist letter from Gilbert + Tobin in 2013;
(b)The Applicant was aware of the various instances of confusion in the Federal Court Proceedings, such that prospective customers on seeing the Opposed Marks, such that they would be at least “caused to wonder” whether the services of the Applicant were provided by the Opponent;
(c)By reason of the Federal Court Proceedings, the Applicant was aware that use of the word CRESCENT WEALTH without the court ordered disclaimer, was likely to mislead or deceive consumers; and
(d)The Applicant previously sought registration of substantially identical device marks, with the inclusion of a disclaimer. The Applicant allowed these applications to lapse in April 2019, in favour of pursuing the registration of the Opposed Marks.

100. The applications for registration of the Trade Marks were filed approximately eight months after the judgment was handed down in the parties’ appeal to the Full Federal Court. That judgment confirmed the Applicant’s ability to use the Trade Marks. The Opponent’s objection to the Applicant’s use of CRESCENT WEALTH, and all but two of the instances of confusion, were considered in the Federal Court proceedings. In light of the outcome, the Applicant decided to apply for registration of the Trade Marks.

101. The Trade Marks do not equate to CRESCENT WEALTH, nor are they substantially identical to those words. The Applicant’s awareness of the court ordered requirements for use of those words does not cast its decision to apply for the Trade Marks in an unfavourable light.

102. The Applicant’s previous trade mark applications for images which included the disclaimer do not reflect bad faith. The inclusion of the disclaimer may have limited the manner in which the disclaimer could be displayed, nor is the disclaimer trade mark material. It is therefore not surprising that the Applicant chose not to pursue those applications.

103. Viewed subjectively and objectively, I am not persuaded that the Applicant’s decision to apply for registration of the Trade Marks falls short of acceptable commercial standards, or would be regarded as in bad faith by persons adopting proper standards.

Decision and Costs

104. Section 55 of the Act relevantly provides:

(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.

105. I am satisfied that a ground of opposition had been established under s 44 of the Act in respect of the following services in class 36.

Development of investment products; discretionary fund management services; financial information services; financial investment services; financial portfolio management; financial services; financing of property development; funds management; funds investment; investment funds management; investment portfolio management services; management services for real estate investment; provision of investment information; real estate acquisition and development for the purpose of investment; services relating to unregistered managed investment schemes.

106. I am also satisfied that the provisions of s 44(3)(a) may be applied in respect of ‘development and management of pension, retirement and superannuation plans, funds and schemes’ in class 36. No other grounds of opposition have been established in respect of these services.

107. On 13 October 2023 I informed the Applicant that it was my intention to refuse registration of the Trade Marks unless the specification in class 36 was amended to: development and management of pension, retirement and superannuation plans, funds and schemes.

108. On 24 October 2023 the Applicant agreed to the amendment and the specification in class 36 has been amended.

109. The Trade Marks can now proceed to registration.

Costs

110. The parties sought cost. As both parties were partly successful I decline to award costs.

Nicole Worth

Hearing Officer

Delegate of the Registrar of Trade Marks

25 October 2023