Dr Steven Nearhos v Baseline Consulting Pty Ltd

This matter concerned an opposition by Dr Steven Nearhos to the registration of the trade mark BASELINE, filed by Baseline Consulting Pty Ltd, for services in class 42. The applicant's trade mark application had initially proceeded to advertisement for acceptance, notwithstanding a finding of deceptive similarity to Dr Nearhos's prior trade mark, because the applicant demonstrated prior use of its mark. Dr Nearhos subsequently opposed the registration.

The delegate of the Registrar of Trade Marks was required to determine several grounds of opposition, including whether the applicant's mark was misleading under section 43 of the *Trade Marks Act 1995* (Cth), whether Dr Nearhos had acquired a prior reputation in a deceptively similar trade mark under section 60, whether the applicant was the owner of the trade mark under section 58, and the effect of Dr Nearhos's own registered trade mark under section 44.

The delegate found that the section 43 ground was not applicable as it concerned connotations inherent in the mark itself, rather than proprietorial conflicts. The section 60 ground was not established due to insufficient evidence of the trade mark BASELINE having acquired a reputation in Australia, beyond Dr Nearhos's personal repute. However, the delegate found that the section 58 ground of ownership was established for some of the services, based on Dr Nearhos's prior use of the BASELINE trade mark in relation to similar services. The delegate also considered section 44, noting that the applicant had demonstrated continuous use of its trade mark prior to the priority date of Dr Nearhos's trade mark, which prevented rejection of the application on that basis.

Ultimately, the delegate determined that the opposition was successful on the ground of ownership under section 58 for some services, but not on the grounds of misleading connotation or prior reputation. The delegate indicated that the application would be registered, subject to amendments to restrict the scope of services, and that the reasons for this decision would follow.