Grantham, Mayo, Van Otterloo & Co. LLC

Grantham, Mayo, Van Otterloo & Co. LLC (‘Opponent’) opposed the extension of protection of a trade mark owned by GMO Internet Group, Inc (‘Holder’) to Australia. The opposition was brought under regulation 17A.33 of the Trade Marks Regulations 1995 (Cth) concerning International Registration Designating Australia 1522646, which features the stylized letters "GMO" in blue. The Opponent sought to prevent the extension of protection for the Holder's trade mark across a broad range of goods and services.

The legal issues before the delegate of the Registrar of Trade Marks were whether the opposition grounds under sections 42(b), 44, 58, and 60 of the Trade Marks Act 1995 (Cth) were established. The Opponent bore the onus of proving at least one of these grounds on the balance of probabilities, with rights assessed as at the filing date of the application, or the priority date where specified. The Opponent relied on its own registered trade mark for financial services, specifically investment management, advice, consultation, and the investment of funds for others in class 36, as the basis for its opposition.

The delegate found that the Opponent's trade mark and the Holder's trade mark were substantially identical, sharing the essential feature of the three-letter initialism "GMO" with inconsequential differences in stylisation. However, the delegate determined that the Holder's goods and services were not, for the most part, similar or closely related to the Opponent's specific financial investment services. While the Opponent's services were within the broad category of financial services, they were specifically directed towards utilising money or capital for profitable returns. The delegate concluded that the section 44 ground of opposition was established only in respect of certain goods and services where a sufficient degree of similarity or close relation was found, but not for the majority of the Holder's extensive claims.