Growthpoint Properties Australia Limited v GrowthPoint Technology Partners LLC

[2025] ATMO 159

TRADE MARKS ACT 1995

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

Re:Opposition by Growthpoint Properties Australia Limited and Growthpoint Properties Limited to extension of protection under regulation 17A.33 of the Trade Marks Regulations 1995 of trade mark number 2186920 (International Registration number 1596311) (36) - GrowthPoint - in the name of GrowthPoint Technology Partners LLC

Delegate:

Louise Tuohy

Representation:

Opponents: Melissa Marcus of Counsel instructed by Norton Rose Fulbright

Holder: Michelle Calder of Spruson & Ferguson

Decision:

2025 ATMO 159

Trade Marks Regulations 1995 (Cth) – opposition to extension of protection under regulation 17A.29 – s 44 considered and established – protection not to be extended the IRDA

Background

1.      This decision concerns an opposition brought by Growthpoint Properties Australia Limited (‘First Opponent’) and Growthpoint Properties Limited (‘Second Opponent’) (together ‘Opponents’) under reg 17A.33 of the Trade Marks Regulations 1995 (Cth)[1] to the extension of protection of the following International Registration Designating Australia (‘IRDA’) in the name of GrowthPoint Technology Partners LLC (‘Holder’):

Trade mark number:  2186920

International registration number:     1596311

Trade mark:  GrowthPoint (‘Trade Mark’)

Filing date:  11 February 2021

Priority date:  20 August 2020[2]

Specification:  Class 36: Rasing of capital for start-up companies, mergers and acquisitions advisory services for start-up companies, and strategic financial advisory services for start-up companies seeking to be acquired. (‘Holder’s Services’)

Endorsement:  Provisions of subsection 44(4) and/or Reg 4.15A(5) applied

[1] Unless stated otherwise, each reference to a section or regulation is a reference to the Trade Marks Act 1995 (Cth) (‘Act’) or Trade Marks Regulations 1995 (Cth) (‘Regulations’).

[2] Convention priority claimed on the basis of United States of America trade mark number 90127244.

2.     The IRDA was examined and advertised as accepted for possible protection on 30 November 2023.

3.     On 29 January 2024 the Opponents filed a Notice of Intention to Oppose extension of protection followed by its Statement of Grounds and Particulars (‘SGP’) on 29 February 2024. The Holder filed a Notice of Intention to Defend on 10 April 2024.

4. Thereafter the parties filed evidence in accordance with the Regulations. The Opponents filed the following evidence in support:

·Declaration of Jacqueline Jovanovski, Chief Operating Officer of the First Opponent, made on 16 July 2024, with Annexures JJ-1 to JJ-35.

·Declaration of Xolani Hiatshwayo, Group Legal Counsel of the Second Opponent, made on 16 July 2024.

5.     The Holder filed the following evidence in answer:

·Declaration of Michael Shepherd, Managing Director of the Holder, made on 22 October 2024, with Exhibits 1 to 7 (‘Shepherd’).

6.     The Opponents filed the following evidence in reply:

·Declaration of Jacqueline Jovanovski, made on 24 December 2024, with Annexures JJ-1 to JJ-18.

7.     Once time for filing evidence had ended, both parties were given an opportunity to either request an oral hearing or a hearing by way of written submissions. Both parties requested an oral hearing via videoconference. As a delegate of the Registrar of Trade Marks (‘Registrar’) I heard the matter by videoconference on 3 July 2025. Melissa Marcus of Counsel instructed by Amanda Caldwell of Norton Rose Fulbright appeared on behalf of the Opponents. Michelle Calder of Spruson & Ferguson observed by Roseanne Mannion of Spruson & Ferguson appeared on behalf of the Holder. The parties’ oral submissions were supported by written submissions filed prior to the hearing.

Grounds of Opposition, Date and Onus

1. Regulation 17A.34 provides that the extension of protection may be opposed on any of the grounds on which an IRDA may be rejected and also on the grounds set out in ss 58 to 61 and 62A.

2. In the SGP the Opponent nominated the grounds of opposition under ss 42(b), 44, 58, 58A and 60. The Opponent advised in its written submissions that it was not pressing the ss 58 and 58A grounds of opposition. I therefore treat these grounds as abandoned.

3. The date at which the rights of the parties will be determined is 20 August 2020 (‘Relevant Date’) the priority date of the Trade Mark.

4. The Opponent bears the onus of establishing at least one of the grounds of opposition.[3] The standard of proof is the ordinary civil standard of the balance of probabilities.[4]

   [3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [4] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132] (Besanko, Jagot and Edelman JJ).

   The Opponents

   12.     The First Opponent is an internally managed real estate investment trust and is part of a stapled entity comprising of the First Opponent and the Growthpoint Properties Australia Trust (‘GPAT’), which trade jointly on the Australian Securities Exchange as Growthpoint Properties Australia (‘GPA’).  The First Opponent has over 60 full time employees in Australia across offices in Melbourne, Sydney and Brisbane. The Second Opponent is a South African company that is a majority shareholder of GPA.

   13.     The Second Opponent was established in November 1987. The Second Opponent commenced operations with an offering of 16 properties and since then has evolved to be the largest REIT in South Africa, with over 600 employees and a global presence in South Africa, Australia, the United Kingdom, and Eastern Europe.

   14.     In May 2009 the Second Opponent entered into an Implementation Agreement with Orchard Property Limited, and subsequently Orchard Management Limited (‘OML’) regarding the acquisition, recapitalisation and restructure of the Orchard Industrial Property Fund (‘OIPF’) in Australia. As a result, OML was officially restructured and renamed as the First Opponent in August 2009. The OIPF was renamed as the GPAT. At the time of the acquisition in 2009 the First Opponent’s portfolio was an investment fund with 23 industrial properties valued at $650 million. In 2023 the First Opponent had $6.3 billion total assets under management and directly owns and manages 57 office and industrial properties. The First Opponent also manages $1.7 billion of property on behalf of third party investors through its managed funds management business.

   The Holder

   15.     The Holder was founded in 2005 in San Francisco, California, and adopted the Trade Mark in 2006. The Holder is a specialised investment banking company with global execution capabilities focused on the technology sector. The Holder provides clients with financial advisory services including advice on mergers and acquisitions, and equity capital raising.

   Discussion

   Section 44

   16.     Section 44 relevantly provides:

   44  Identical etc. trade marks

   […]s

   (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.

   (4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

   (a) beginning before the priority date for the registration of the other trade mark in respect of:

   (i) the similar goods or closely related services; or

   (ii) the similar services or closely related goods; and

   (b) ending on the priority date for the registration of the applicant’s trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

   17.     In the SGP the Opponents rely on the Second Opponent’s trade marks 1296916, 1296917, 1683111, 1683112, 1683113, 1683114, 1683115, 1683121 and 1977623 (‘Opponents’ Marks’) as set out at Annexure A (the Opponents’ Marks will be referred to under the short titles 916, 917, 111, 112, 113, 114, 115, 121 and 623 Mark(s)).[5]

   [5] See Annexure A.

   18.     To satisfy the s 44 ground of opposition the Opponents must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark/s with an earlier priority date, in the name of a person other than the Holder, and in respect of similar services.

   19.     In the event that each of these requirements is satisfied it may still be possible for me to accept the IRDA (or allow the IRDA to proceed to registration) if I am satisfied, pursuant to ss 44(3) and/or 44(4), that there has been honest concurrent use of the Trade Mark, or other circumstances which would make acceptance of the IRDA for registration of the Trade Mark  proper, or that the Holder has continuously used the Trade Mark beginning before the priority date of the Opponents’ relied upon trade marks.

   20.     Each of the Opponents’ trade marks are in the name of a person other than the Holder and have a priority date earlier than the Relevant Date of the Trade Mark.

   21.     The next consideration is whether the Opponents services are similar to the Holder’s Services.

   22.     Section 14 relatively provides:

   Definition of similar goods and similar services

   […]

   (2) For the purposes of this Act, services are similar to other services:

   (a) if they are the same as the other services; or

   (b) if they are of the same description as that of the other services.

   23.     In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd the Full Court said the following principles were relevant in relation to considering whether certain services might be services of the same description as services for which a trade mark is registered:

   (1)        The inherent character of each of the services for which the trade mark is registered.  That may emerge as a function of language but it is likely to be the subject of evidence:  for example, what does “an hotelier” actually do?  What precisely is involved in providing “property management services”?

   (2)        To whom are the services offered?

   (3)        How are they provided?

   (4)        How are they used?

   (5)        What is their purpose?

   (6)        Are they bundled together with other services?

   (7)        Are they differentiated by the functional level at which they are provided:  wholesale or retail?

   (8)         Where do they originate?

   (9)         What is the method of their communication to the relevant target audience:  is it predominantly by electronic means, domain names, websites, Twitter, Facebook or other means such as other trade brochures and journals?

   (10)        How closely contestable are the services in substance:  are they in the same market or trade?

   (11)       How might consumers of the services perceive the services:  see, for example, E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2009) 175 FCR 386, per Moore, Edmonds and Gilmour JJ at [71]‑[73].[6]

   [6] Accor ibid [339].

   24.     The Opponents submit that 916 and 917 Marks cover portfolio management and investment services in class 36. The Opponents argue that investment services are similar to strategic financial advisory services for start-up companies seeking to be acquired and would also include capital raising.

   25.     Furthermore, the Opponents submit that the remaining services covered by the Opponents’ trade marks 111, 112, 113, 114, 115 and 121 in class 36 have a high degree of similarity to the Holder’s Services. The Opponents rely on the findings in a United Kingdom (‘UK’) trade mark opposition decision[7] involving the same parties where the Registrar’s Delegate concluded that there was a high degree of similarity between the Opponent’s financial planning, financial consultancy services in class 36 and the Holder’s Services in class 36.

   [7] UK Inter Partes Decision O/0933/23, [15] (Delegate Beverley Hedley).

   26.     The Holder’s submissions are not in agreement. The Holder submits that the Opponents have not provided any evidence to support the claim that investment services cover strategic financial advisory services for start-up companies seeking to be acquired, and that providing advice to a start-up company is not the same as offering investment services. Moreover, in relation to the Opponents’ submission that its trade marks 111, 112, 113, 114, 115 and 121 in class 36 have a high degree of similarity to the Holder’s Services, the Holder argues that evidence supporting this submission is taken from a matter decided in the UK and that the UK market is very different to the Australian marketplace.

   27.     I accept that the Opponents have not produced any evidence that its services in class 36 are similar to the Holder’s Services outside of the UK decision, however I consider that the Holder’s Services include, broadly, strategic financial advisory services for start-up companies. This without further limitation would include advice regarding investment in start-up companies. I would also say that broadly, financing and investment, while differing in specific purposes (with one dealing with acquiring capital and the other expending it) are by their nature financial services, and the services would be provided by the same sort of finance companies. For these reasons I am satisfied that the investment services covered by 916 and 917 Marks are similar to the Holder’s claims for strategic financial advisory services for start-up companies seeking to be acquired and raising of capital for start-up companies in class 36.

   28.     In regards to the financial planning and financial consultancy services in class 36 covered by the Opponents’ 111, 112, 113, 114, 115 and 121 Marks both these services include, amongst other things, financial planning and consultancy in relation to potential start-up companies, including how such projects would be financed and potential acquisition and mergers with other businesses. These services would be the same or similar to all of the Holder’s Services in Class 36. Moreover, the Opponents’ services are not limited to any particular context, so they would include such services in relation to start-up companies.

   29.     As I have found that the Holder’s Services in class 36 are similar to some of the Opponents’ class 36 services, I do not need to consider the Opponents’ services covered in classes 35 and 37 as they do not change the outcome of these proceedings.  

   Substantially identical and/or deceptively similar

   30.     The test for substantial identity requires that the trade marks are considered side by side while having regard to the essential features of the trade marks.[8] Where a total impression of resemblance emerges from the comparison, the trade marks will be considered substantially identical. For the purposes of comparison, I have reproduced the respective trade marks below:

   [8] Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [12] (Windeyer J) (‘Shell’).

Trade mark number(s)	Opponents’ Marks	Trade Mark
916	GROWTHPOINT	GrowthPoint
917
111, 112, 113
114, 115, 121

31.     On a side by side comparison I find that the Trade Mark and 916 Mark are identical.

32.     On a side by side comparison of the Trade Mark and the 917, 111, 112, 113, 114, 115, and 121 Marks, I find that there are clear differences between the respective trade marks. While all the trade marks consist of the word GROWTHPOINT, the Trade Mark is for the plain word GROWTHPOINT. In comparison the 917, 111, 112, 113, 114, 115, and 121 Marks, consist of the stylised word GROWTHPOINT with the letters H and P conjoined. The 917, 111, 112 and 113 Marks all contain the word PROPERTIES and the 111, 112, 113, 114, 115, and 121 Marks also contain a device of the letter G inside trapezium. The total impression emerging from a side by side comparison is not one of resemblance.

33.     The remaining question is whether the Trade Mark is deceptively similar to any of the 917, 111, 112, 113, 114, 115, and 121 Marks.

34.     The expression ‘deceptively similar’ is defined by s 10:

10 Definition of deceptively similar

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.

35.     The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell:

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[9]

[9] Ibid [13].

36.     The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[10] conveniently stated the relevant principles, which was summarised in The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd[11] as follows:

[10] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

[11] [2023] FCA 482, [55] (Jackman J).

(a)the resemblance between the two marks must be the cause of the likely deception or confusion;[12]

[12] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69] (Yates, Abraham and Rofe JJ).

(b)in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[13]

[13] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).

(c)the marks should not be compared side by side;[14]

[14] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).

(d)the effect of spoken description must be considered; if a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods (or services), then similarities both of sound and of meaning may play an important part;[15]

(e)the focus is upon the effect or impression produced on the mind of potential customers of the goods (or services) in relation to which the two marks are used and in the case of the registered mark, allowing for ‘imperfect recollection’;[16]

(f)the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the marks prior to filing, or any reputation associated with the registered mark;[17]

(g)the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods or services covered by the registration), with the impression that the notional buyer would have of notional and normal fair use of the opposed mark;[18]

(h)“deceived” implies the creation of an incorrect belief or mental impression; “causing confusion” may merely involve “perplexing or mixing up the minds” of potential customers; [19]

(i)the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected, having regard to the character of the customers who would be likely to buy the goods in issue;[20]

(j)it is not necessary to establish actual probability of deception or confusion, but a mere possibility of confusion is not enough. There must a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be “a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source”;[21]

(k)evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[22] and

(l)any intention to deceive or cause confusion may be a relevant consideration but is not required.[23]

[15] Ibid.

[16] Ibid.

[17] C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, 62 [43] (Ryan, Branson and Lehane JJ).

[18] Shell (n 8), 415.

[19] Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, 122 [39] (Black CJ, Sundberg and Finkelstein JJ) quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62 (Richardson J).

[20] Campomar Sociedad Limited v Nike International Limited (2000) 202 CLR 45, 79 [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).

[21] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50(ii)] (‘Woolworths’) (French J) restating principles from Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-595 (Kitto J).

[22] Australian Woollen Mills Ltd (n 14).

[23] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) citing Australian Woollen Mills (n 14), 657.

917 Mark

37.     The 917 Mark is presented as GROWTHPOINT with the letters H and P conjoined with the plain word PROPERTIES underneath. The Trade Mark is for the plain word GROWTHPOINT. The word GROWTHPOINT is a prominent feature of both trade marks. While I do not dispute that there are graphical differences between the compared trade marks, what is important is the impression recalled by the average consumer. They are far more likely to notice and remember the common element GROWTHPOINT because it is distinctive in relation to the services. Consumers are less likely to notice and remember the word PROPERTIES because this element is a generic description that is common to the trade. Because consumers are more likely to recollect and focus on the common element GROWTHPOINT they are likely to be deceived or confused as to the trade source. Moreover the services in this matter are broadly speaking financial services and while consumers would be typically engaged with a relatively high degree of care and attention about the business they are dealing with, I find it more probable than not that consumers of these services would be confused between the offerings of the Opponents and Holder.

111, 112, 113 Marks

38.     The 111, 112, 113 Marks are presented as GROWTHPOINT with the letters H and P conjoined with the plain word PROPERTIES underneath with the letter G inside a trapezium appearing on right side of the words. The Trade Mark is for the plain word GROWTHPOINT. The word GROWTHPOINT is a prominent feature of all the trade marks and consumers likely to notice and remember the common element GROWTHPOINT and they are less likely to notice the generic description PROPERTIES and the device element which highlights the first letter in the word GROWTHPOINT. The likely consumer expectation would be that the services offered under the perspective trade marks come from the same trade source, as the Opponents’ Services are not limited to any particular context, so they would include such services in relation to start-up companies.

114, 115, 121 Marks

39.     The 114, 115, 121 Marks are presented as GROWTHPOINT with the letters H and P conjoined with letter G inside a trapezium appearing on right side of the word. The Trade Mark is for the plain word GROWTHPOINT. The word GROWTHPOINT is a prominent feature of all the trade marks and consumers likely to notice and remember the common element GROWTHPOINT and they are less likely to notice the device element which highlights the first letter in the word GROWTHPOINT. Even allowing for the fact that financial services are generally bought with relative care and consideration, the risk of deception or confusion is not low enough to be tolerable.

40.     The Opponents have established a ground of opposition under s 44(2).

41.     Whilst the Opponents have established a ground of opposition under s 44, extension of protection can still be granted if the Holder establishes prior continuous use under s 44(4) or meets the requirements of s 44(3).

Section 44(4) prior use

42.     Section 44(4) enables a trade mark which would otherwise have been rejected under s 44(2) to be registered due to prior continuous use of the trade mark. For s 44(4) to be established, the Holder must demonstrate continuous use of the Trade Mark in relation to the Holder’s Services from before the priority dates of the Opponent’s Marks, until the Relevant Date.

43.     The Holder submits that there has been prior continuous use of the Trade Mark on or in relation to the Holder’s Services in Australia, from 2008 up until the priority dates of the Opponents’ Marks. Shephard provides the following evidence to support the Holder’s claims:

·Confidential Exhibit 1 to Shepard comprises a table setting out the Australian revenue figures for the Holder’s Services provided from 2008 to 2022.

·Confidential Exhibit 2 to Shephard comprises copies of engagement letters featuring the logo trade mark (‘Holder’s Logo Mark’) in connection with the Holder’s Services in Australia dated 5 March 2008, 2011, 2014, 2015, 2016, 2017, 2018, 2019, 2021 and 2022.

·Exhibit 3 to Shephard comprises extracts from the Internet Archive Service Wayback Machine for the website (‘Holder’s Website’) dated between 2011 to 2023.

·Exhibit 4 to Shephard comprises a copies of posts from the Holder’s X (formerly Twitter) account ‘GrowthPoint Technology Partners’ dated between 2012 to 2022.  The posts feature the Holder’s Logo Mark and its device trade mark  (‘Holder’s Arrowhead Mark’).

·Exhibit 5 to Shephard comprises screenshots from the Holder’s YouTube account ‘GrowthPoint Technology Partners’ established in 2012. The screenshots provide examples of uploaded videos dated between 2012 to 2023 and feature the Holder’s Arrowhead Mark and the words GrowthPoint Technology Partners.  

·Exhibit 6 to Shephard comprises a screenshot from the Holder’s Vimeo account ‘GrowthPoint Technology Partners’ established in 2014. The screenshot features the Holders Arrowhead Mark and the words GrowthPoint Technology Partners.

·Exhibit 7 to Shephard comprises a copy of an article regarding the opening of the Holder’s Sydney Office published on the Holder’s Website dated 1 February 2015. The article features the Holder’s Logo Mark.

44. In my assessment of the evidence, I am not satisfied that there has been prior continuous use of the Trade Mark. The sales figures show that revenue from Australian sources started in 2008, however, there is no evidence that the Holder’s Services were provided in Australia under the Trade Mark. The engagement letters feature the Holder’s Logo Mark in the header which I do not consider to be use of the Trade Mark with additions or alterations that do not substantially affects its identity,[24] and the reader/average consumer is directed that the plain word GrowthPoint is an abbreviation of the company name GrowthPoint Technology Partners LLC and will be viewed by the reader/average consumer as a shortened reference to the business entity GrowthPoint Technology Partners LLC rather than as a badge of origin. Furthermore, the Holder’s Website does not specifically target Australian consumers and its social media accounts are all under its business name ‘GrowthPoint Technology Partners’ and feature the Holder’s Logo Mark and/or the Holder’s Arrowhead Mark.

[24] Section 7(1).

45.     For these reasons I find that there has not been prior and continuous use of the Trade Mark by the Holder.

46.     The Holder submits that if it is not successful in obtaining acceptance for possible protection on the basis of s 44(4), it ought to be able to reply upon s 44(3).

Section 44(3) Honest concurrent use

47.     The Holder bears the onus of establishing that there has been honest concurrent use of the Trade Mark.[25] In McCormick & Company Inc v McCormick, Kenny J stated that the criteria for determining whether registration of a trade mark should be permitted pursuant to s 44(3) are:

(i) the honesty of the concurrent use;

(ii) the extent of the use in terms of time, geographic area and volume of sales;

(iii) the degree of confusion likely to ensue between the marks in question;

(iv) whether any instances of confusion have been proved;

(v) the relative inconvenience that would ensue to the parties if registration were to be permitted.[26]

[25] Trident Seafoods Corporation v Trident Foods Pty Ltd Limited [2018] FCA 1490, [186] (Gleeson J).

[26] [2000] FCA 1335, [30]-[32].

48.     Shephard declares that the Holder and the First Opponent have co-existed in Australia since 2009 and have not received any customer questions that would indicate any actual confusion. Moreover, prior to the Opponents’ Marks being raised as a ground for rejection under s 44 in the initial office action regarding the IRDA, the Holder was unaware that the Opponents conducted any business in Australia.

49.     In my view the same issues that prevented the Holder from establishing prior continuous use are applicable to the Holder’s case for honest concurrent use. Although the period relevant to honest concurrent use is more brief, noting the priority date of the Trade Mark, the Holder’s evidence does not support use of the Trade Mark in connection with the Holders’ Services in Australia within this period.

50.     In regard to any other circumstances which would make acceptance appropriate, the Holder has not made out a case to allow acceptance for possible protection of the IRDA. Given the issues regarding evidence of continuous use of the IRDAs for the Holder’s Services outlined above, I am not satisfied that there are commercial realities that exist which make registration of the IRDA proper noting the risks of confusion between the trade marks.

51.     Therefore, the ground of opposition under s 44 has been established.

Decision

52.     Regulation 17A.34N provides:

17A.34N  Decision on opposition

(1) Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

(a)to refuse protection in respect of all of the goods or services listed in the IRDA;

or

(b) to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations); having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.

(2) The Registrar must notify the International Bureau of the Registrar’s decision.

53.     The Opponent has established a ground of opposition under s 44. Therefore, I refuse to extend protection to IRDA 2186920 (IR 1596311).

54.     If the Registrar is served with a notice of appeal within one month of the date of this decision, I direct that disposition of the IRDA should otherwise be in accordance with the orders of the Court.

55.     The International Bureau will be notified of the Registrar’s decision.

Costs

56. Both parties sought an award of costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Holder under s 221 in line with Schedule 8 of the Regulations.

Louise Tuohy

Hearing Officer

Delegate of the Registrar of Trade Marks

11 August 2025

Annexure A

Opponents’ Marks

Trade mark number	Trade mark	Priority date	Specification
1296916 (916)	GROWTHPOINT	30.04.2009	Class 36: Portfolio management and investment services, property investment and management Class 37: Building and property development services; construction, repair, maintenance and installation services; providing information on construction, repair, restoration, maintenance and installation; advisory services in the fields of construction, repair, restoration, maintenance and installation; building and construction supervision; construction project management
1296917 (917)	30.04.2009	Class 36: Portfolio management and investment services, property investment and management Class 37: Building and property development services; construction, repair, maintenance and installation services; providing information on construction, repair, restoration, maintenance and installation; advisory services in the fields of construction, repair, restoration, maintenance and installation; building and construction supervision; construction project management
1683111 (111)	24.03. 2015	Class 35: Advertising services including on-line advertising services; mobile commerce services; accounting; business appraisal; business assistance; business management; economic forecasting; marketing; compilation of information into computer databases; public relations; rental of advertising apparatus; rental of advertising materials; rental of advertising matter; rental of advertising space; rental of advertising space on the internet; rental of advertising time on communication media; business research and business investigations in relation to tax; distribution and merchandising services; information and consultancy in relation to the aforesaid Class 36: Insurance, life assurance and reinsurance services; actuary services; evaluation, assessment, valuation, loss adjusting, agency, brokerage, exchange, savings guarantee, security, swapping, deposit, clearing houses and underwriting services; provisions of financial reports and analysis all relating to risk management; estimating insurance risks, losses and liabilities; financial planning, auditing and financial consultancy services; claims settlement, management and control all relating to insurance claims, investment and investment trust services; asset acquisition and disposal services; real estate affairs, real estate consultancy, investment procurement and valuation services, assessment and management of real estate, providing of real estate and property information and property brokerage services, leasing and renting of real estate, real estate agencies and managers, rental of office space and mortgage banking
1683112 (112)	24.03.2015	Class 35: Advertising services including on-line advertising services; mobile commerce services; accounting; business appraisal; business assistance; business management; economic forecasting; marketing; compilation of information into computer databases; public relations; rental of advertising apparatus; rental of advertising materials; rental of advertising matter; rental of advertising space; rental of advertising space on the internet; rental of advertising time on communication media; business research and business investigations in relation to tax; distribution and merchandising services; information and consultancy in relation to the aforesaid Class 36: Insurance, life assurance and reinsurance services; actuary services; evaluation, assessment, valuation, loss adjusting, agency, brokerage, exchange, savings guarantee, security, swapping, deposit, clearing houses and underwriting services; provisions of financial reports and analysis all relating to risk management; estimating insurance risks, losses and liabilities; financial planning, auditing and financial consultancy services; claims settlement, management and control all relating to insurance claims, investment and investment trust services; asset acquisition and disposal services; real estate affairs, real estate consultancy, investment procurement and valuation services, assessment and management of real estate, providing of real estate and property information and property brokerage services, leasing and renting of real estate, real estate agencies and managers, rental of office space and mortgage banking
1683113 (113)	24.03.2015	Class 35: Advertising services including on-line advertising services; mobile commerce services; accounting; business appraisal; business assistance; business management; economic forecasting; marketing; compilation of information into computer databases; public relations; rental of advertising apparatus; rental of advertising materials; rental of advertising matter; rental of advertising space; rental of advertising space on the internet; rental of advertising time on communication media; business research and business investigations in relation to tax; distribution and merchandising services; information and consultancy in relation to the aforesaid Class 36: Insurance, life assurance and reinsurance services; actuary services; evaluation, assessment, valuation, loss adjusting, agency, brokerage, exchange, savings guarantee, security, swapping, deposit, clearing houses and underwriting services; provisions of financial reports and analysis all relating to risk management; estimating insurance risks, losses and liabilities; financial planning, auditing and financial consultancy services; claims settlement, management and control all relating to insurance claims, investment and investment trust services; asset acquisition and disposal services; real estate affairs, real estate consultancy, investment procurement and valuation services, assessment and management of real estate, providing of real estate and property information and property brokerage services, leasing and renting of real estate, real estate agencies and managers, rental of office space and mortgage banking
1683114 (114)	24.03.2015	Class 35: Advertising services including on-line advertising services; mobile commerce services; accounting; business appraisal; business assistance; business management; economic forecasting; marketing; compilation of information into computer databases; public relations; rental of advertising apparatus; rental of advertising materials; rental of advertising matter; rental of advertising space; rental of advertising space on the internet; rental of advertising time on communication media; business research and business investigations in relation to tax; distribution and merchandising services; information and consultancy in relation to the aforesaid Class 36: Insurance, life assurance and reinsurance services; actuary services; evaluation, assessment, valuation, loss adjusting, agency, brokerage, exchange, savings guarantee, security, swapping, deposit, clearing houses and underwriting services; provisions of financial reports and analysis all relating to risk management; estimating insurance risks, losses and liabilities; financial planning, auditing and financial consultancy services; claims settlement, management and control all relating to insurance claims, investment and investment trust services; asset acquisition and disposal services; real estate affairs, real estate consultancy, investment procurement and valuation services, assessment and management of real estate, providing of real estate and property information and property brokerage services, leasing and renting of real estate, real estate agencies and managers, rental of office space and mortgage banking
1683115 (115)	24.03.2015	Class 35: Advertising services including on-line advertising services; mobile commerce services; accounting; business appraisal; business assistance; business management; economic forecasting; marketing; compilation of information into computer databases; public relations; rental of advertising apparatus; rental of advertising materials; rental of advertising matter; rental of advertising space; rental of advertising space on the internet; rental of advertising time on communication media; business research and business investigations in relation to tax; distribution and merchandising services; information and consultancy in relation to the aforesaid Class 36: Insurance, life assurance and reinsurance services; actuary services; evaluation, assessment, valuation, loss adjusting, agency, brokerage, exchange, savings guarantee, security, swapping, deposit, clearing houses and underwriting services; provisions of financial reports and analysis all relating to risk management; estimating insurance risks, losses and liabilities; financial planning, auditing and financial consultancy services; claims settlement, management and control all relating to insurance claims, investment and investment trust services; asset acquisition and disposal services; real estate affairs, real estate consultancy, investment procurement and valuation services, assessment and management of real estate, providing of real estate and property information and property brokerage services, leasing and renting of real estate, real estate agencies and managers, rental of office space and mortgage banking
1683121 (121)	24.03.2015	Class 35: Advertising services including on-line advertising services; mobile commerce services; accounting; business appraisal; business assistance; business management; economic forecasting; marketing; compilation of information into computer databases; public relations; rental of advertising apparatus; rental of advertising materials; rental of advertising matter; rental of advertising space; rental of advertising space on the internet; rental of advertising time on communication media; business research and business investigations in relation to tax; distribution and merchandising services; information and consultancy in relation to the aforesaid Class 36: Insurance, life assurance and reinsurance services; actuary services; evaluation, assessment, valuation, loss adjusting, agency, brokerage, exchange, savings guarantee, security, swapping, deposit, clearing houses and underwriting services; provisions of financial reports and analysis all relating to risk management; estimating insurance risks, losses and liabilities; financial planning, auditing and financial consultancy services; claims settlement, management and control all relating to insurance claims, investment and investment trust services; asset acquisition and disposal services; real estate affairs, real estate consultancy, investment procurement and valuation services, assessment and management of real estate, providing of real estate and property information and property brokerage services, leasing and renting of real estate, real estate agencies and managers, rental of office space and mortgage banking
1977623 (623)	GROWTHPOINT	24.12.2018	Class 35: Advertising services including on-line advertising services; retail services, being mobile commerce services; accounting; business appraisal; business assistance; business management; economic forecasting; marketing; compilation of information into computer databases; public relations; rental of advertising apparatus; rental of advertising materials; rental of advertising matter; rental of advertising space; rental of advertising space on the internet; rental of advertising time on communication media; business research and business investigations in relation to tax; distribution of advertising material; distribution of goods for advertising purposes and merchandising services; information and consultancy in relation to the aforesaid