Health Assist (Vic) Pty Ltd v Proline Financial Services Pty Ltd

Health Assist (Vic) Pty Ltd opposed the registration of the trade mark SURGERY NOW PAY LATER, filed by Proline Financial Services Pty Ltd, for services in class 36, namely financial and monetary affairs. The opposition was based on grounds under sections 41, 58, and 60 of the *Trade Marks Act 1995* (Cth). No evidence in answer was filed by the applicant, and neither party requested a hearing or filed written submissions, leading to the matter being determined by a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the trade mark SURGERY NOW PAY LATER was capable of distinguishing the applicant's services from those of other traders, as required by section 41(2) of the Act. This involved assessing the inherent adaptability of the trade mark to distinguish the services and considering any use or intended use by the applicant, or other relevant circumstances. The delegate also had to consider the opponent's evidence of its own use of the trade mark in connection with similar financial services.

The delegate reasoned that while SURGERY NOW PAY LATER describes the applicant's services, it is not the ordinary or conventional way of describing such services, which might more typically be referred to as "deferred payment surgery loans." Applying the test from *F. H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd*, the delegate considered whether other traders, acting honestly, would likely desire to use the phrase in connection with similar services. The delegate found that the phrase, while apt, was likely to be desired by other traders for its descriptive signification. Crucially, the applicant provided no evidence of its use or intended use of the trade mark, preventing the delegate from considering the combined effect of factors under section 41(5) of the Act.

Consequently, the delegate was not satisfied that the trade mark was capable of distinguishing the applicant's services. The opposition succeeded on the ground under section 41, and the delegate refused the application for registration. The remaining grounds of opposition under sections 58 and 60 were not considered. No order was made as to costs.