Hearst Corporation v FinancialCare Group Pty Ltd

The Hearst Corporation (Opponent) opposed the registration of trade mark application number 1090039 by FinancialCare Group Pty Ltd (Applicant). The dispute concerned the Applicant's proposed registration of the trade mark "SMART MONEY ED". The matter was heard by Michael Kirov, a delegate of the Registrar of Trade Marks.

The primary legal issue before the court was whether the Applicant's trade mark application should be refused registration under section 44 of the *Trade Marks Act 1995* (Cth). The Opponent argued that the Applicant's trade mark was substantially identical or deceptively similar to existing registered trade marks owned by the Opponent, which had earlier priority dates, and that the Applicant had not established grounds for coexistence under sections 44(3) or 44(4) of the Act.

The Hearing Officer found that the priority dates of the Opponent's registered trade marks significantly predated the Applicant's conception and adoption of the "SMART MONEY ED" trade mark. The Applicant's evidence of use, specifically a newsletter from the summer 2003 edition, did not demonstrate sufficient use prior to the opposed application's priority date of 20 April 2004 to establish a case for coexistence under section 44(4). Furthermore, the evidence did not support a claim for registration under section 44(3) or indicate any other relevant circumstances that would justify acceptance.

Consequently, the Hearing Officer determined that the opposition was successful on the ground raised pursuant to section 44 of the Act. The application to register trade mark number 1090039 was refused, and the Applicant was ordered to pay the Opponent's costs.