Internex Australia Pty Ltd v Conexus Pty Limited

This matter concerned an opposition by Conexus Pty Limited (the opponent) to the registration of two trade marks by Internex Australia Pty Ltd (the applicant). The dispute centred on the alleged similarity between the applicant's trade mark CONEXUS and the opponent's trade mark CONNEXUS, and whether this similarity would lead to deception or confusion among consumers. The decision was made by Hearing Officer Mary Skivington of the Trade Marks Hearings.

The primary legal issue before the court was whether the opponent had established sufficient reputation in its trade mark CONNEXUS at the relevant date to give rise to a likelihood of deceiving or confusing consumers into believing that the applicant's services originated from the opponent. This involved assessing the extent of use and promotion of both trade marks in their respective markets, and the degree of similarity between the marks themselves.

The Hearing Officer found that while the opponent had a developing presence in the Internet Service Provider (ISP) industry with steadily increasing sales, it had not established a reputation sufficient to meet the threshold for deception or confusion. The evidence presented by the opponent, including statutory declarations and exhibits detailing its business activities and promotional efforts since 1994, was deemed insufficient to demonstrate the necessary level of consumer recognition. Conversely, the applicant provided evidence of its incorporation in 1991 and substantial sales figures from 1992 to 2003, along with extensive advertising and distribution networks.

Ultimately, the Hearing Officer refused to register trade mark number 838579 (the applicant's mark) on the grounds that the opponent had succeeded in establishing its opposition under section 58 of the Act. However, none of the grounds of opposition were established in respect of trade mark number 826869 (also the applicant's mark), which was therefore permitted to proceed to registration. The Hearing Officer also directed that the opponent pay the applicant's costs incurred due to a late adjournment of the hearing, and that each party bear its own remaining costs.