Legacy Australia Incorporated v David Anthony Hamilton - [2025] ATMO 200

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Legacy Australia Incorporated to registration of trade mark application numbers 2358951 (class 36), 2358953 (class 41) and 2358954 (class 44) for the trade mark - LEAVE A LEGACY NOT A LOST LIFE - in the name of David Anthony Hamilton

Delegate:

Anne Makrigiorgos

Representation:

Opponent: Davies Collison Cave Pty Ltd

Applicant: Trademark Planet Limited

Decision:

2025 ATMO 200

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 44, 58A and 60 pursued – ground of opposition established under s 60 – registration refused

Background
1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by Legacy Australia Incorporated (‘Opponent’) to registration of the trade mark LEAVE A LEGACY NOT A LOST LIFE (‘Trade Mark’) filed in the name of David Anthony Hamilton (‘Applicant’) on 24 May 2023 (‘Relevant Date’) with the following details:
[1] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’) and each reference to a regulation below is a reference to a regulation in the Trade Marks Regulations 1995 (Cth) (‘Regulations’)

Application Number

Services

2358951

Class 36: charitable fundraising; charitable fund raising; charitable collections

2358953

Class 41: education services

2358954

Class 44: psychological counselling

(collectively ‘Applications’)
2.       The Applications were examined and advertised as accepted for possible registration on 25 October 2023.
3.       On 22 December 2023, the Opponent filed Notices of Intention to Oppose registration of the Applications. On 22 January 2024, the Opponent filed its Statements of Grounds and Particulars (‘SGPs’). The Applicant filed Notices of Intention to Defend the Oppositions on 23 February 2024.
4.       The same evidence was filed in connection with all three oppositions. The Opponent filed Evidence in Support (‘EIS’) on 24 May 2024. The Applicant filed Evidence in Answer (‘EIA’) on 23 August 2024. The Opponent filed Evidence in Reply (‘EIR’) on 18 November 2024.
5.       The parties were given the opportunity to either request an oral hearing or a hearing by way of written submissions. The Opponent elected to be heard on the basis of written submissions, filing written submissions prepared by Davies Collison Cave Pty Ltd. The Applicant did not elect to be heard and did not file any written submissions. I have decided this matter based on the particulars set out in the SGPs, the evidence of the parties and the written submissions of the Opponent.
Grounds and onus
6.       The SGP nominates grounds of opposition under ss. 42(b), 44, 58A[2] and 60. The Opponent carries the burden of establishing at least one ground of opposition[3] on the balance of probabilities.[4] The date at which the rights of the parties are to be determined is the Relevant Date.[5]
[2] While the SGPs nominates s…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2025] ATMO 200
Decision Date: 23 September 2025

CaseChat Overview and Summary

This decision concerns an opposition by Legacy Australia Incorporated (the Opponent) to the registration of a trade mark by David Anthony Hamilton (the Applicant). The dispute arose from the Applicant's attempt to register a trade mark, and the Opponent argued that this registration would likely cause deception or confusion among Australian consumers due to the Opponent's established reputation in its own trade mark, the "Word Mark," which is also associated with the word "Legacy." The matter was heard by a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the Applicant's proposed trade mark was likely to deceive or cause confusion, pursuant to section 60 of the *Trade Marks Act 1995* (Cth). This required an assessment of the distinctiveness of the Opponent's Word Mark, the similarity between the marks, the identity of the services offered by both parties, and the extent of the Opponent's reputation in the Australian community. The delegate also considered whether the Applicant had an intention to deceive or cause confusion by adopting a mark similar to the Opponent's well-known mark.

The delegate found that the Opponent's Word Mark was inherently distinctive and had a strong association with the services it provided to the Australian community, which were identical to those offered by the Applicant. While the delegate did not agree that the Applicant intended to deceive or "trade off" the Opponent's reputation, they were satisfied that the significant reputation of the Opponent's Word Mark, combined with the use of the word "Legacy" in the Applicant's mark and the identical nature of the services, created a real and tangible risk that consumers would perceive a connection between the two. This was sufficient to establish the ground of opposition under section 60.

Consequently, the delegate upheld the opposition under section 60 of the *Trade Marks Act 1995* (Cth), rendering it unnecessary to consider the remaining grounds of opposition.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

The Opponent submits that there is a real tangible danger of deception or confusion in relation to the use of the Trade Mark having regard to:·the inherent distinctiveness of the Word Mark when used in relation to charitable fundraising and collections, education and psychological counselling services;·the close association of the Word Mark with the Opponent and the wide range of programs and services it offers and provides to the Australian community;·Australian consumers who see the Trade Mark are likely to regard it as a variant, sub-brand or tag line of or otherwise associated with the Word Mark;·the close resemblance and impression of similarity between the parties’ marks;·the identical nature of the parties’ services; ·the clear suggestion in the evidence that the Applicant adopted the Trade Mark intending to take advantage of the Opponent’s reputation in the Word Mark including filing other trade mark applications containing terminology or themes associated with Anzacs, Australian veterans, and the Opponent and its work; and·the Applicant’s clear intention to ‘trade off’ the reputation that the Opponent enjoys in its Word Mark such that it is reasonable to conclude that the Applicant had an intention to deceive or cause confusion.49. I agree with the Opponent that the Word Mark is inherently distinctive when used in relation to charitable fundraising and collections, education and psychological counselling services and that there is a close association of the Word Mark with the Opponent and the wide range of programs and services it offers and provides to the Australian community. I also agree with the Opponent that the nature of the parties’ services are identical. 50. The Opponent states that the evidence clearly suggests that the Applicant adopted the Trade Mark intending to take advantage of the Opponent’s reputation in the Word Mark. I do not agree. The Applicant’s actions after the Relevant Date, namely filing a trade mark application and a business name application for a different trade mark, albeit one including the word LEGACY, a year after the Relevant Date, do not bear upon the Applicant’s reasons and state of mind for filing the Applications. Nor do I agree, on the evidence, that the Applicant had a clear intention to ‘trade off’ the reputation that the Opponent enjoys in the Word Mark or that it is reasonable to conclude that the Applicant had an intention to deceive or cause confusion.51. Nonetheless, given the impressive reputation evidenced by the Opponent in the Word Mark, I am satisfied that it is likely that people seeing the Trade Mark used in relation to the Applicant’s Services would at least be caused to wonder whether those services were connected in some way with the Opponent and/or its Word Mark. While both marks only share the word LEGACY, that word has significance in the Trade Mark. It is an important word in the Trade Mark and an important word in the meaning of the Trade Mark.[26] One may question the level of resemblance between the respective marks, however in my view a sufficient level of resemblance exists, particularly as the Opponent has shown use of the Word Mark with other wording such as ‘Legacy in the Park’,[27] ‘Legacy Park’,[28] ‘Our challenge, their Legacy’[29] and The Legacy Challenge Ride’.[30] When you add to this the fact that the services are the same and the immense size and character of the Opponent’s reputation in the Word Mark, when considered on the balance of probabilities, instances of deception or confusion are likely to occur. [26] Hamilton page 4.[27] Boyd [21] Exhibit 6.[28] Boyd [18] Exhibit 5.[29] Boyd [21] Exhibit 6.[30] Boyd [28] Exhibit 8.52. I consider that there is a real and tangible risk of a substantial number of consumers recognising a connection between the Trade Mark and the Word Mark and that at least some of that number will be likely to be deceived or confused in the requisite sense, including consumers believing that the Trade Mark is a variant, sub-brand or tag line of, or otherwise associated with, the Word Mark. When regard is given to the element of reputation in the strongly distinctive Word Mark, that factor is sufficient to overcome the obvious points of difference which exist between the respective marks and to have the effect that it is likely that instances of deception or confusion would occur.53. Accordingly, I find that the ground of opposition under s 60 has been established.54. Having found the s 60 ground of opposition established, it is unnecessary that the remaining grounds under ss 42(b), 44 and 58A be considered.Decision

Ratio Decidendi

Legal Principle Established

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Application Number	Services
2358951	Class 36: charitable fundraising; charitable fund raising; charitable collections
2358953	Class 41: education services
2358954	Class 44: psychological counselling