Legacy Australia Incorporated v David Anthony Hamilton

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.