My Doctor Online Pty Limited v MIMS Data Systems Limited

This decision concerns an opposition by My Doctor Online Pty Limited (the opponent) to the registration of the trade mark application MYDOCTOR, filed by MIMS Data Systems Limited (the applicant). The applicant sought registration of the mark in classes 41 and 42 for services relating to the publication and provision of health and medical information, including appointment booking. The opposition was based on grounds under sections 41 and 60 of the *Trade Marks Act 1995* (Cth).

The delegate was required to determine whether the trade mark MYDOCTOR was capable of distinguishing the applicant's services from those of other persons, as per section 41. Additionally, the delegate had to consider whether the applicant's mark was substantially identical with or deceptively similar to a trade mark that had acquired a reputation in Australia before the priority date of the application, and whether the use of the applicant's mark would be likely to deceive or cause confusion, pursuant to section 60.

Regarding section 41, the delegate applied the test from *Clark Equipment Company v Registrar of Trade Marks* and *F. H. Faulding & Son Limited v Imperial Chemical Industries of Australia and New Zealand*, considering whether other traders would likely desire to use the mark in the ordinary course of their business. While acknowledging a tenuous descriptive link, the delegate found that the mark MYDOCTOR was capable of distinguishing the applicant's services. For section 60, the delegate found the marks were not substantially identical but were deceptively similar, noting the common element "my doctor" and the potential for confusion regarding the trade source. However, the delegate found that the opponent had failed to establish that its mark had acquired a reputation in Australia by the priority date, as the evidence of use and extent of reputation was insufficient.

Consequently, the delegate dismissed the opposition on both grounds. The applicant was awarded costs against the opponent. The trade mark application was directed to proceed to registration, subject to the payment of the registration fee and any pending appeal.