MYOB Technology Pty Ltd v Slick Solutions Pty Ltd

This decision concerns an opposition by MYOB Technology Pty Ltd (the opponent) to two trade mark applications by Slick Solutions Pty Ltd (the applicant). The dispute centred on whether the applicant's proposed trade marks, MYOFP and MYOB, were deceptively similar to the opponent's registered trade marks, MYOB and MIND YOUR OWN BUSINESS, particularly in relation to financial services. The matter was heard by Iain Thompson, Hearing Officer, at the Trade Marks Hearings.

The legal issues before the court were whether the applicant's trade marks were deceptively similar to the opponent's registered trade marks under section 44 of the relevant Act, and whether the specifications of services in the applications were also deceptively similar to those of the opponent. The court was required to consider the overall circumstances, including the appearance, sound, and nature of the goods and services, and the likely perception of consumers.

The Hearing Officer applied the principles established in cases such as *Re Application by the Pianotist Co Ltd*, which require a comprehensive assessment of all surrounding circumstances to determine if there is a likelihood of confusion in the minds of the public. The court found that the applicant's trade marks, MYOFP and MYOB, were likely to be pronounced as initialisms and reinforced the similarities between them. Furthermore, the court noted that the opponent's trade marks, particularly "MYOB" and "MIND YOUR OWN BUSINESS," were memorable and distinctive in relation to financial services, and there was no evidence that this construction was common to the trade. The court also observed significant similarities between the specifications of services in the opposed applications and the opponent's registrations, inferring conscious copying. This copying, combined with the trade mark similarities, led the court to conclude that the applicant's trade marks were likely to deceive or confuse.

Consequently, the Hearing Officer found that the grounds of opposition under section 44 were established. The Hearing Officer ordered that the two opposed applications be refused registration and awarded costs to the opponent.