Newcastle Permanent Building Society Ltd v Allan Crew

Newcastle Permanent Building Society Ltd (the opponent) opposed the registration of two trade mark applications by Allan Crew (the applicant) for the mark "Our Town" in Class 41. The dispute arose after Mr. Crew, formerly a creative director at a marketing company that had worked with the opponent, applied to register the trade mark. The opponent argued that the mark should not be registered, citing several grounds under the *Trade Marks Act 1995* (Cth), though at the hearing, only grounds under sections 41, 59, and 60 were pressed. The matter was heard by Heath Wilson, a Hearing Officer acting as a delegate of the Registrar of Trade Marks.

The primary legal issues before the Hearing Officer were whether the trade mark "Our Town" was inherently adapted to distinguish the applicant's services (section 41), whether the applicant had any right to the registration of the trade mark (section 59), and whether the trade mark was likely to deceive or cause confusion due to the opponent's prior use or reputation (section 60). The opponent bore the onus of establishing these grounds on the balance of probabilities.

In relation to section 41, the Hearing Officer applied the test from *F. H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd*, considering whether other traders would likely desire to use the mark in the ordinary course of business. Regarding section 59, the Hearing Officer did not find it established. Crucially, concerning section 60, the Hearing Officer was not satisfied that the opponent's residual reputation in its trade mark was extensive enough for the use of the substantially identical marks in the entertainment field to deceive or cause confusion in the Australian marketplace, finding the likelihood of such deception or confusion to be low.

As none of the grounds of opposition were established, the Hearing Officer decided to allow the trade mark applications to proceed to registration, subject to a direction that registration would not occur if an appeal was filed and not decided in favour of registration. The opponent was ordered to pay the applicant's costs.