OMS Investments Inc v Gone Enterprises Pty Limited

This matter concerned an opposition by Gone Enterprises Pty Limited to the registration of a trade mark by OMS Investments Inc. The opposition was heard by Debrett Lyons, a Hearing Officer of the Trade Marks Hearings. The applicant, OMS Investments Inc., did not appear at the hearing and filed no written submissions or evidence in answer to the opposition.

The primary legal issues before the Hearing Officer were whether the applicant's trade mark should be rejected under section 44(1) of the Act, on the grounds that it was deceptively similar to registered trade marks owned by the opponent, and under section 43 of the Act, on the grounds that its use would be likely to deceive or cause confusion due to a connotation inherent in the mark. The opponent relied on a series of registered trade marks all ending in "-B-GON" and argued that the applicant's mark was deceptively similar to these, particularly to "BUG-B-GON".

In relation to section 44(1), the Hearing Officer applied the principles for assessing deceptive similarity, which involve considering the impression left on potential customers, the effect of spoken descriptions, and the usual behaviour of ordinary people in the context of the trade. The opponent had the onus of proving its case on the balance of probabilities. The Hearing Officer found that the opponent had not provided sufficient evidence to establish that the applicant's trade mark was deceptively similar to any of its registered marks, nor had it shifted the burden of proof to the applicant. Regarding section 43, the Hearing Officer noted that deception or confusion must arise from a secondary meaning inherent in the mark itself, and found no evidence that the applicant's trade mark possessed any such inherent secondary meaning.

As no grounds of opposition were established, the opposition failed. The Hearing Officer directed that the application for the trade mark be allowed onto the Register. No order for costs was made, as the applicant had not made any representations regarding costs.