Opposition by Brickfields Consulting Pty Ltd to registration of trade mark application number 1875371 (class 42) – PLACE VISIONING - in the name of Andrew Hoyne Design Pty Ltd

This matter concerned an opposition by Brickfields Consulting Pty Ltd (the Opponent) to the registration of the trade mark application number 1875371, "PLACE VISIONING", in class 42, by Andrew Hoyne Design Pty Ltd (the Applicant). The decision was made by Jock McDonagh.

The primary legal issue before the court was whether the trade mark "PLACE VISIONING" was inherently adapted to distinguish the Applicant's services, or whether it had acquired distinctiveness through use, pursuant to section 41 of the relevant legislation. The Opponent argued that the terms "place vision" and "place visioning" were generic and descriptive within the placemaking industry, and therefore other traders should be free to use them.

The court reasoned that the combination of the words "place" and "visioning" created an obvious and direct reference to the design, planning, and consultancy services offered by the Applicant. Applying the principles from cases such as *Clark Equipment Co v Registrar of Trade Marks* and *Cantarella Bros Pty Ltd v Modena Trading Pty Ltd*, the court found that the trade mark was not inherently adapted to distinguish the Applicant's services. The court also considered the Applicant's evidence of use, finding it insufficient to establish that the trade mark had acquired distinctiveness by the priority date. The evidence of use was limited in duration and invariably associated with the Applicant's name, and the use of the TM symbol was not considered determinative of actual trade mark use.

Consequently, the court found that the Opponent had established a ground of opposition under section 41 and rejected the application. The Opponent was awarded costs against the Applicant.