Opposition by Collinson Group (Trademarks) Ltd to registration of trade mark application numbers 2199313 (9, 35, 43) –
[2025] ATMO 116
•16 June 2025
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Collinson Group (Trademarks) Ltd to registration of trade mark application numbers 2199313 (9, 35, 43) – THE PASS and 2199315 (9, 35, 43) – THE PASS By Australian Venue Co. (figurative) in the name of Australian Venue Co Limited
Delegate: | Louise Tuohy |
Representation: | Opponent: Andrew McRobert of Counsel instructed by Wrays Pty Ltd Applicant: Frances St John of Counsel instructed by Allens Patent and Trade Mark Attorneys |
Decision: | 2025 ATMO 116 Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 42(b) and 60 considered – none established – applications to proceed to registration |
Background
This matter concerns the oppositions by Collinson Group (Trademarks) Ltd (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth)[1] to registration of the following trade mark applications (‘Applications’) in name of Australian Venue Co Limited (‘Applicant’):
[1] Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.
Trade mark number: 2199313
Trade mark: THE PASS (‘313 Mark’)
Filing date: 2 August 2021
Specification: Class 9: Application software; software for the ordering and payment of food, drinks and/or goods at a venue including at restaurants; mobile phone software for the ordering and payment of food, drinks and/or goods at a venue including at restaurants; software for the booking of places at venues including at restaurants; mobile phone software for the booking of places at venues including at restaurants; software for customer loyalty programs; mobile phone software for customer loyalty programs.
Class 35: Organisation, administration and management of customer loyalty programs.
Class 43: Services for the provision of food and drink; food and drink catering; restaurant services; restaurant and venue reservation and booking services; catering services; booking of catering services; rental of rooms for social functions; provision of conference facilities.
(‘Applicant’s Goods and/or Services’)
Endorsement: Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied
And
Trade mark: 2199315
Trade mark: (‘315 Mark’)
Filing date: 2 August 2021
Specification:Applicant’s Goods and/or Services
Endorsement: Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied
The Applications were examined as required by s 31 and advertised for possible registration on 24 July 2023 for the 313 Mark and on 21 July 2023 for the 315 Mark.
The Opponent filed its Notices of Intention to Oppose possible registration on 21 September 2023, followed on 23 October 2023 by its Statements of Grounds and Particulars (‘SGPs’), later rectified. The Opponent filed its Notices of Intention to Defend on 4 December 2023.
Thereafter the parties filed evidence in accordance with the Regulations. The Opponent filed the following evidence in support:
Declaration of Helen Wynne, Vice President, Global Brand and Marketing at The Collinson Group Limited, the parent company of the Opponent, made on 8 March 2024 with Annexures 1 to 17 (‘Wynne’).
The Applicant filed the following evidence in answer:
Declaration of Hardi Nagreh, General Counsel and Company Secretary of the Applicant, made on 17 June 2024, with Exhibits HN-1 Tabs 1 to 14 and Confidential Exhibit HN-2 Tabs 1 to 4 (‘Nagreh’).
The Opponent did not file any evidence in reply.
Once time for filing evidence had ended both parties were given the opportunity to either request an oral hearing or a hearing by way of written submissions. Both parties requested to be heard by way of videoconference. As a delegate of the Registrar of Trade Marks (‘Registrar’) I heard the matter by videoconference on 27 May 2025. Andrew McRobert of Counsel instructed by Kathy Mytton of Wrays Pty Ltd appeared on behalf of the Opponent. Frances St John of Counsel, instructed by Natasha Burns and Ye Rin Yoo of Allens Patent and Trade Mark Attorneys appeared on behalf of the Applicant, with Henri Sheridan, Legal Counsel of the Applicant in attendance. The parties’ oral submissions were supported by written submissions filed prior to the hearing.
Grounds of Opposition, Relevant Date and Onus
In the SGP the Opponent nominated grounds of opposition under ss 42(b) and 60.
The date at which the rights of the parties are to be determined is the filing date of 2 August 2021 (‘Relevant Date’) which is also the priority date for the purposes of 60.
The Opponent bears the onus of establishing at least one of the grounds of opposition.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3]
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
Discussion
The Opponent
The Opponent is a global, privately owned company, operating within the airport and transport enhancement and loyalty and customer engagement fields. The Opponent works with payment networks, over 1,400 banks, 90 airlines and 20 hotel groups worldwide. The Opponent delivers airport experiences, loyalty and customer engagement solutions for over 400 million end customers.
The Applicant
Founded in 2015, the Applicant is the second largest hospitality group in Australia. It owns and operates a portfolio 195 hospitality venues across Australia including pubs, bars, restaurants and event/function spaces, at various locations including airports, ports and other transport hubs.
Section 60
Section 60 provides:
60 Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(a) because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.
In the SGP the Opponent particularised the s 60 ground of opposition as follows:
1. The Opponent is a global business operating within the airport and transport enhancement and loyalty and customer engagement space. One of the Opponent’s core brands is “PRIORITY PASS” which is for a loyalty programme relating to a global network of hospitality lounges, restaurants and food/beverage outlets, in which food and drink, conference room, dining, retail, spa, relaxation and other hospitality experiences and services (PRIORITY PASS Services) are provided.
2. The Opponent’s “PRIORITY PASS” programme is recognised by consumers worldwide as one of the largest and best airport lounge and experiences programmes in the world, with a high-perceived value to new and existing customers. The Opponent’s “PRIORITY PASS” members receive access to 1,400+ premium airport experiences worldwide across 148 countries and 600 cities, with such experiences including dining, retail and spa offers, including within Australia.
3. In addition to the “PRIORITY PASS” word mark, the Opponent’s services associated with the “PRIORITY PASS” brand are also provided under the stylised “PRIORITY PASS” logo [mark] (together, the PRIORITY PASS Marks).
4. The Opponent’s services under the PRIORITY PASS Marks are provided in person and via a mobile software application (PRIORITY PASS App) and numerous Australian lounges have been part of the “PRIORITY PASS” network for around 25 years.
5. The Opponent’s PRIORITY PASS Marks are used and recognised across Australia, including through the establishment of dedicated “PRIORITY PASS” lounges located at airports throughout Australia, including at Sydney Kingsford Smith, Brisbane, Melbourne, Adelaide Canberra, Townsville and Coolangatta airports, in addition to through partnerships with various other lounges, airport restaurants, cafes and bars.
6. The Opponent promotes the PRIORITY PASS Marks through the placing of AdWords/sponsored ads on search engines, as well as via social media, global press releases and mailshots.
7. By reason of the Opponent’s provision and promotion of the PRIORITY PASS Services, including by way of the PRIORITY PASS App, under the PRIORITY PASS Marks since at least 1998, the Opponent has developed, as at the priority date of the Opposed Application (being 2 August 2021), a substantial and valuable reputation in the PRIORITY PASS Mark in Australia in connection with the PRIORITY PASS Services and PRIORITY PASS App.
8. The Opposed Application is (at least) deceptively similar to the PRIORITY PASS Marks which have acquired reputations in Australia in connection with the PRIORITY PASS Services and PRIORITY PASS App. In this regard, the core essential and memorable element of each respective mark is the word “PASS”.
9. Because of the reputation that the Opponent has acquired in the PRIORITY PASS Marks in connection with the PRIORITY PASS Services, including by way of the PRIORITY PASS App, since at least 1998, being more than 23 years before the priority date of the Opposed Application, use of the Opposed Application in connection with the claimed goods and services is likely to deceive or cause confusion.
10. The Opposed Application must therefore be rejected pursuant to section 60 of the Trade Marks Act 1995 (TMA).
To satisfy s 60 the Opponent must establish that the trade marks upon which it relies had a reputation in Australia at the priority date of the 313 and 315 Marks. The Opponent must then establish that because of that reputation, use of the 313 and 315 Marks would be likely to deceive or cause confusion. Further each of the Opponent’s Marks are separate when considering the operation of s 60 and it is appropriate to consider the use to which they have each been put.
In McCormick & Co Inc v McCormick, Kenny J asked what is intended by the word ‘reputation’ in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.12F9F[4]
[4] [2000] FCA 1335, [81].
Justice Kenny also referred to the Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG, where the Registrar’s delegate observed:
[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sale or turnover of goods sold under the trade mark and contemplation of the advertising and promotional figures.
As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum sale, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorship, cross-promotions, ‘contra deals’ and so forth.
It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sale may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an association of the trade marks with the goods or services themselves.14F11F[5]
[5] (1999) 47 IPR 423, 436.
What constitutes a significant or substantial number of persons in the relevant market must be considered. Justice Heerey in Le Cordon Bleu BV v Cordon Bleu International Ltee provided some guidance:
What is “significant” or “substantial” will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.F12F[6]
[6] [2000] FCA 1587, [91], (albeit in relation to paragraph 28(a) of the now superseded Trade Marks Act 1955 (Cth)), (emphasis in original).
In this case, the Opponent is the operator of PRIORITY PASS (‘PP’), an airport experience loyalty program launched in 1992. Through the loyalty program travellers can assess a network of over 1,500 lounges and travel experiences, including dining, retail, sleep and spa, in over 650 airports in 148 countries. Access to the PP loyalty program is obtained through a PP membership which can be purchased directly from PP or through credit cards such as BOQ Specialist Signature Visa or Westpac Altitude Black which offer complimentary or discounted PP membership.[7]
[7] Wynne, Annexure 10.
Wynne states that the Opponent’s loyalty program operates under the plain word trade mark PRIORITY PASS and the logo trade mark (‘Logo Mark’) (collectively ‘Opponent’s Marks’). The Opponent’s loyalty program services provided under the Opponent’s Marks are provided in person and via a mobile software application.
Wynne declares that the Opponent’s Marks are used across Australia, including through dedicated PP lounges located at Australian airports, as well as through partnerships with other third party lounges, airport restaurants, cafes and bars. Wynne states that the first dedicated PP lounges were established in Australia in 2017, and that numerous Australian airport lounges and businesses have been part of the PP network for over 25 years. Confidential Exhibit 2 to Wynne comprises a list of Australian PP airport lounges and program partners as of May 2017. Confidential Annexure 7 to Wynne comprises a list of third parties that the Opponent has worked with, to provide its loyalty program services in Australia from 2003 to 2010. Wynne also provides a list of Australian airports and the dates when these airports were added to the Opponent’s inventory/network:
Sydney (added to the “Priority Pass” inventory/network in May 2017, and expanded in April 2018, January 2022 and June 2023);
Brisbane (added to the “Priority Pass” inventory/network in June 2017, and expanded in August 2019, September 2022, April 2023 and June 2023);
Melbourne (added to the “Priority Pass” inventory/network in November/December 2017, and expanded in May/June 2021, February 2022, September 2022 and June 2023);
Adelaide (added to the “Priority Pass” inventory/network in April 2018 and expanded in June 2023);
Canberra (added to the “Priority Pass” inventory/network in September and December 2020);
Perth (added to the “Priority Pass” inventory/network in August 2021, and expanded in March 2022);
Townsville (added to the “Priority Pass” inventory/network in July 2022); and
Coolangatta (added to the “Priority Pass” inventory/network in January 2023).
Annexure 2 to Wynne comprises screenshots from the Internet Archive Wayback Machine of the Opponent’s website (‘PP Website’) dated between 2017 to 2020. The screenshots provide information about airport lounges and experiences available to PP members at Australian airports under the Opponent’s Marks. Annexure 17 to Wynne comprises a copy of a Google Analytics report for Australian users of the PP Website for the period August 2023 to February 2024.
Wynne attests that the Opponent has generated extensive revenue from the provision of services under the Opponent’s Marks. Confidential Annexure 8 to Wynne comprises sales revenues for the period August 2016 to January 2024.
Wynne declares that the Opponent’s Marks and services are promoted on third party websites. Annexure 10 to Wynne comprises a spreadsheet listing Australian media mentions relating to various PP airport lounge and travel experiences. Annexure 11 to Wynne comprises a screenshot of an article published on the website dated March 2023. The article is a guide to PP membership in Australia and features the Opponent’s Marks.
Wynne states that the Opponent promotes the Opponent’s Marks and services through pay-per-click (‘PPC’) display advertisements. Annexure 12 to Wynne comprises copies of two PPC advertisements aired in Australia in early 2017 featuring the Logo Mark. Annexure 12 also comprises a Google Syndication Analytics report for the PPC advertisement campaign which shows that there were over 3,200 clicks and over 1.6 million impressions.
The Opponent has also promoted the Opponent’s Marks and services through Google PPC Text Ads running since 2017. Annexure 13 to Wynne comprises a Google Analytics report dated January 2017 to April 2023 referencing two PP advertisements that had over 25,000 clicks and 114,000 impressions during the campaign.
Wynne states that the Opponent has promoted the Opponent’s Marks and services through a Google Search Engine Marketing campaign in Australia for the years 2017 to 2020. Confidential Annexure 14 to Wynne comprises a summary table which shows impressions, clicks, conversion and advertising costs for the Opponent’s Google Search Engine Marketing campaign in Australia for the years 2017 to 2020.
Wynne states that the Opponent’s Marks and services are promoted by way of mailshots. Annexure 15 to Wynne comprises a sample of mailshots featuring the Opponent’s Marks and promotion of lounges and experiences in Australia dated 2022. This annexure includes a table providing numbers of Australian PP members on the mailshot mailing list via Mailchimp. Wynne states that mailshot subscribers have been acquired by the Opponent over a number of years prior to the Relevant Date.
Wynne attests that the promotion of the Opponent’s Marks and services also takes place via the Opponent’s social media accounts including LinkedIn, Facebook, Instagram, X and YouTube.[8]
[8] Wynne [34], Annexure 16.
The Applicant submits that the majority of the Opponent’s evidence shows global use of the Opponent’s Marks, not use specifically directed to Australian consumers. Moreover, the evidence does not distinguish between customer-facing use and use “behind the scenes”, for example, there is no evidence of how the Opponent’s Marks were used in relation to airport lounges. Furthermore, the Applicant argues that there is no evidence of how much of the Opponent’s sales revenue was derived from Australian PP members, that is, from consumers who are likely to have been exposed to the Opponent’s Marks.
In my assessment of the evidence I find that the Opponent has failed to sufficiently evidence the breadth of the Australian public that are likely to be aware of either of the Opponent’s Marks by quantitative or qualitative dimensions.
The sales revenue is modest and it is not clear what the figures represent. The figures are not broken down to show how much revenue was generated under each of the 313 and 315 Marks. Moreover, there is no evidence that the sales transactions are from Australian customers (rather than international customers) accessing the Opponent’s services in Australia and therefore demonstrating a recognition of the Opponent’s Marks in Australia.
The Opponent has provided no indication of its market share in the Australian loyalty program landscape. The number of Australians who are members of the Opponent’s PP loyalty program can be made out from the table providing Australian PP members who are subscribers to its mailshot mailing. However, I consider the membership size adduced from these figures is unimpressive.
The Opponent’s promotion of the Opponent’s Marks and services via its PP Website and social media accounts are directed to users worldwide and even though information about Australian airport lounges and experiences is provided, this does not constitute use of the Opponent’s Marks in Australia, on the basis that such use is not specifically targeted to Australian consumers. Likewise, media mention of the Opponent’s services under the Opponent’s Marks by Australian publications is limited, with most of the evidence being articles from foreign publications, with no supporting evidence that this use was specifically directed at Australia.
The Opponent’s PPC advertising campaigns are supported by Google reports, however the number of users interacting with the Opponent’s advertisements is minimal and the reports do not appear to be limited to Australian consumers. Moreover, the Google Search Engine Marketing campaign undertaken by the Opponent is not supported by any evidence.
Overall, the evidence is insufficient to establish, as a matter of fact, that the Opponent’s Marks had acquired a reputation in Australia amongst a significant or substantial number of consumers.
As I have found that the Opponent’s Marks have not acquired a reputation in Australia before the Relevant Date, there is no need for me to consider the second limb of s 60.
The Opponent has not established the ground of opposition under s 60.
Section 42(b)
Section 42(b) provides:
42 Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
…
(b) its use would be contrary to law.
The case law on s 42(b) requires the Opponent to show that use of the 313 and 315 Marks would be, rather than could or might be, contrary to law.[9] As observed by Rangiah J in Primary Health Care Limited v Commonwealth of Australia:
It is not enough for a party opposing registration to show that s 18 of the ACL [Australian Consumer Law 2010] or s 52 of the TPA [Trade Practices Act 1974] might be contravened. The opponent must prove, on the balance of probabilities, that the provision would be contravened by use of the trade mark.[10]
[9] Advantage Rent a Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).
[10] [2017] FCAFC 174, [411].
The Opponent submits that registration of the 313 and 315 Marks should be refused under s 42 as the use by the Applicant in relation to the Applicant’s Services would be likely to mislead or deceive contrary to s 18 of the Australian Consumer Law (2010) (Cth) (‘ACL’) and constitute passing off.
The Opponent submits that there is a striking similarity between the Opponent’s word trade mark PRIORITY PASS, under which the Opponent has traded for about 25 years, and the 313 and 315 Marks.
The Opponent argues that on no view could one say that the Applicant has “done enough having regard to all the relevant differentiation factors to distinguish” its goods and services from those of the Opponent. To the contrary, it has adopted and used trade marks which are very similar to that used by the Opponent over many years.
The Opponent submits that in circumstances where the 313 and 315 Marks so closely resemble the Opponent’s Marks and are sought to be registered, and thus used, in relation to much the same services, it is inevitable that the Applicant’s use of the 313 and 315 Marks would be contrary to law.
In response the Applicant states that the test for misleading or deceptive conduct under s 18 of the ACL is a more stringent test than that for deception or confusion under s 60. Further, where a trade mark does not run afoul of s 18 of the ACL, nor will it constitute the tort of passing off. The Applicant submits that under this ground, it is not enough for the Opponent to prove consumers might be confused. The Opponent needs to prove, for the ACL that it is likely consumers would be misled or deceived; or, for passing off, that the public is likely to be led to believe, by reason of the Applicant’s use of the 313 and 315 Marks, that the Applicant’s Goods or Services are goods or services of the Opponent. For these reasons, the Applicant’s use of the 313 and 315 Marks would not contravene the ACL or constitute passing off.
Under s 18 of the ACL there would be misleading or deceptive conduct if, in offering the Applicant’s Services the Applicant were to present either overtly or indirectly[11] an association between itself and the Opponent as by way of approval, endorsement or recommendation.[12] In reviewing the total of the Opponent’s evidence before me I have not found the Applicant has engaged in any such conduct.
[11] Seven Network Ltd v News Interactive Pty Ltd (2004) 63 IPR 28 [32] (Tamberlin J).
[12] As noted in Twentieth Century Fox Film Corp v South Australian Brewing Co Ltd (1996) 34 IPR 225 [242], (Tamberlin J), the precise nature and content of the association may be difficult to define. See also Subafilms Ltd v Tenancy Management Pty Ltd [2006] ATMO 11 [25] to [27], (Hearing Officer O’Brien).
Relief pursuant to the tort of passing off is only possible if there has been some sort of misrepresentation which is likely to damage the Opponent’s company.[13] The Opponent has established neither.
[13] Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506, [40] (Hill J).
Therefore, the Opponent has not established its ground of opposition under s 42(b).
Decision
Section 55 provides:
55 Decision
(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
The Opponent has not established any grounds of opposition. Therefore, trade mark application numbers 2199313 and 2199315 may proceed to registration one month from the date of this decision. If the Registrar is served with a notice of appeal, I direct that the disposition of the Applications should be in accordance with the Court’s order or direction.
Costs
It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Opponent under s 221 in line with Schedule 8 of the Regulations.
Louise Tuohy
Hearing Officer
Delegate of the Registrar of Trade Marks
16 June 2025
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