Opposition by Mitsubishi Heavy Industries, Ltd to registration of trade mark application number 2048315 (9, 36, 38, 42, 45) - Qoin - in the name of BPS Financial Limited.

This matter concerned an opposition by Mitsubishi Heavy Industries, Ltd to the registration of trade mark application number 2048315, for the mark "Qoin", in the name of BPS Financial Limited. The opposition was brought under various sections of the *Trade Marks Act 1995* (Cth), including section 58, which relates to the applicant not being the owner of the trade mark. The hearing officer was required to determine whether any of the grounds of opposition raised by Mitsubishi Heavy Industries, Ltd had been established.

The primary legal issue was whether the applicant, BPS Financial Limited, was the owner of the trade mark "Qoin" within the meaning of section 58 of the Act. To succeed on this ground, the opponent, Mitsubishi Heavy Industries, Ltd, needed to establish that its relied-upon trade mark was substantially identical to the opposed trade mark, that the services were of the same kind, and that a person other than the applicant had an earlier claim to ownership based on prior use in Australia. The opponent also contended that the opposed trade mark was substantially identical to its own trade marks, which had been used continuously in Australia prior to the priority date of the opposed trade mark.

In considering the ground under section 58, the hearing officer applied the test for substantial identity, which requires a side-by-side comparison of the trade marks, having regard to their essential features. The opponent's trade marks were compared to the applicant's "Qoin" mark. The hearing officer found clear visual differences between the marks, particularly in the third and fourth letters, and noted that other relied-upon trade marks also included additional words and device elements. Consequently, the hearing officer concluded that the compared trade marks were not substantially identical, and the total impression was not one of similarity. As the opponent had not established this, or any other, ground of opposition, the hearing officer decided that the trade mark application could proceed to registration. The hearing officer also awarded costs against the opponent, as is usual when costs follow the event.