Opposition by OpenAI OpCo LLC to registration of trade mark application number 2351553 (class 45) - IMMIGPT - in the name of REALOZ INTERNATIONAL PTY LTD
[2025] ATMO 141
•21 July 2025
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by OpenAI OpCo LLC to registration of trade mark application number 2351553 (class 45) - IMMIGPT - in the name of REALOZ INTERNATIONAL PTY LTD
Delegate: | Tracey Berger |
Representation: | Opponent: Ian Horak, Kings Counsel, instructed by Madderns Pty Ltd Applicant: No appearance |
Decision: | 2025 ATMO 141 Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b) and 60 considered – s 60 established – registration of trade mark refused |
Background
This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by OpenAI OpCo LLC (‘Opponent’) to registration of the trade mark the subject of the application detailed below in the name of REALOZ INTERNATIONAL PTY LTD (‘Applicant’):
[1] Unless stated otherwise, each reference to a section or regulation is a reference to the Trade Marks Act 1995 (Cth) (‘Act’) or Trade Marks Regulations 1995 (Cth) (‘Regulations’).
Number: | 2351553 (‘Application’) |
Trade Mark: | IMMIGPT (‘Trade Mark’) |
Filing Date: | 25 April 2023 (‘Relevant Date’) |
Services: | Class 45: Provision of information in relation to migration and immigration services; Legal services in the field of immigration; Immigration agency services (legal services) (‘Applicant’s Services’) |
On 24 November 2023, the Opponent filed a Notice of Intention to Oppose followed on 21 December 2023 by a Statement of Grounds and Particulars (‘SGP’). The Applicant filed a Notice of Intention to Defend the opposition on 16 February 2024.
The parties then had the opportunity to file evidence in accordance with the Regulations. The Opponent filed its evidence in support (‘EIS’) of the opposition on 21 May 2024. The Applicant filed its evidence in answer (‘EIA’) on 21 August 2024 which was followed by the filing of the Opponent’s evidence in reply (‘EIR’) on 11 November 2024.
Once the evidence stage ended, the parties had the opportunity to request a hearing. The Opponent requested an oral hearing and the Applicant did not ask to be heard. The Opponent filed a written summary of its submissions on 28 May 2025. I heard this matter as a delegate of the Registrar of Trade Marks, via videoconference on 11 June 2025. At the hearing, Ian Horak, Kings Counsel, instructed by Louise Emmett of Madderns Pty Ltd, appeared for the Opponent. I make my decision based on the aforementioned materials and submissions of the Opponent.
Grounds, onus and Relevant Date
In its SGP, the Opponent nominated grounds of opposition under ss 42(b), 44, 58A, 58 and 60. At the hearing, the Opponent pressed only the ss 42(b) and 60 grounds.
The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[2] The standard of proof is the ordinary civil standard on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is the Relevant Date.
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
Evidence
The following evidence was filed in the proceedings:
| 8. Declarant and Position | Date | Exhibits/Appendixes |
| EIS | ||
| Gideon Myles, Associate General Counsel, Patents and Trademarks of the Opponent (‘Myles 1’) | 20 May 2024 | GM1 to GM35 |
| EIA | ||
| Rui Luo, founder and owner of the Applicant (‘Luo’) | 21 August 2024 | 1 to 3 |
| EIR | ||
| Gideon Myles (‘Myles 2’) | 10 November 2024 | GM36 to GM38 |
Opponent’s evidence
Myles 1 declares that the Opponent is an AI research and deployment company within the OpenAI Group, wholly owned by OpenAI Inc. Any reference to the Opponent in this decision includes any of the companies in the OpenAI Group and their operates are referred to as the OpenAI Business.
The OpenAI Business started in December 2015, founded by technology leaders including Sam Altman, Elon Musk, Peter Thiel, Reid Hoffman, Jessica Livingston, and Ilya Sutskever, and gained significant global publicity, including in Australia.
Since its inception, the OpenAI Business has been involved in researching, developing, and deploying various AI models and software. This includes the 2018 release of GPT, a natural language and code processing software model (‘GPT Software’) used by software developers, the general public and businesses. The Opponent has continually enhanced and released more advanced versions of the GPT Software, known as GPT-2 in 2019, GPT-3 in 2020, and GPT-4 in 2023. Myles 1 asserts that GPT-4 can follow complex natural language instructions and solve challenging problems accurately. The GPT Software is a large language model (‘LLM’), a type of AI system designed to understand and generate human language, with LLM being the descriptive term for the software. The GPT Software can be used across various industries for a broad range of services[4] and examples of traders using the Opponent’s GPT Software in the legal industry are provided in Myles 1.[5]
[4] Myles 1, Exhibit GM9 and for Australian specific examples see Exhibits GM18-24.
[5] Ibid, Exhibits GM34-35.
In June 2020, the Opponent launched an application program interface (‘API’) which allows software developers to build their own software applications integrating the Opponent’s software models, including the GPT Software Platform (‘OpenAI API Platform’). By March 2021, tens of thousands of developers globally were using the OpenAI API Platform, with the first Australian developer signing up in October 2020, and more than 300 software applications have been created using the GPT Software.[6]
[6] Ibid, Exhibit GM12.
In November 2022, the Opponent introduced ChatGPT, an advanced AI system that serves as a consumer-facing interface which incorporates the GPT Software. ChatGPT allows users to engage in direct conversations with the software and receive AI-generated information in a conversational manner.
ChatGPT is available for free to the general public, but the Opponent also offers a premium subscription service called ChatGPT Plus, which has been available since February 2023. Additionally, an enterprise version with enhanced security for corporate users was launched in August 2023, and a pricing option for teams to enhance collaboration was introduced in February 2024.
Myles 1 claims that the signs GPT and ChatGPT (together the ‘Opponent’s Marks’) have been extensively used and as a result, both marks have acquired a significant reputation in Australia and internationally. Confidential figures showing the number of customers who have accepted the terms and conditions imposed to use the GPT Software and ChatGPT interface are provided in Myles 1.[7]
[7] Ibid, [48] and [49].
The Opponent’s Marks are promoted on its website at (‘OpenAI Website’) and social media accounts. Since November 2022, the Opponent’s ChatGPT software interface has been available at a dedicated website at (‘ChatGPT Website’) and links to this website are available on the OpenAI Website. In May 2023, a mobile application version of ChatGPT (‘ChatGPT app’) was made available on the Apple App Store and in July 2023, it was released on the Google Play Store. Extracts of the OpenAI Website and ChatGPT Website as well as ChatGPT apps are provided.[8]
[8] Ibid, Exhibits GM3 to GM5.
To use the GPT Software and ChatGPT, users must create an account and agree to the Opponent’s Terms of Use and brand guidelines.[9] It is believed that more than 1 million users accessed ChatGPT in the first five days of its launch and 27 million users had signed up within the first few weeks.[10] In December 2022, the OpenAI Website was ranked the 44th highest traffic website globally with 672 million visits monthly.[11]
[9] Ibid, Exhibits GM9 and GM10.
[10] Ibid, Exhibit GM13
[11] Ibid, [40] and Exhibit GM14.
In November 2023, the Opponent announced custom versions of the ChatGPT software interface that users can create for a specific purpose, called GPTs. In January 2024, the GPT Store was opened so users could find useful and popular GPTs. Various blogs posted on the OpenAI Website about GPTs and the GPT Store are exhibited.[12] Myles 1 also exhibits a printout from the GPT Store showing GPTs relating to immigration.
[12] Ibid, Exhibit GM-6
Myles 1 declares that the Opponent’s use of the GPT mark was ‘substantially exclusive’ until around November 2022 when ChatGPT was released and ‘exploded in popularity’. Since that time, the Opponent has encountered other traders using or attempting to register marks containing ‘GPT’ in relation to software and software services.
Myles 1 outlines the Opponent’s concerns with the Trade Mark and attests that the Applicant became a customer of the Opponent in about December 2022. Myles 1 provides extracts from the Applicant’s website at (‘Applicant’s Website’) which includes the following disclaimer (‘Applicant’s Disclaimer’):
This App is powered by Dify and developed by RealOZ Education and Migration. We are not affiliated, associated, authorised, endorsed by, or in any way officially connected with OpenAI, or any of its subsidiaries or its affiliates.
Myles 2 responds to many of the claims made in Luo and it is not necessary to summarise this declaration at this time.
Applicant’s evidence
Luo acknowledges that the Trade Mark is a combination of the prefix word ‘IMMI-‘ representing ‘immigration’ and ‘-GPT’, which stands for ‘Generative Pre-trained Transformer.’ Luo claims that GPT is a generic term that ‘is widely used in the machine learning and natural language processing fields to describe a specific type of model architecture’. In support of this claim, the Applicant annexes the entry for GPT in the online Cambridge Dictionary.
According to Luo, the Applicant’s Website ‘serves as an informative platform that offers preliminary guidance on visa application requirements, fees, and other related immigration matters’ and is intended to encourage potential clients to utilise the Applicant’s immigration services. Luo declares that the Applicant’s Website includes the Applicant’s Disclaimer ‘to ensure transparency and avoid any potential confusion with OpenAI’.
The remainder of Luo amounts to submissions disputing that a reputation existed in the Opponent’s Marks at the Relevant Date and arguing the differences in the Applicant’s and Opponent’s respective uses of their marks and target consumers.
Discussion
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
(b) 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.
To establish this ground of opposition, the Opponent must demonstrate the existence of a reputation in another trade mark(s) in Australia at the Relevant Date. The Opponent must then establish that because of the aforesaid reputation, the use of the Trade Mark would be likely to deceive or cause confusion.
In its SGP, the Opponent claims that a significant reputation existed in each of the Opponent’s Marks at the Relevant Date and as a result of that reputation, the use of the Trade Mark would be likely to deceive or cause confusion.
Reputation
Reputation, in the context of section 60, refers to the ‘recognition of [the other mark] by the public generally’.[13] The reputation relied on by the Opponent must be amongst a significant or substantial number of persons.[14] What amounts to a significant or substantial number of people is informed by the relevant market and the nature of the goods or services in question.[15]
[13] McCormick & Co Inc v McCormick [2000] FCA 1335, [81] (Kenny J) (‘McCormick’).
[14] Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin, Goldberg JJ).
[15] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).
Reputation cannot be assumed and must be established by the Opponent as a matter of fact.[16] The reputation of a trade mark may be established in a variety of ways, including by demonstrating that a significant number of people have been exposed to the trade mark,[17] or by providing evidence of high volume of sales, advertising expenditure or other forms of promotion of goods or services to which the trade mark applies.[18] Furthermore, as Kenny J noted in McCormick, referring to the delegate’s decision in Hugo Boss:
I think that it is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that 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 the esteem, or image, projected by that trade mark. The quantum of sales, 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 owner of the trade marks in question choses to associate the trade marks via sponsorships, 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 sales 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 associative force in the minds of the public as the association of the trade marks with the goods or services themselves.
The public perception of how a trade mark is being used, developed and exploited by its owner also constitutes a part of that reputation…[19]
[16] Conagra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J).
[17] Ibid [118].
[18] McCormick (n 13), [86].
[19] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG [1999] ATMO 23; (1999) 47 IPR 423, 436 (Delegate I. Thompson).
The Opponent asserts that a reputation existed in its GPT mark at the Relevant Date as a result of its use since 2018 and from late 2022, as part of its ChatGPT mark. As a result of that use and extensive exposure globally, the Opponent claims that consumers will associate the mark GPT with the Opponent’s business, services and software. The Opponent disputes the Applicant’s contention that ‘-GPT’ in the Trade Mark will be perceived as a reference to ‘generative pretrained transformer’ and not to indicate an association with the Opponent. Further, the Opponent says that use of GPT in the Trade Mark identifies the AI software of the Opponent which can be used in providing the Applicant’s Services and there is no other reason for including this element in the Trade Mark. Moreover, the Applicant has contractually acknowledged the Opponent’s ownership of the GPT mark by agreeing to the Opponent’s terms and conditions. The Opponent also assets that the Applicants’ Disclaimer acknowledges that there is a risk that consumers will mistakenly assume an association between the Opponent’s Marks and the Trade Mark.
The EIA challenges the Opponent’s claim to a reputation in the Opponent’s Marks on the basis that there is no charge for some goods and services offered under the Opponent’s Marks and due to the relatively short period of use of ChatGPT before the Relevant Date.
In my view, the Opponent’s evidence establishes that each of the Opponent's Marks had gained a reputation in Australia before the Relevant Date for software, software interfaces, and related AI products and services. The Opponent first released its software under the mark GPT in 2018, followed by updates named GPT-2, GPT-3, and GPT-4 before the Relevant Date. In mid-2020, the OpenAI Platform was launched, allowing software developers worldwide, including in Australia, to use the GPT Software to create their own applications. By March 2021, over 300 applications had been developed using GPT software in various fields such as customer feedback, entertainment, and customer support.[20]
[20] Myles 1, Exhibit GM12.
When ChatGPT was launched, it became the fastest-growing consumer software application in history, reaching an estimated 100 million monthly users within two months, faster than TikTok or Instagram. [21] By February 2023, the OpenAI website was receiving 24 million daily visits. By March 2023, ChatGPT was being used by companies in management consulting, education, online retail, grocery delivery, [22] and by Australians for advice on relationships, gambling, legal matters, creating recipes, illustrating books, and writing speeches and educational reports.[23] Australian businesses in law, architecture, event management, coding, beauty, floristry, public relations, marketing, [24] and accounting[25] were also using ChatGPT. By August 2023, 80% of Fortune 500 companies, including Canva, PwC, and The Estee Lauder Companies, were using ChatGPT. [26] Additionally, there was significant media coverage of the Opponent's GPT and ChatGPT products in Australia, including mainstream media.
[21] Ibid, Exhibit GM13.
[22] Ibid, Exhibit GM16.
[23] Ibid, Exhibit GM18
[24] Ibid, Exhibit GM19 and GM20.
[25] Ibid, Exhibit GM24.
[26] Ibid, Exhibit GM15.
Despite the relatively short period of use of ChatGPT before the Relevant Date, I consider that a substantial reputation existed in this mark at the Relevant Date. There was swift adoption of ChatGPT globally and in Australia by developers, businesses and individuals using it in all aspects of life and business. Even those people who had not yet tried ChatGPT at the Relevant Date would undoubtedly have heard or read about it. I am further satisfied that the Opponent’s mark GPT had a reputation in Australia for software and AI-related goods and services by the Relevant Date.
Likelihood of Deception and Confusion
Section 60(b) requires a causal connection between the reputation of the Opponent’s Marks and the likelihood that use of the Trade Mark will deceive or cause confusion.
The concept of ‘deceive’ and ‘cause confusion’ was explained by Richardson J in the New Zealand decision of Pioneer Hi-Bred Corn Co v Hy-line Chicks Pty Ltd:
‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.[27]
[27] [1979] RPC 410, 423.
The likelihood of deception or confusion must be real and tangible.[28] Consumers need not think that the respective marks are the same and any confusion does not necessarily need to persist to the point of purchase.[29] It is sufficient if consumers would have cause to wonder if the goods or services provided under the Trade Mark are being provided by the same person as the owner of the mark in which the reputation has been established.[30] A number of factors are relevant to this determination, including the strength of the reputation of the other trade mark, the similarity between the relevant goods or services, and the degree of similarity between the trade marks.[31]
[28] Southern Cross Refrigerating Co. v Toowoomba Foundry Pty Ltd (1954) 91 CLR 952, 595 (Kitto J).
[29] eBay Inc v Dean William Hawkins [2014] ATMO 54, [38] (Delegate I. Thompson).
[30] Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd (2016) 122 IPR 232, [76] (Davies J).
[31] Qantas Airways Limited v Edwards [2016] FCA 729, [142] (Yates J).
There is no requirement that the Trade Mark and the Opponent’s Marks be deceptively similar. In this regard, the Opponent notes a number of decisions where despite differences in the marks, there was sufficient reputation that a likelihood of confusion was found including:
a. TRADIEBAY in light of the reputation for EBAY;[32]
b. THROTTLE JOCKEY in light of the reputation for JOCKEY;[33]
c.COMMERCIAL RADIO AUSTRALIA in light of the reputation for RADIO AUSTRALIA;[34] and
d. AUSTRALIAN SANDS in light of the reputation for BONDI SANDS.[35]
[32] eBay Inc. v Tradiebay Pty. Limited [2013] ATMO 58 (Delegate J. Spence).
[33] Jockey International, Inc. v Darren Wilkinson [2010] ATMO 22 (Delegate J. Spence).
[34] Australian Broadcasting Corporation v Commercial Radio Australia Ltd [2010] ATMO 46 (Delegate H. Wilson).
[35] Bondi Sands Pty Ltd v Marq Group Holdings BV [2023] ATMO 189 (Delegate A. Makrigiorgos).
I acknowledge that ‘GPT’ stands for ‘generative pre-trained transformer’, but I believe most Australian consumers are unlikely to know this. Additionally, there is no evidence that other traders use this term for similar goods and services as the Opponent. The Opponent argues that even consumers who know the acronym's meaning would associate GPT with the Opponent's goods and services. The Opponent compares this to IBM, which stands for ‘International Business Machines’ but is recognised as a trade mark for a known company.
In Australian Woollen Mills Ltd v FS Walton & Co Ltd, Dixon and McTiernan JJ observed:[36]
The rule that if a mark or get-up for goods is adopted for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse, no doubt, is as just in principle as it is wholesome in tendency. In a question how possible or prospective buyers will be impressed by a given picture, word or appearance, the instinct and judgment of traders is not to be lightly rejected, and when a dishonest trader fashions an implement or weapon for the purpose of misleading potential customers he at least provides a reliable and expert opinion on the question whether what he has done is in fact likely to deceive. Moreover, he can blame no one but himself, even if the conclusion be mistaken that his trade mark or the get-up of his goods will confuse and mislead the public.
[36] [1937] HCA 51; (1937) 58 CLR 641, 657.
The Applicant acknowledges that the Trade Mark was developed as an abbreviation of ‘IMMI-’ for immigration and ‘-GPT’ referencing the means of providing the Applicant’s Services. Having agreed to the Opponent’s terms and conditions, the Applicant was well aware of the Opponent’s Marks. The Opponent contends that given this knowledge, I should subjectively infer that GPT appears in the Trade Mark because of the reputation in the Opponent’s Marks and not due to any desire to reference ‘generative pretrained transformers’. I agree with the Opponent. I consider that given the fame of the ChatGPT mark, and more limited reputation in GPT, consumers seeing the Trade Mark would understand the Trade Mark as suggesting an association with the Opponent’s Marks. Although the Opponent does not itself offer immigration services, Australian consumers understand that ChatGPT has wide application in diverse industries. The Trade Mark adopts a similar construction to ChatGPT increasing the likelihood that consumers seeing the Trade Mark would assume that services offered under the Trade Mark are the ‘immigration’ version of the Opponent’s ChatGPT or that the immigration services are provided using the Opponent’s GPT Software. The most logical explanation for ‘-GPT’ in the Trade Mark is to indicate to consumers that the provision of the Applicant’s Services involves the use of AI in a similar manner to ChatGPT. I am satisfied that a significant number of members of the public would recognise a connection between the Trade Mark and the Opponent’s Marks as a result of the reputation in those marks and will be likely to be deceived or confused in the requisite sense.
For the reasons outlined above, the s 60 ground of opposition is established.
Decision
The Opponent has established a ground of opposition under s 60. Accordingly, I refuse to register the Trade Mark under application number 2351553. I direct that the refusal be recorded one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, the refusal shall not occur until the appeal has been withdrawn or discontinued. The disposition of the Application should otherwise be in accordance with the Court’s orders or directions.
The Opponent has sought an award of costs. As costs generally follow the event, I award costs against the Applicant under s 221 in the relevant amounts under Schedule 8 of the Regulations.
Tracey Berger
Hearing Officer
Delegate of the Registrar of Trade Marks
21 July 2025
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