Opposition by Take-Two Interactive Software, Inc. to registration of trade mark application number 1864669 (classes 9, 16) – TAKE TWO, TWO MINUTES TO… with device - in the name of Take Two App Pty Ltd

This matter concerned an opposition by Take-Two Interactive Software, Inc. (the Opponent) to the registration of trade mark application number 1864669, for the mark TAKE TWO, TWO MINUTES TO… with device, in the name of Take Two App Pty Ltd (the Applicant). The opposition was heard by Katrina Brown, Hearing Officer, in the Trade Marks Office.

The legal issues before the Hearing Officer were whether the grounds of opposition relied upon by the Opponent, namely sections 42(b), 44, 58, 60, and 62A of the *Trade Marks Act 1995* (Cth), had been established. The Opponent bore the onus of proving these grounds on the balance of probabilities, with the relevant date for assessment being 9 August 2017.

The Hearing Officer found that the Opponent had established a ground of opposition under section 60 of the Act in respect of some goods within class 9. This ground requires the Opponent to demonstrate that another trade mark had acquired a reputation in Australia before the priority date of the application, and that the use of the applied-for mark would be likely to deceive or cause confusion due to that reputation. However, the Hearing Officer found that the Opponent had not provided sufficient evidence to support its assertions under section 62A (bad faith), nor had it established the other nominated grounds.

As a result of the partial success of the opposition under section 60, the Hearing Officer informed the Applicant of an intention to refuse registration unless the specification of goods in class 9 was amended. The Applicant agreed to amend the specification to "downloadable software applications for personal development programs namely software for generating motivational texts to improve relationships." With this amendment, and as class 16 remained unchanged, the trade mark application was permitted to proceed to registration. Costs were declined as both parties were considered partly successful.