Opposition by The Grapevine BVBA to registration of trade mark application 1974814 (35) – THE INSIDERS COMMUNITY – in the name of Are Media Pty Ltd

The opposition was brought by The Grapevine BVBA against the trade mark application 1974814, "THE INSIDERS COMMUNITY," in class 35, filed by Are Media Pty Ltd. The dispute concerned whether the applicant's mark should be registered, given the opponent's existing trade mark rights. The decision was made by Robert Wilson, Hearing Officer and Delegate of the Registrar of Trade Marks.

The primary legal issue before the Delegate was whether the applicant's trade mark application should be refused under section 44 of the *Trade Marks Act 1995* (Cth). This section requires an application to be rejected if the applicant's trade mark is substantially identical with, or deceptively similar to, a registered trade mark for similar services, and the priority date of the applicant's mark is not earlier than that of the registered mark. The Delegate also considered the grounds of opposition raised under sections 42(b), 58, and 60 of the Act, although the focus of the decision was on section 44. The onus of proof rested on the opponent, and the standard of proof was the ordinary civil standard on the balance of probabilities, with the relevant date for determination being 11 December 2018.

The Delegate found that the opponent had established the ground of opposition under section 44. The reasoning involved assessing whether the applicant's mark, "THE INSIDERS COMMUNITY," was deceptively similar to the opponent's registered trade marks for services that were similar or closely related to those offered by the applicant. The Delegate applied the principles of deceptive similarity, which require consideration of whether the marks, when compared as a whole, are likely to deceive or cause confusion. Having found that the opponent had successfully demonstrated a ground for opposition, the Delegate refused to register the trade mark.

Consequently, the Delegate ordered that the trade mark application be refused. The Delegate also awarded costs to the opponent, following the general rule that costs follow the event, and ordered the applicant to pay the opponent's costs in accordance with the amounts specified in Schedule 8 of the *Trade Mark Regulations 1995*.