Opposition by Viacom International Inc to registration of trade mark application number 1998719 (class 41) - BEHIND THE SONG - in the name of Helium Pictures Pty Ltd

Viacom International Inc (the Opponent) opposed the registration of trade mark application number 1998719, for the mark "BEHIND THE SONG" in class 41, by Helium Pictures Pty Ltd (the Applicant). The opposition was heard by Timothy Brown.

The primary legal issues before the court were whether the Applicant's trade mark application should be refused registration under sections 44 and 60 of the *Trade Marks Act 1995* (Cth). The Opponent bore the onus of establishing these grounds on the balance of probabilities, with the relevant date for determining the rights of the parties being the priority date of the Applicant's trade mark application, 27 March 2019.

The court found that the Opponent had established its opposition under section 44(2) of the Act. To succeed on this ground, the Opponent needed to demonstrate that the Applicant's trade mark was substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, registered in the name of a party other than the Applicant, in respect of similar services or closely related goods. The court was satisfied that the Opponent's trade mark had an earlier priority date and was held by a different party. Furthermore, the court considered the Applicant's broad specification of entertainment services to be similar to the entertainment services covered by the Opponent's trade mark. Applying the test for substantial identity, which involves comparing the marks side by side and assessing their similarities and differences in light of their essential features and the total impression of resemblance, the court concluded that the Applicant's trade mark met the criteria for refusal under section 44.

Consequently, the court ordered that the trade mark application be refused registration.