Percepta International Limited v Project Management Institute Inc

This decision concerns an opposition proceeding before the Australian Trade Marks Hearings. The opponent, Percepta International Limited, sought to oppose the registration of the trade mark OPM3 by the applicant, Project Management Institute Inc. The opposition was based on a single ground.

The primary legal issue before the Hearing Officer was whether the opponent had discharged the onus of establishing the ground of opposition pursued, which required proof on the balance of probabilities. This assessment was to be made as at the priority date of the application, which was 1 September 2005. The Hearing Officer also considered whether the trade mark OPM3 possessed sufficient inherent adaptation to distinguish at its priority date, in accordance with subsection 41(2) of the relevant legislation.

The Hearing Officer found that the opponent had not established the ground of opposition. In reaching this conclusion, the Hearing Officer noted that the trade mark OPM3 had been examined and accepted by the Trade Marks Office on multiple occasions, including for the opposed application and its predecessors, without any objection being raised under section 41. The Hearing Officer was satisfied that the letter/number combination OPM3 had sufficient inherent adaptation to distinguish at its priority date. Consequently, the opposition failed.

The Hearing Officer ordered that trade mark application 1248599 for the trade mark OPM3 may proceed to registration one month from the date of the decision, subject to any notice of appeal being served on the Registrar. The Hearing Officer also awarded costs against the opponent in favour of the applicant.