Propti Pty Ltd v Sage Realty Sydney Pty Ltd

In this matter before the Delegate of the Registrar of Trade Marks, Nicholas Smith, the Opponent, Propti Pty Ltd, opposed the registration of a trade mark by the Applicant, Sage Realty Sydney Pty Ltd. The dispute concerned the Opponent's claim that its own trade mark, the "Propti Mark," had acquired a reputation in Australia, which would be infringed by the Applicant's proposed mark.

The primary legal issue before the Delegate was whether the Opponent had established a ground of opposition under section 60 of the *Trade Marks Act 1995* (Cth). This section requires that the Opponent demonstrate that, by reason of the use of its trade mark, the mark has acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market. The Delegate also considered sections 58 and 60 of the Act, though ultimately found neither to be established.

The Delegate reasoned that the Opponent's evidence of its business operations, including turnover and marketing efforts, was insufficient to demonstrate that the Propti Mark had acquired the necessary reputation in Australia. The market for the Opponent's services was found to be broad, and the evidence presented did not establish that a significant or substantial number of persons within that market were aware of the Propti Mark. Consequently, the Delegate found that the Opponent had failed to satisfy the requirements of section 60(a) and therefore did not need to consider whether the use of the Applicant's trade mark would be likely to deceive or cause confusion.

The Delegate ordered that the trade mark application by Sage Realty Sydney Pty Ltd may proceed to registration not less than one month from the date of the decision, unless a notice of appeal was filed. The Opponent was ordered to pay the Applicant's costs.