Psychotherapy and Counselling Federation of Australia v Certified Practising Counsellors Australia Pty Ltd

The Psychotherapy and Counselling Federation of Australia (PACFA) opposed the registration of the trade mark application number 2280810, comprising the words "CERTIFIED PRACTISING COUNSELLORS AUSTRALIA & Device", filed by Certified Practising Counsellors Australia Pty Ltd (CPCA). The application sought registration in classes 41 and 42, relating to educational services and scientific and technological services, respectively. The opposition was heard by Tracey Berger in her capacity as delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the trade mark applied for by CPCA was, by reason of its identity with or resemblance to an earlier trade mark, likely to cause confusion among the public. Specifically, the delegate had to consider whether the applied-for mark was identical or deceptively similar to PACFA's registered trade mark, "CERTIFIED PRACTISING COUNSELLOR", and whether this similarity would lead to a likelihood of confusion in the marketplace.

In determining the issue of deceptive similarity, the delegate applied the established principles of trade mark law, including the "imperfect recollection" test and the consideration of the "average consumer". The delegate found that while the marks were not identical, there was a significant degree of visual and conceptual similarity between "CERTIFIED PRACTISING COUNSELLORS AUSTRALIA & Device" and PACFA's registered mark "CERTIFIED PRACTISING COUNSELLOR". The delegate reasoned that the inclusion of "AUSTRALIA & Device" in CPCA's mark did not sufficiently distinguish it from PACFA's mark, particularly given the shared core descriptive terms. The delegate concluded that there was a real likelihood of confusion among consumers, who might mistakenly believe that the services offered under CPCA's mark originated from or were endorsed by PACFA.

Consequently, the delegate upheld PACFA's opposition to the registration of CPCA's trade mark application.