Real Estate Home Loans Pty Ltd v REA Group Ltd

This matter concerned oppositions filed by Real Estate Home Loans Pty Ltd (the Opponent) against two trade mark applications by REA Group Ltd (the Applicant). The dispute involved an application for a Word Mark (application 1827083) and a Logo Mark (application 1852809). The Opponent's grounds of opposition included a claim under section 41 of the *Trade Marks Act 1995* (Cth) concerning the Word Mark, and a claim of bad faith under section 62A of the Act in relation to the Logo Mark. The decision was made by Debrett Lyons, Hearings Officer, at the Trade Marks Hearings.

The Hearings Officer was required to determine whether the Applicant's trade mark applications were capable of distinguishing the Applicant's goods and services from those of other persons, as required by section 41 of the Act, and whether the Applicant had acted in bad faith in seeking to register the Logo Mark under section 62A of the Act. The assessment of section 41 involved considering whether the trade marks were inherently adapted to distinguish and whether they, in fact, distinguished the Applicant's goods or services through use. The bad faith assessment required an examination of the Applicant's conduct in adopting and seeking to register the Logo Mark.

In relation to the Word Mark and section 41, the Hearings Officer found that the Opponent had established a ground of opposition. The decision noted that neither party could claim a monopoly over the terms "real estate" or "home loans," either separately or in combination. Regarding the Logo Mark and the bad faith claim, the Hearings Officer was not satisfied that the Applicant's decision to adopt and seek registration of the Logo Mark was made to take advantage of the Opponent, but rather to use the phrases for their ordinary and natural meanings. Consequently, the Opponent failed to establish the ground of opposition under section 62A.

Ultimately, the Hearings Officer refused registration of the Word Mark (application 1827083) as a ground of opposition had been established. However, the Opponent did not establish a ground of opposition for the Logo Mark (application 1852809), which was permitted to proceed to registration, subject to any appeal. Given that each party was successful in one opposition and unsuccessful in the other, and the proceedings were based on essentially the same evidence, no award of costs was made.