RMC of Illinois, Inc v Entrada Consulting Pty Ltd

RMC of Illinois, Inc (the Applicant) sought to register a trade mark, and Entrada Consulting Pty Ltd (the Opponent) opposed this application. The dispute concerned whether the Applicant's proposed trade mark should be registered, with the Opponent arguing it would likely deceive or cause confusion due to its own established reputation in Australia. The matter was heard by Jock McDonagh, acting as a delegate of the Registrar of Trade Marks.

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 allows opposition if another trade mark had acquired a reputation in Australia before the priority date of the application, and the use of the applied-for mark would be likely to deceive or cause confusion due to that reputation. The delegate also considered grounds under sections 42, 44, and 58, but the Opponent focused its arguments on section 60. The onus of proof rested on the Opponent, with the standard being the ordinary civil standard on the balance of probabilities. The relevant date for determining the rights of the parties was 26 May 2014, the filing date of the application.

The delegate found that the Opponent had provided evidence, including a declaration from its Global Chief Financial Officer, demonstrating its significant international presence and its operation in Australia since 1996. This evidence also included details of the Opponent's Australian trade mark registrations. Applying section 60, the delegate was satisfied on the balance of probabilities that consumers seeing the Applicant's trade mark would likely wonder if there was a connection between the Applicant's services and those offered by the Opponent. Consequently, the delegate concluded that the ground of opposition under section 60 had been established.

As a result of finding that the Opponent had established a ground of opposition, the delegate refused to register the trade mark. The Opponent was also awarded costs against the Applicant, following the general rule that costs follow the event.