RS Financial Pty Ltd ATF the Pro Group Trust v ProLend Solutions Management PTY. Ltd

[2025] ATMO 102

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by RS Financial Pty Ltd ATF the Pro Group Trust to registration of trade mark application number 2139725 (class 36) – PROLEND SOLUTIONS (Figurative) - in the name of PROLEND SOLUTIONS MANAGEMENT PTY. LTD

Delegate:

Anne Makrigiorgos

Representation:

Opponent: Andrew Sykes of Counsel instructed by Jacqui Pryor and Yike Ma of Mark My Words Trade Mark Services Pty Ltd

Applicant: Shauna Ross of Counsel instructed by Jacqui Symonds from JMSD IP Pty Ltd

Decision:

2025 ATMO 102

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 44 and 60 pursued – no ground of opposition established – trade mark to proceed to registration.

Background

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by RS Financial Pty Ltd ATF the Pro Group Trust (‘Opponent’) to registration of the following trade mark:

   [1] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth) and each reference to a regulation is a reference to a regulation in the Trade Marks Regulations 1995 (Cth).

Trade mark number

2139725 (‘Application’)

Trade mark

 (‘Trade Mark’)

Applicant

PROLEND SOLUTIONS MANAGEMENT PTY. LTD (‘Applicant’)

Filing Date

30 November 2020 (‘Relevant Date’)

Specification

Class 36: mortgage loan services; mortgage financing services; mortgage services; loans (financing); loan financing; lending on mortgage; financing of home loans; credit (financing); provision of mortgages; financial loan services; real estate financing; loan services; provision of home loans; commercial lending; provision of commercial loans; arranging finance for construction projects; project financing; project finance; financial fund management; provision of commercial finance; financial management of funds

(‘Applicant’s Services’)

1. The Trade Mark was examined and advertised as accepted for possible registration on 27 September 2023.

2. On 9 November 2023, the Opponent filed a Notice of Intention to Oppose the Application. On 24 November 2023, the Opponent filed a Statement of Grounds and Particulars (‘SGP’). The Applicant filed a Notice of Intention to Defend the opposition on 12 December 2023.

3. The Opponent filed Evidence in Support (‘EIS’) on 13 March 2024. The Applicant filed Evidence in Answer (‘EIA’) on 21 June 2024. The Opponent filed Evidence in Reply (‘EIR’) on 13 August 2024.

4. The parties were given the opportunity to either request an oral hearing or to file written submissions. Both parties elected to be heard by video conference. As a delegate of the Registrar of Trade Marks, I heard this matter via video conference on 2 May 2025. Prior to the hearing, both parties filed a written summary of their submissions. At the hearing, Andrew Sykes of counsel instructed by Jacqui Pryor and Yike Ma of Mark My Words Trade Mark Services Pty Ltd appeared on behalf of the Opponent and Shauna Ross of counsel, instructed by Jacqui Symonds from JMSD IP Pty Ltd appeared on the Applicant’s behalf. I have decided this matter based on the particulars set out in the SGP, the evidence of the parties and the written and oral submissions of the parties.

   Grounds and onus

5. The SGP nominates grounds of opposition under ss. 42(b), 44, 58, 58A, 60 and 62(b). In the Opponent’s written submissions, the Opponent indicated it was not pursuing the s 58, 58A or 62(b) grounds of opposition. I therefore treat these grounds as abandoned.

6. The Opponent carries the burden of establishing at least one ground of opposition[2] on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is the Relevant Date.[4]

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelmann JJ).

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J) (‘Southern Cross’).

   Evidence

7. The parties filed the following evidence in this matter:

Declarant and Position	Date	Annexures or Exhibits
EIS
Renee Jane Gurney, director of the Opponent (‘Gurney 1’)	12 March 2024	RJG1 to RJG32 including Confidential RJG6 to RJG14a, RJG15a, RJG16a, RJG16b, RJG16d, RJG18a, RJG18c and RJG24
Alana Giggins, national business development manager of COG Aggregation (‘Giggins’)	7 March 2024
Darren Hughes, head of National Financial Choice (‘NFC’) (‘Hughes’)	7 March 2024
Yike Ma, Trade Mark Attorney at Mark My Words Trademark Services Pty Ltd (‘Ma’)	13 March 2024	YM1 to YM3
EIA
Paul Sinclair Douglas, director and COO of the Applicant (‘Douglas’)	21 June 2024	PD-01 to PD-28 including Confidential PD-06, PD-08, PD-09 and PD-11
Samantha Gabrielle Parsons, principal of Parsons & Partners (‘Parsons’)	21 June 2024
Nick Raphaely, director and co-founder of Assetline Capital (‘Raphaely’)	21 June 2024
Steve Beinart, director and co-founder of AHX (‘Beinart’)	21 June 2024
EIR
Second declaration of Renee Jane Gurney, (‘Gurney 2’)	13 August 2024	RJG33 to RJG38

Summary of evidence

EIS

Gurney 1

1. Gurney 1 states that the Opponent was registered in March 2011 and is a financial services business primarily in relation to car finance, leisure finance, personal finance, business assets, insurance options and debt consolidation. Gurney 1 further states that the Opponent registered the business name LendPro on 11 December 2018.

2. Gurney 1 provides details of trade mark registration number 2013979 and application numbers 2287417 and 2334174 in the name of the Opponent. Details appear below:

Number	Trade mark	Services	Priority date
2013979 (‘979 Mark’)	(‘Original Device’)	Class 36: Advisory services relating to finance; Consultancy services relating to finance; Consultancy services relating to personal finance; Corporate finance services; Finance leasing; Lease purchase finance; Management of finances; Personal finance services; Providing finance for credit sales; Provision of commercial finance; Provision of equipment finance; Provision of finance; Provision of lease-purchase finance facilities; Provision of trade finance; Raising of finance; Trade finance services (‘979 Services’)	5 June 2019
2287417	‘Updated Device’	Class 36: Financial advisory services; Financial consultancy; Financial lending; Financial services; Financial management; Providing financial information; Loan financing; Provision of finance; Money lending; Loan services; Advisory services relating to financing; Consultancy services relating to finance (‘417 Services’)	25 July 2022
2334174	LENDPRO (‘Word Mark’)	Class 36: Financial consultancy; Financial lending; Financial advisory services; Financial services; Financial management; Providing financial information; Money lending; Loan services; Loan financing; Advisory services relating to financing; Consultancy services relating to finance; Financing services (‘174 Services’)	13 February 2023

The logo element of the Original Device  will be referred to as the ‘LP Device’ and the Original Device, Updated Device and Word Mark will be referred to collectively as the ‘Opponent’s Marks’.

1. Gurney 1 claims that the Opponent has provided the range of finance services as listed in the registration and applications (‘Opponent’s Services’) under the Opponent’s Marks since December 2018. However, in contrast, Gurney 1 then claims that:

   ·the Opponent commenced using the Original Device for the Opponent’s Services in January 2019, annexing a confidential copy of a 3 page template document entitled ‘Presentation’ ‘LendPro Logotype’ dated 25 January 2019 showing the 979 Mark; and

   ·the Opponent adopted the Updated Device in November 2019 for the Opponent’s Services, annexing confidential emails and an invoice for design concepts dated between 22 August 2019 and 11 October 2019.

   Advertising and promotion

2. Gurney 1 claims that the Opponent has advertised and promoted the Opponent’s Services under and by reference to the Opponent’s Marks in the following ways since at least as early December 2018:

   ·      Opponent’s website at (‘Opponent’s Website’) since around May 2019 annexing:

   ·     undated screenshots from the Opponent’s Website (with a 2023 copyright claim) where I note use of the Updated Device and Word Mark; and

   ·     Wayback Machine screenshots dated 25 January 2021 to 7 December 2023, all after the Relevant Date where I note use of the Updated Device.

   ·      registration of the domain name lendpro.com.au on 7 August 2018;

   ·      membership of the Australian Financial Complaints Authority; [5]

   [5] The Australian Financial Complaints Authority provides a non-government external dispute resolution service.

   ·      the design of the Opponent’s Website by a third party around May 2019;

   ·      Facebook posts annexing a screenshot dated 6 June 2019 where I note use of the Original Device and screenshots after the Relevant Date between November 2022 and January 2023;

   ·      Instagram posts annexing screenshots from November to December 2023, all after the Relevant Date;

   ·      car number plates for LENDPRO and L3NDPRO registered in the name of Renee Gurney in December 2018 and undated photographs of the number plates on vehicles;

   ·      business cards, email signatures and finance applications annexing examples of undated business cards showing the Original Device claimed to be from 2019 and the Updated Device claimed to be from 2021 together with email correspondence with the business card designer and printer dated November and December 2019;

   ·      internal email signatures showing and the Updated Device dated in 2019;

   ·      a single finance application sent to a customer on 1 June 2019 referring to LendPro;

   ·      sponsorships after the Relevant Date in 2022 and 2023; and

   ·      Uwin Cars, a used car seller, has promoted the Opponent’s Services on its website since January 2019 annexing eleven screenshots from the Wayback Machine dated 29 January 2019 to 5 March 2022 which show the Word Mark, six of which were dated before the Relevant Date and a further four screenshots dated after the Relevant Date between 1 November 2022 to 3 December 2023 which show the Updated Device.

   Sales and marketing expenditure

3. Gurney 1 provides the following confidential tables:

   ·      financial year numbers of loan applications received by the Opponent from 2018/2019 (0.5 of a year) to 2022/2023 which numbers have been steady since 2020 but are low;

   ·      annual (financial year) gross revenue for the Opponent’s Services from 2019/2020 (0.5 of a year) to 2022/2023 (0.5 of a year) which numbers have been steady since 2019/2020 and are characteristic of a small loan business with 1-2 employees; and

   ·      financial year marketing expenditure in relation to the Opponent’s Marks from 2018/2019 (0.5 of a year) to 2022/2023 (0.5 of a year) which are low.

   The Applicant

4. Gurney 1 claims the Applicant was incorporated on 21 October 2020 and registered the business names PROLEND and PROLEND SOLUTIONS on 22 October 2020.

5. Gurney 1 annexes examples of use by the Applicant of the Trade Mark in 2022 to 2023 such as  on Google in 2024,  and ProLend[6] on mortgage documents, ProLend on a 2023 news blog and a client testimonial on the Applicant’s website, and PROLEND on a 2023 Facebook post.

   [6] The form states ‘This Mortgage Application Form is for applications to ProLend Management Pty Ltd and/or other nominated entities as Lender – collectively “ProLend”’.

6. Ms Gurney declares that since the Applicant’s adoption of the Trade Mark, she is aware that confusion has occurred but provides no supporting evidence.

   Giggins

7. Giggins states that Ms Giggins has 5 years experience in the finance and lending industry and COG Aggregation (‘COG’) is Australia’s largest asset finance services partner, has been in the finance industry for over 20 years and is one of Australia’s only listed asset finance aggregators.

8. Giggins states that COG was aware of the Opponent before the Opponent aggregated with COG on 1 July 2023, after the Relevant Date. Giggins provides the number of deals settled by COG and the Opponent Australia wide since 1 July 2023 and the net amounts financed.

9. Ms Giggins declares her belief the Opponent has built a solid reputation for its LendPro word and logo marks (which logo marks have not been defined) in the financial industry.

   Hughes

10. Hughes states that Mr Hughes has 30 years experience in the finance and lending industry and that NFC is a financial broker based in Adelaide, South Australia.

11. Hughes claims that the Opponent aggregated under NFC from 1 January 2019 to 30 June 2023 and provides numbers of the deals settled by NFC and the Opponent in this period and the net amounts financed.

12. Hughes states that in 2021, after the Relevant Date, the Opponent was selected by NFC as one of three businesses to participate in a successful marketing campaign featured on NFC’s website, social media and sales materials. No supporting evidence is provided.

13. Hughes claims the Opponent’s LendPro marks (which are not defined) have fostered a great reputation within the financial industry and are well known to lenders, other broker businesses and the wider community.

    Ma

14. Ma annexes copies of the adverse examination reports issued in relation to the Trade Mark where the examiner considered the Trade Mark deceptively similar to the 979 Mark and copies of the examination reports issued in relation to the 174 and 417 Marks where the examiner considered these trade marks deceptively similar to the Trade Mark.

    EIA

    Douglas

15. Douglas states that the Applicant was established as a specialist private mortgage lender which provides a range of financial solutions ranging from business loans, bridging loans and construction loans, secured by first or second ranking mortgages over real property. The core nature of the Applicant’s business is property-backed lending.

16. Douglas claims the trade mark PROLEND SOLUTIONS (‘Word Mark’) was adopted in October 2020 and the Trade Mark was developed in November 2020, both trade marks were chosen to reflect the core nature of the Applicant’s business. The Word Mark and the name PROLEND were both registered as a business names on 22 October 2020.

    Use of the Trade Mark in Australia

17. Douglas attests that the Applicant (including its authorised users) has used the Trade Mark in all States and Territories in Australia and provides as examples of use of the Word Mark and the Trade Mark both before and after the Relevant Date which include copies of emails to brokers and borrowers, formal Letters of Offer issued to clients and borrowers, Facebook screenshots, number of loans settled in Australia, signs and  photos of sign displayed at construction sites for financed projects.

18. Douglas provides a table of the total number and value of loans issued by the Applicant for the period October 2020 to June 2024 which figures are impressive but I note that only 2 months in 2020 are before the Relevant Date

19. Douglas claims that between November 2022 to June 2024, the Applicant engaged with 604 brokers to settle loans from 1,941 quotes.

20. Douglas states that the Applicant’s Services provided under the Trade Mark have been advertised and promoted in on the Applicant’s website at social media, business cards, roundtable events, sponsorships and email direct marketing.

    Comments on Gurney

21. Douglas refers to Mr Douglas contacting the Opponent for a letter of consent claiming he sought consent as he did not consider the Trade Mark and the Opponent’s Marks to be confusingly similar and that they could peacefully co-exist without confusion arising. Douglas states that Mr Douglas believed genuine business opportunities might arise through referrals as the Applicant offered lending services which differed to the Opponent’s offering of asset financing.

    Likelihood of confusion

22. Douglas states that the Applicant was not aware of the Opponent’s Marks or any use by the Opponent of LendPro (as a plain word or logo) when adopting the Trade Mark. Douglas also states that Mr Douglas is not aware of any actual instances of confusion between the Trade Mark and the Opponent’s LendPro marks.

23. Douglas claims that the elements PRO and LEND are in common use in connection with financial services exhibiting Google search results for ‘pro’ financial services and ‘lend’ financial services in Australia conducted on 14 June 2024.

24. Douglas exhibits the results of the searches undertaken in 2024 on the Australian Trade Mark Register database for:

    ·      registered trade marks which contain the elements PRO or LEND and cover financial related services in class 36;

    ·      co-existing registered trade marks containing the same two-word components in reverse in respect of the same or similar goods/services. Douglas claims the later marks were not accepted under the provisions of honest concurrent use, or prior use; and

    ·      Australian Trade Mark Number 2435093 for the trade mark CoverPro which was accepted in the face of registration number 1754377 for PROCOVER UNDERWRITING AGENCY, both marks covering insurance services in class 36.

    Beinart

25. Mr Beinart states he has 16 years experience in the Australian financial services industries covering investment banking, funds management and property lending and that AltX is an alternative investment management platform offering access to real estate debt investments in Australia.

26. Mr Beinart claims he is well-acquainted with the Applicant’s use of the Trade Mark across Australia and the Trade Mark would not be confused with the LendPro trade marks as there is common use of the terms ‘PRO’ and ‘LEND’ within the Australian financial services landscape, such that confusion is unlikely to arise simply because two trade marks contain these elements, especially if represented in reverse order.

    Parsons

27. Ms Parsons states that she has more than 12 years of securities law experience and that Parsons & Partners is a specialist mortgage law firm.

28. Ms Parsons claims that Australian brokers and financial service providers within the rim-coded lending are certainly becoming aware of and recognising the Trade Mark.

29. Ms Parsons states that she believes the Opponent’s Marks and the Trade Mark are distinguishable and this belief is reinforced by the commonplace usage of ‘PRO’ and ‘LEND’ within Australia’s financial services lexicon. She also states that the respective marks are unlikely to be confused by consumers, brokers and lenders across Australia and she is not aware of instances of confusion between the respective marks.

30. Ms Parson attests that Australian traders and their trade marks, routinely appear to coexist despite sharing common word elements, even when presented in reverse order.

    Raphaely

31. Mr Raphaely states that he has 25 years experience in the UK and Australian financial services industries covering investment banking, funds management and property lending and that Assetline Capital is an institutionally-funded Australian non-bank lender, servicing brokers and borrowers with offices in Sydney and Melbourne.

32. Mr Raphaely claims he is well-acquainted with the Applicant’s use of the Trade Mark across Australia and the Trade Mark would not be confused with the LendPro trade marks as there is common use of the terms ‘PRO’ and ‘LEND’ within the Australian financial services landscape.

    EIR

33. Gurney 2 states that the claim in Douglas that the Applicant’s lending services and the Opponent’s asset financing services are different is not correct. Gurney 2 states that in the finance industry, loans secured by first or second ranking mortgages over real property, which are services provided by the Applicant, are considered a type of asset finance annexing a copy of an undated article from Funding Field (a mortgage broker) explaining asset finance. The article states ‘Asset finance is a form of lending where the borrower’s assets serve as collateral for the repayment of principal and interest. The most common asset used in this type of financing is real estate...’. Gurney 2 also states that the Opponent’s financial services are not limited to asset financing and include car finance, leisure finance, personal finance, business assets, insurance options and debt consolidation.

1. Gurney 2 states it is common for traders offering finance services to provide both lending services and asset financing services annexing undated screen shots from the six Australian websites where I note separate references on these websites to asset financing and loans/lending services.

2. Gurney 2 attests that the word SOLUTIONS is commonly used in the finance industry and that there are a large number of trade marks on the Australian Trade Mark Register which contain the element SOLUTION(S) in relation to finance services, annexing a list of these trade marks.

3. Gurney 2 observes and acknowledges that as stated in Douglas[7] the individual terms ‘pro’ or ‘lend’ may be commonly adopted by traders in respect of financial services but claims it is not common for financial traders to use the terms PRO and LEND together annexing the results of a search of the Australian Trade Mark Register showing the only trade marks which contain the words PRO and LEND are the Applicant’s and Opponent’s trade marks.

   Discussion and Reasons

   [7] Douglas [51] Exhibit PD-24.

   Section 44

4. Section 44 relevantly provides (some notes omitted):

   Identical etc. trade marks

   (2)         Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

   (a)         it is substantially identical with, or deceptively similar to:

   (i)a trade mark registered by another person in respect of similar services or closely related goods; or

   (ii)a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

   (b)         the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

   Note 1: For deceptively similar see section 10.

   Note 2: For similar services see subsection 14(2).

   (3)         If the Registrar in either case is satisfied:

   (a)         that there has been honest concurrent use of the 2 trade marks; or

   (b)         that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

5. Even if the s 44 ground for opposition is established, the Applicant may still be entitled to registration of the Trade Mark if it has established honest concurrent use of its mark under s 44(3)(a), other circumstances justifying registration of the Trade Mark under s 44(3)(b) and/or prior continuous use of its mark since before the priority date of any relevant prior mark covering similar goods or services under s 44(4). The Applicant claims to have used the Trade Mark from October 2020, after the priority date of the 979 Mark relied on by the Opponent referred to below and hence ss 44(4) is not relevant in the present case.

6. In its SGP, the Opponent nominated the 979 Mark.

7. To successfully oppose the Application pursuant to s 44, the Opponent must establish each of the following requirements:

   ·the 979 Mark has a priority date which is earlier than the Relevant Date and is held in a name other than that of the Applicant (‘first requirement’);

   ·the Applicant’s Services are similar to the 979 Services (‘second requirement’).

   ·the Trade Mark is substantially identical with or deceptively similar to the 979 Mark (‘third requirement’).

8. I am satisfied that the priority date of the 979 Mark is earlier than the Relevant Date and that the 979 Mark is in a name other than the Applicant. Therefore, the first requirement is satisfied.

9. The Applicant’s Services cover a broad range of financial services as do the 979 Services. The Applicant concedes that the Applicant’s Services are similar to at least some of the 979 Services. In my view, the breadth of claims in the 979 Mark including terms such as ‘personal finance services and the provision of finance’ are broad enough to encompass the Applicant’s Services. I am therefore satisfied that the Applicant’s Services are similar to the 979 Services and the second requirement is satisfied.

10. The last consideration is whether the Trade Mark is substantially identical with, or deceptively similar to, the Original Device. The Opponent does not submit that the respective marks are substantially identical. I consider that a total impression of dissimilarity emerges from a side by side comparison of the respective marks. Therefore, I do not consider the Trade Mark to be substantially identical with the Original Device.

11. I move to consider whether the Trade Mark is deceptively similar to the Original Device.

12. Section 10 provides a definition of deceptively similar being that ‘a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion’.

13. Justice Windeyer outlined the following approach for the assessment of deceptive similarity in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):

    On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].[8]

    [8] [1963] HCA 66, [13].

14. The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[9] conveniently stated the relevant principles, which were summarised in The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd[10] as follows:

    [9] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

    [10] [2023] FCA 482, [55] (Jackman J).

    (a)the resemblance between the two marks must be the cause of the likely deception or confusion;[11]

    [11] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69] (Yates, Abraham and Rofe JJ) (‘Swancom’).

    (b)in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[12]

    [12] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ) (‘Cooper Engineering’).

    (c)the marks should not be compared side by side;[13]

    (d)the effect of spoken description must be considered; if a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods (or services), then similarities both of sound and of meaning may play an important part;[14]

    (e)the focus is upon the effect or impression produced on the mind of potential customers of the goods (or services) in relation to which the two marks are used and in the case of the registered mark, allowing for ‘imperfect recollection’;[15]

    (f)the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the marks prior to filing, or any reputation associated with the registered mark;[16]

    (g)the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods or services covered by the registration), with the impression that the notional buyer would have of [the notional and normal fair use of the opposed mark];[17]

    (h)“deceived” implies the creation of an incorrect belief or mental impression; “causing confusion” may merely involve “perplexing or mixing up the minds” of potential customers; [18]

    (i)the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected, having regard to the character of the customers who would be likely to buy the goods in issue;[19]

    (j)it is not necessary to establish actual probability of deception or confusion, but a mere possibility of confusion is not enough. There must a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be “a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source”;[20]

    (k)evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[21] and

    (l)any intention to deceive or cause confusion may be a relevant consideration but is not required.[22]

    [13] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).

    [14] Ibid.

    [15] Ibid.

    [16] Swancom (n 11), [70], [77]-[80].

    [17] Shell (n 8), [5].

    [18] Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, 122 [39] (Black CJ, Sundberg and Finkelstein JJ) quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62 (Richardson J).

    [19] Campomar Sociedad Limitada v Nike International Limited (2000) 202 CLR 45, 79 [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).

    [20] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020 [50(ii)] (‘Woolworths’) restating principles from Southern Cross (n 4), 594-595.

    [21] Australian Woollen Mills (n 13), 658.

    [22] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) citing Australian Woollen Mills (n 13), 657.

15. It is also relevant to take into account whether, ‘the different elements of the rival marks have a descriptive character’.[23] Whilst this does not preclude a finding of deceptive similarity,[24] the Full Court noted in Combe International Ltd v Dr August Wolff GmbH & Co. KG Arzneimittel:

    It is correct to observe, …, that an element of a trade mark that is descriptive may not tend to cause confusion about the source of a product because it calls to mind the nature of the product, rather than its trade source. However, as we have noted, each case must be considered on the basis of the marks in question and the facts established. The authorities do not say that where there is a common descriptive element in marks that component is to be ignored for the purposes of comparison. In this regard the observation made by Lord Evershed (Asquith and Jenkins LJJ agreeing) in Broadhead’s Application (at 215.1-5), to the effect that even where there is a common denominator one must be careful not to treat words as though the common part was not there at all, is apposite.[25]

    [23] The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd [2023] FCA 482, [73] (Jackman J).

    [24] Lift Shop Pty Ltd v Easy Living Home Elevators Pty Ltd [2014] FCAFC 75, [64] (Besanko, Yates and Mortimer JJ).

    [25] [2021] FCAFC 8, [78] (McKerracher, Gleeson and Burley JJ).

16. In relation to the comparison of marks, the Full Court said in Starr Partners Pty Ltd v Dev Prem Pty Ltd:

    The first step in the analysis is to identify the impression produced by the registered mark considered in its entirety. Similarity is not based on only part of the registered mark. On the other hand, when one decides upon the impression produced by that mark it is not improper to give more or less weight to particular features of it, provided the ultimate conclusion is based on a consideration of the mark in its entirety. This approach does no more than recognise that one word or feature of a mark can be more striking and memorable than another.[26]

    [26] [2007] FCAFC 42, [22] (Lindgren, Emmett and Finkelstein JJ).

17. Thus, the determination of the question of deceptive similarity ‘must necessarily involve some inquiry as to the inherent distinctiveness of the part which is common to both marks under consideration’.[27]

    [27] Re Frigiking Trade Mark [1973] RPC 739, 752 (Ch D).

18. In light of the authorities, I must decide whether there is a real, tangible danger of deception or confusion by reason of the use of the Trade Mark, having regard to the imperfect recollection of the notional consumer. That is not to be judged by a side by side comparison of the Trade Mark and the Original Device. I must compare the marks as wholes, visually and aurally considering all their elements with regard to essential or distinguishing features, in the context of the relevant surrounding circumstances. Of importance is the effect and meaning of the trade marks, particularly their effect or impression produced on the mind of ordinary consumers.

19. Both the Opponent and the Applicant provide submissions on the visual, aural and ideational differences between the marks.

20. The Opponent submits that:

    ·     the overall impression of the Original Device is of two unusual and distinctive essential elements, LEND and PRO which are not common in the trade. Each word is presented as a separate word, which is emphasised by the capitalisation of L and P. Together the words allude to the services being provided as having the quality of professionalism and being in the nature of lending. The LP Device element only seeks to reinforce the separation of L and P and reinforces the overall impression given by the word elements, ‘just like the ‘Barefoot’ image and accompanying words in E J Gallo’.[28]

    ·     the Trade Mark adopts all the essential features of the Original Device and merely reorders them. The length of the marks is the same. The idea conveyed by the mark to the consumer is the same. The separation between the PRO and the LEND elements is the same (albeit achieved by shading in lieu of capitalisation). The word ‘solutions’ is completely descriptive when used in relation to a services business and is subtle in appearance. It performs no function in distinguishing the two marks.

    [28] E&J Gallo Winery v. Lion Nathan Australia Pty Ltd [2010] HCA 15, [69] (French CJ, Gummow, Crennan and Bell JJ).

21. The Applicant submits that:

    ·     the Trade Mark is in block capitals with rounded presentation and a variation in shading and a stylisation on the final letter D with the word SOLUTIONS presented in finer text beneath the word PROLEND. The respective marks have different ideas and different impressions.

    ·     this Opponent’s reliance on E & J Gallo to support the submission that the LP Device reinforces the word LENDPRO is inapt. In E & J Gallo, the High Court found that the barefoot device was an illustration of the word Barefoot. Here the LP Device is not an illustration of the words LENDPRO. Further, the High Court also found that ‘…another trader is likely to be precluded from registering the [barefoot] device alone while the registered trade mark [BAREFOOT] remains on the Register’.[29] It is highly unlikely that another trader would be precluded from registering the LP Device, if there were a plain word trade mark registration for LENDPRO.

    ·     the nature of the services are highly regulated and obtaining the services involves in depth deliberation. The services are not ones acquired routinely, or spontaneously obtained and prospective customers are likely to pay more care and attention to the acquisition of the services rendering the possibility of confusion unreal or fanciful.

    [29] Ibid.

22. In my view, the Original Device is a composite mark consisting of two components, each of which is as essential as the other. These components being the stylised words Lend and Pro appearing visually as a single word LendPro but pronounced as two words or two syllables, and the LP Device. The scope of the Original Device is not merely the words LEND and PRO. Rather, it is those words represented in a particular stylised form together with the LP Device. To consider the Original Device otherwise would be to extend the scope of the 979 Mark beyond the monopoly that has been granted to the Opponent by registration.[30]

    [30] Australian Meat Group Pty Ltd v JBS Australia Pty Limited [2018] FCAFC 207 (Allsop CJ, Besanko and Yates JJ).

23. The Trade Mark on the other hand consists of one word PROLEND presented in a two toned stylised manner which is the larger and essential word in the Trade Mark, and the monotoned smaller word SOLUTIONS centred below. The word PROLEND would be pronounced as two words or two syllables. While the word SOLUTIONS cannot be ignored,[31] it is non distinctive with respect of financial services so it can to some extent be discounted in comparing the respective marks.[32] There is no LP Device nor indeed any device or logo element in the Trade Mark. Therefore, contrary to the Opponent’s submission, the Trade Mark does not adopt all the essential features of the Original Device and merely reorders them.

    [31] Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel [2021] FCAFC 8, [78] (McKerracher, Gleeson and Burley JJ).

    [32] Re Broadhead’s Application (1950) 67 RPC 209, 215 (Evershed MR); Mond Staffordshire Refinery Co Ltd v Harlem (1929) 41 CLR 475, 477-8 (Know CJ, Gavan, Duffy, and Starke JJ).

24. While the Opponent submits that the words LEND and PRO are not common to the trade, the Opponent observes and acknowledges that the individual terms ‘pro’ or ‘lend’ may be commonly adopted by traders in respect of financial services.[33]. While the two words used together may not be common to the trade, the words LEND and PRO separately are common in marks in use by a number of traders.[34] This view is also supported by Beinart, Parsons and Raphaely, although I do note that these declarations are very similar in structure and substance.

    [33] Gurney 2 [12] and [16] Annexure RJG34.

    [34] Douglas 52 Exhibit PD-24.

25. Further, I am aware that the common English word LEND in the financial industry would describe lending money and the common English word PRO is an abbreviation of the word professional, an adjective meaning professional and also a word meaning in favour of. In comparing the respective marks, it is relevant to take this into account.

26. The Opponent submits that the ideas of the respective marks to the consumer are the same. In Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd the High Court observed:

    [t]he fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them, although this fact could be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive.[35]

    [35] Cooper Engineering (n 12), 539.

27. Ideational similarity is not sufficient independently of a consideration of whether the marks look or sound alike.[36] Thus commonality of idea is part of the process of determining if the marks look or sound alike.

    [36] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [210]–[211] (Besanko, Jagot and Edelman JJ).

28. There are, obviously, shared components between the respective marks namely the elements PRO and LEND, albeit in reverse order. In my view, however, having these shared elements alone does not mean the respective marks are deceptively similar. The Trade Mark and the Original Device do not consist merely of the elements PROLEND and LendPro. Therefore, this is not the comparison. The comparison is the respective marks as a whole including but not limited to the impact that the reversal of the shared elements has on the impression of the respective marks.

1. I do not agree with the Opponent’s submission that the LP Device reinforces the overall impression given by the word elements. Rather I agree with the Applicant. The LP Device is not an illustration of the words LENDPRO and a registration of LENDPRO would not prevent the registration of the LP Device. The principles in E & J Gallo do not support the Opponent’s submissions.

2. I must consider the character of the customers of financial services and the relevant surrounding circumstances when comparing the respective marks. As submitted by the Applicant, the nature of financial services are highly regulated and are not services which a consumer spontaneously obtains without thought and attention. I agree. Financial services are engaged with a relatively high degree of care and attention. This view is supported by the Court in Community First Credit Union Limited v Bendigo and Adelaide Bank Limited.[37] These circumstances in which the services are obtained and the character of the probable purchasers of the services, make consumer confusion between the respective marks far less likely.

   [37] [2019] FCA 1553.

3. In the present case, the hypothesis is that the intending acquirers of financial services know, but may have an imperfect recollection of, the particular stylised composite form of the Original Device, not just knowledge of, and an imperfect recollection of, the words LendPro. When considering the respective marks as a whole, there are clear dissimilarities. In my view the respective marks are readily distinguishable both visually and aurally. Even a quick glance at the Original Device followed by an imperfect recollection of the mark would neither delete the LP Device entirely nor lead to a recollection of the words LEND and PRO in the reverse order.

4. Further I consider the differing order of words LEND and PRO when used for financial services convey differing impressions. The word PRO after the word LEND is more likely to connote the idea of a lending professional whereas the word PRO before the word LEND is more likely to connote the idea of being in favour of lending. Even if the word PRO was considered as meaning professional in both the respective marks, to me LENDPRO connotes a lending professional i.e. a person whereas PROLEND connotes a type of lending namely professional lending. The order that the words appear in the trade marks affects the message or idea conveyed by them.

5. The test for confusion is whether a person ‘might be caused to wonder’ whether the goods or services originate from the same source, and there must be ‘a real, tangible danger’ of it occurring. It is highly unlikely that consumers with an imperfect recollection of the Original Device would immediately link the Trade Mark to a memory of association with the Original Device. The two marks are visually, aurally and connotatively dissimilar. I am not satisfied that the Trade Mark is deceptively similar to the Original Device. The s 44 ground is therefore not established.

   Section 60

6. The provisions of s 60 are reproduced below:

   Trade mark similar to trade mark that has acquired a reputation in Australia

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)         another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
   (b)         because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

   Note:    For priority date see section 12.

7. To establish this ground, the Opponent must demonstrate the existence of another trade mark(s) which had acquired a reputation in Australia before the Relevant Date. The Opponent must then establish that because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.

8. The SGP identifies the Opponent’s Marks as the trade marks supporting this ground of opposition.

   Reputation

9. The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick (‘McCormick’) as referring to ‘the recognition of the [trade mark] by the public generally’.[38]

   [38] [2000] FCA 1335, [81] (‘McCormick’).

10. Further, Kenny J stated in McCormick that:

    In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product ... public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.[39]

    [39] Ibid [86].

11. Kenny J also referred to the decision in Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG[40] where Hearing Officer Thompson observed:

    [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

    As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the “recognition” component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the “esteem” component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, “contra deals” and so forth.

    It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has a very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.

    [40] (1999) 47 IPR 423, 426.

12. The reputation in the other trade mark must be amongst a ‘significant or substantial’ number of Australian consumers but this is tempered by the nature of the relevant market.[41] Here the nature of the parties’ services fall under the broad description of financial services. Financial services are ones with which most Australians are familiar and possibly use every day. Therefore, to enliven s 60, the Opponent needs to demonstrate an awareness or appreciation of the Opponent’s Marks among a significant or substantial number of Australians who are consumers of financial services before the Relevant Date. Meanwhile, the ‘existence and extent of reputation’ must be established as a matter of fact by the Opponent.[42]

    [41] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

    [42] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [57].

13. In Rodney Jane Racing Pty Ltd v Monster Energy Company (‘Rodney Jane’), it was observed that:

    The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[43]

    [43] [2019] FCA 923, [83] (O’Bryan J) (‘Rodney Jane’).

14. While the Opponent bases the s 60 ground on all the Opponent’s Marks, notably, each is considered a separate trade mark for the purpose of s 60.[44]

    [44] Qantas Airways Ltd v Edwards (2016) 338 ALR 134, [160] (Yates J); Ibid, [89].

15. The Opponent submits that the reputation in the Original Device has assisted in building the reputation in the Updated Device as the Updated Device is substantially identical to the Original Device both having the same essential features and dominant cognitive cues.[45]

    [45] Section 7(1) - If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.

16. The Opponent also submits that the Opponent’s reputation is one recognised by others in the finance industry, relying on Hughes where Mr Hughes stated: ‘It is my belief that the Opponent’s LendPro marks have fostered a great reputation within the financial industry and are well known to lenders, other broker businesses and the wider community.’[46]

    [46] Hughes [12].

17. The Applicant submits that the revenue and advertising figures refer to the Opponent’s Marks but there is no evidence to link these figures with any one of the Opponent’s Marks, which marks are not substantially identical.

18. By bundling together evidence as to reputation of all the Opponent’s Marks, it makes it difficult for me to form a conclusion on the reputation of each of the Opponent’s Marks for the purposes of s 60. Further, the Opponent’s evidence primarily shows use of the Original Device and the Updated Device. What little evidence there is of use of the Word Mark is in my view insufficient to satisfy me that the Word Mark alone had the necessary reputation at the Relevant Date.

19. As to the Original Device and the Updated Device, whether or not they are substantially identical does not require determination as I am not satisfied that there is the necessary reputation at the Relevant Date in either the Original Device or the Updated Device or even the two together.

20. There are weaknesses in the Opponent’s evidence as much of the Opponent’s evidence is undated or dated after the Relevant Date. To this end, I have provided my comments on these weaknesses when summarising the EIS. Evidence which is undated or dated after the Relevant Date is of limited value in establishing a reputation within Australia at the Relevant Date.

21. Even if I was satisfied that the Opponent commenced using the Original Device in January 2019 and adopted the Updated Device in November 2019, the maximum period of use from January 2019 to the Relevant Date is twenty two months. In this period, the Opponent has provided the following evidence of use of the Original Device and the Updated Device before the Relevant Date:

    ·evidence of the design of the Opponent’s Website by a third party but no evidence as to when the Opponent’s Website went live, the content of that website or the number of visitors to that website before the Relevant Date;

    ·a screenshot of a single Facebook post with no likes or comments;

    ·email correspondence with a business card designer and printer with no indication of whether any business cards were ever given to customers;

    ·revenue, advertising and loan application figures for the twenty two month period;[47]

    ·numbers of deals settled by NFC and the Opponent for the twenty two month period and the net amounts financed;[48] and

    ·the single belief of Mr Hughes that the LendPro marks have fostered a great reputation.

    [47] I note that the Relevant Date falls within the 2020/2021 figure so it is not possible to calculation the exact revenue, advertising and loan application figures from 1 July 2020 to 30 November 2020 and therefore the exact revenue, advertising and loan application figures prior to the Relevant Date.

    [48] Hughes [7].

22. As observed by O’Bryan J in Rodney Jane,[49] the reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimensions here are evidenced by revenue, advertising and loan application figures but the exact calculation of these figures before the Relevant Date is not possible. Regardless, I find these figures diminutive when compared to the size of the potential consumer base.

    [49] Rodney Jane (n 44).

23. The qualitative dimension is only evidenced by a single Facebook post with no likes and Mr Hughes belief of a reputation in the LendPro marks.

24. Taken all together, I am not satisfied on the balance of probabilities that either the Original Device or the Updated Device had the necessary reputation at the Relevant Date. Therefore s 60(a) is not satisfied and it is not necessary to consider s 60(b).

25. The Opponent has accordingly not established its ground of opposition under s 60.

    Section 42(b)

26. Section 42(b) provides that a trade mark must be rejected if its use would be contrary to law.

27. The SGP simply states Competition and Consumer Act 2010; Tort of passing off. The Opponent’s submissions state that use of the Trade Mark would be a breach of ss 18 and 29 of the Australian Consumer Law (‘ACL’) which forms Schedule 2 to the Competition and Consumer Act 2010 (Cth). Additionally, the Opponent asserts that use of the Trade Mark would amount to the common law tort of passing off.

28. Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading. These are stricter requirements than s 60 which can be established if the use is likely to cause confusion or wonderment.[50]

    [50] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44 [8] (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [33] (Stewart J).

29. Where use of a trade mark does not contravene s 18 of the ACL neither will it amount to the tort of passing off.

30. The Opponent seeks to rely on the reputation I have already discussed in relation to the s 60 ground of opposition. Where a ground of opposition under s 60 is unsuccessful, reputation-based claims under ss 18 and/or 29 of the ACL will also fail, as will proceedings for passing off.[51]

    [51] Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506 (Hill J); Riding for the Disabled Association of Australia Limited v Pony Club Australia Pty Ltd [2019] ATMO 63, [63]-[64] (Hearing Officer Richards).

31. The Opponent has accordingly not established its ground of opposition under s 42(b).

    Decision

32. Section 55 relevantly provides:

    Decision

    (1)         Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

    (a)         to refuse to register the trade mark; or

    (b)         to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

    having regard to the extent (if any) to which any ground on which the application was opposed has been established.

    Note:    For limitations see section 6.

33. I have found the Opponent has not established any ground of opposition it raised in the SGP. Trade mark application 2139725 may proceed to registration not less than one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal is either withdrawn or discontinued. Otherwise, the disposition of the Application should be in accordance with the Court’s order or direction.

    Costs

34. Both parties have sought costs. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

    Anne Makrigiorgos

    Hearing Officer

    Oppositions and Hearings

    Trade Marks and Designs

    4 June 2025