Senceive Limited v Geowan Pty Ltd

Senceive Limited (the applicant) sought to register a trade mark, while Geowan Pty Ltd (the opponent) opposed this application. The dispute concerned whether the applicant's proposed trade mark was substantially identical with or deceptively similar to a registered trade mark owned by the opponent, and whether the goods and services for which registration was sought were similar or closely related to those covered by the opponent's existing registration. The matter was heard by Bianca Irgang, a Hearing Officer in the Trade Marks Hearings.

The primary legal issue before the Hearing Officer was to determine whether the applicant's trade mark application should be rejected under section 44 of the *Patents Act 1990* (Cth) (the Act). This section requires rejection if the applicant's trade mark is substantially identical with or deceptively similar to a registered trade mark of another person in respect of similar or closely related goods or services, and the priority date of the applicant's mark is not earlier than that of the registered mark. To succeed on this ground, the opponent needed to establish four requirements: that the trade mark was in the name of a different person, had an earlier priority date, related to similar or closely related goods/services, and was substantially identical or deceptively similar to the opponent's mark.

The Hearing Officer found that the opponent had satisfied the onus of proof regarding the ground of opposition under section 44 for the majority of the goods and services. The opponent was the registered owner of the "GeoWan" trade mark, with a priority date of 15 February 2018, which was earlier than the applicant's priority date. The Hearing Officer determined that the applicant's trade mark was substantially identical with or deceptively similar to the opponent's mark, and that the goods and services were also similar or closely related.

Consequently, the applicant was given an opportunity to amend its trade mark specification by deleting the conflicting goods and services. The applicant elected to do so, and the Hearing Officer accepted the amended specification for possible registration. In relation to costs, as both parties had achieved some success, the Hearing Officer ordered that each party bear its own costs.