Shell International Petroleum Company Limited v Peap Mentor Pty Ltd

Shell International Petroleum Company Limited opposed the registration of the trade mark application E-SELECT AND DEVICE, filed by Peap Mentor Systems Pty Ltd, for services in Class 36, namely insurance, financial affairs, monetary affairs, and real estate affairs. The opposition was heard by Hearing Officer Jock McDonagh, acting as a delegate of the Registrar of Trade Marks.

The opponent relied on three grounds of opposition: that the trade mark was not capable of distinguishing the applicant's services under section 41 of the Trade Marks Act 1995, that it was deceptively similar to a registered trade mark under section 44(2), and that it was similar to a trade mark that had acquired a reputation in Australia under section 60. The opponent provided evidence of its own registered trade marks, including "select/tick" and "select/apple" devices, and their use in connection with convenience stores, automated teller machines, and financial services. The applicant did not file any evidence.

The Hearing Officer dismissed the opposition on all grounds. Regarding section 41, the Hearing Officer found that the applicant's mark, considered as a whole, was inherently capable of distinguishing the applicant's services, as the combination of the "e" prefix, the word "select," and the tick device elevated it beyond common usage. On the section 44(2) ground, while the Hearing Officer found the applicant's mark deceptively similar to the opponent's "select/tick" mark, it was not satisfied that the services were similar enough to warrant rejection, nor was it satisfied that the applicant's mark was deceptively similar to the "select/apple" mark. Finally, concerning section 60, the Hearing Officer found that the opponent had not provided sufficient evidence to establish that its "select/tick" mark had acquired the necessary reputation in Australia prior to the applicant's priority date.

Consequently, the opposition was dismissed, and the applicant's trade mark was permitted to proceed to registration, subject to the payment of fees and the expiry of the appeal period. No order was made as to costs.