Solve Legal Pty Ltd v St Hilliers Commercial Realty Pty Ltd

[2024] ATMO 51

TRADE MARKS ACT 1995

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

Re:Opposition by Solve Legal Pty Ltd to registration of trade mark application number 2154564 (class 36) – SOLVE (figurative) – in the name of St Hilliers Commercial Realty Pty Ltd

Delegate:

Debrett Lyons

Representation:

Opponent: J Adamopoulos, of Counsel, instructed by Solve Legal Pty Ltd Applicant: M.A McGrath, of Counsel, instructed by Coleman Greig Lawyers Pty Ltd

Decision:

2024 ATMO 51

Trade Marks Act 1995 (Cth) – opposition under s 52 – ss 44, 58A and 60 considered – none established – trade mark to proceed to registration

Background

1. This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) by Solve Legal Pty Ltd (‘Opponent’) to registration of the following trade mark:

Trade mark no:           2154564

Trade mark:                   (‘Trade Mark’)

Applicant:                   St Hilliers Commercial Realty Pty Ltd (‘Applicant’)

Filing date:                 9 February 2021

Specification:             Class 36: Property sales services relating to real estate development; Real estate advisory services including online services; Real estate agents services including online services; Real estate insurance services; Real estate lease renewal services; Real estate lease surrender services; Rental of serviced offices (real estate); Research services relating to real estate; Stock and station agencies (real estate services); Subdivision of real estate (real estate services); Advisory services relating to real estate ownership; Commercial real estate agency services; Consultation services relating to real estate; Insurance services relating to real estate; Advisory services relating to real estate valuations; Agency services for the leasing of real estate property; Real estate agency services; Real estate investment services; Real estate services relating to property development; Real estate services relating to real estate development; Online advertising of real estate; Online advertising of real estate services excluding legal, conveyancing and accounting services

(‘Applicant’s Services’)

1. The Trade Mark was examined as required by s 31 of the Act. Acceptance of the application was published on 10 July 2021. The Opponent filed a Notice of Intention to Oppose on 23 August 2021 followed by a Statement of Grounds and Particulars (‘SGP’) after which the Applicant filed a Notice of Intention to Defend.

2. The parties then filed evidence, described below, in accordance with the Trade Mark Regulations 1995 (Cth):

Evidence in Support

• declaration of Philip Khao, director of Solve Accounting Pty Ltd, made 17 February 2022 with Annexures PK-1 and PK-2.

• declaration of Kyle Kutasi, director of Solve Legal Pty Ltd, made 27 February 2022 with Annexures KK-1 to KK-13.

Evidence in Answer

• declaration of Jason Andreou, director of the Applicant, made 2 June 2022 with Annexures JA-1 to JA-16.

Evidence in Reply

• declaration of Kyle Kutasi made 2 August 2022.

1. Once the time allowed for filing evidence ended, the parties requested a hearing by written submissions.   Both parties filed written submissions, in each case prepared by counsel.  The matter has been allocated to me, a delegate of the Registrar of Trade Marks, to decide based on the material just described.

Grounds of opposition, onus, and relevant date

1. In the SGP, the Opponent nominated grounds of opposition under ss 44, 58, 58A, 60 and 62A of the Act. By its outline of submissions, the Opponent has abandoned the grounds under ss 58 and 62A. The Opponent bears the onus of establishing at least one of ss 44(2), 58A and 60.[1]  The standard of proof is the civil standard of the balance of probabilities[2]  and the date at which the rights of the parties are to be determined is 9 February 2021 (‘Relevant Date’) being both the filing date and priority date of the Trade Mark.

The Opponent

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

[2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

1. The Opponent submits that:

   On 21 January 2021, [the Opponent] and Solve Accounting applied for the registration of the Solve Mark. The mark was ultimately registered on 30 August 2021.

   Solve Accounting was established in 2010 and provides a suite of services including accounting, tax management and advisory services. Since 2019, Solve Accounting has also used the Solve Mark in respect of its business. The mark appears on its website ( letterhead, email signatures, business cards, t-shirts and social media pages.

   …

   The facts, matters and circumstances in relation to these grounds are interrelated. … Put simply, the [Trade] Mark exploits the key essential features of the Solve Mark, which has been in used (sic) by Solve for more than a year prior to the use of the [Trade] Mark by [the Applicant]. The risk of confusion among members of the public is compounded by the fact that both businesses operate in the same area in Greater Sydney.

   Solve is a firm of solicitors operating as an incorporated legal practice. It was founded in 2012. The firm has a physical presence in Sydney and Perth. In Sydney, it has premises in Parramatta and Dural. As at February 2022, it employed 5 legal practitioners, four of whom are in Sydney.  While the firm provides legal services in a variety of fields, over 40% of its matters involve real property transactions, including 38% which are conveyancing matters.

   Since its inception, the firm has traded under the name SOLVE.  On 20 October 2019, Solve adopted for use the Solve Mark, which features a Rubik’s cube device on the left hand side. … The mark appears on the firm’s letterhead, invoices, email signatures, business cards, and website ( type="1">

2. Nowhere in the SGP as originally filed was the “Solve Mark” fully identified. Since s 44 is a ground of opposition, this deficiency was communicated to the Opponent by the Office and a rectified SGP filed which identified the “Solve Mark” as Reg. No. 2150982, relevant details of which appear below:

Owners:

Solve Legal Pty Ltd and Solve Accounting Pty Ltd

Trade Mark:

(“Opponent’s Trade Mark”)[3]

Filing and Priority Date:

22 January 2021

Specification:

Class 45: Legal services in relation to the negotiation of contracts for others; Legal advisory services relating to trade marks; Legal advocacy services; Legal advice; Legal mediation services; Legal services; Provision of legal services; Legal document preparation services; Certification of legal documents; Legal services relating to the negotiation of contracts (for others); Legal services in the field of immigration; Immigration agency services (legal services); Legal services relating to estates

(“Opponent’s Services”)

[3] See [10] later.

The Applicant

1. The Applicant was formed in 1997 and operates as a real estate agency with offices in Parramatta and Blacktown.  Originally a franchisee of LJ Hooker Group, in late 2017 the principal of the business, Mr Andreou, decided to leave the LJ Hooker Group and by 2020 the Applicant traded independently under the name SOLVE COMMERCIAL REAL ESTATE.

Section 44

1. Section 44(2) of the Act provides:

   […]

   (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.

   […]

2. As stated, the rectified SGP nominated Reg. No. 2150982 as the Opponent’s Trade Mark in respect of s 44. Neither counsel commented on the fact that the Opponent is only one of the co-owners of Reg. No. 2150982. However, this is not fatal to success under s 44 since all an opponent must do is point to a prior conflicting mark “registered by another person”; that person usually is, but need not be, the opponent.

3. The Opponent must establish that the Opponent’s Trade Mark:

   ·     has a priority date which is earlier than the Relevant Date;

   ·     is registered for services which are similar to the Applicant’s Services; and

   ·     is substantially identical with or deceptively similar to the Applicant’s Trade Mark.

4. The Opponent’s Trade Mark has a priority date which is earlier than the Relevant Date, thus satisfying the first requirement.

5. The second requirement is governed by s 14(2) of the Act:

   Section 14 – Definition of similar goods and similar services

   (2)  For the purposes of this Act, services are similar to other services:

   (a)  if they are the same as the other services; or

   (b)  if they are of the same description as that of the other services.

6. In relation to this question of whether the Applicant’s Services are either the same, or of the same description, as the Opponent’s Services, I note here that, in consequence of these opposition proceedings, the Applicant requested amendment to the specification of the Applicant’s Services (reflected already in [1] above) such that “Online advertising of real estate services” now reads “Online advertising of real estate services excluding legal, conveyancing and accounting services.”

7. The Opponent is not satisfied that this amendment was enough to avoid similarity. It reasoned that:

   those limiting words do little (if anything) to ameliorate the scope of the registration. … The overlap in services goes well beyond that type of service. … In Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84, Dixon J (at 94) said (in relation to similar goods):

   What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business.

   The test was held to be the same in relation to services: Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, (2017) 124 IPR 264, [335]. In Accor, the Full Federal Court posed the following questions (at [339]:

   (1)  The inherent character of each of the services for which the trade mark is registered. That may emerge as a function of language but it is likely to be the subject of evidence: for example, what does “an hotelier” actually do? What precisely is involved in providing “property management services”?

   (2)  To whom are the services offered?

   (3)  How are they provided?

   (4)  How are they used?

   (5)  What is their purpose?

   (6)  Are they bundled together with other services?

   (7)  Are they differentiated by the functional level at which they are provided: wholesale or retail?

   (8)  Where do they originate?

   (9)  What is the method of their communication to the relevant target audience: is it predominantly by electronic means, domain names, websites, Twitter, Facebook or other means such as other trade brochures and journals?

   (10)  How closely contestable are the services in substance: are they in the same market or trade?

   (11)  How might consumers of the services perceive the services?

   … While the Opposed Mark is being sought in relation to a series of property (or real estate) related services, the two areas intersect in cases where, for example:

   (a)  a customer is purchasing a property or selling a property;

   (b)  a customer is seeking to enter a commercial lease, or renew that lease;

   (c)  a customer is seeking to purchase property for the purpose of developing the property (what is described in class 36 as “Real estate services relating to property development” and “Real estate services relating to real estate development”);

   (d)  a customer is seeking information or advice in relation to the above activities;

   (e)  a customer is seeking finance for a real estate purchase (“Real estate investment services” in class 36);

   (f)  a landowner is seeking to subdivide property (“Subdivision of real estate” in class 36); and

   (g)  a customer is seeking assistance in negotiating contracts.

   A customer wishing to do one of the activities described above may consult both a lawyer and a real estate agent. Indeed, the customer may opt only to engage one of these parties. … True it is that practice of lawyers is governed in New South Wales (in part) by the Legal Profession Uniform Law (NSW) and real estate agents by the Property and Stock Agents Act 2002 (NSW) (the PSA). However, this does not mean that there is no overlap in their services. Under s 3A of the PSA, “real estate agent functions” are broad. They include, relevantly:

   (a)  ‘business agent functions’, which including selling, buying or exchanging or otherwise dealing with or disposing of businesses or professional practices, or any share of interest in or goodwill in those businesses or practices; and

   (b)  acting as an agent for a real estate transaction, acting as agent for inducing or attempting to induce or negotiate with a view to any person entering into or making an offer to enter into a real estate transaction or a contract for a real estate transaction; and

   (c)  acting as an agent for the introduction arranging for the introduction, of a prospective purchaser, lessee or licensee of land to another licensed agent or to the owner, or the agent of the owner, of land.

   …

   It is not essential for the purpose of the test in s 14(2) that the services be identical. … the very nature of the services over which the Opposed Mark is sought to be registered are those which are interchangeable or partly interchangeable with a lawyer.

8. These are submissions which I take seriously. However, the fact that customers of one set of services will sometimes need the other, I don't think is sufficient to satisfy s 14(2). I note that the Opponent submits that a customer might choose to engage only one of these service providers, together with the observation about the existence of multi-disciplinary practices. I acknowledge that the question of similar services is, in this instance, not an easy one and so I start from first principles. The classification system is not of itself determinative – goods or services may be in different classes and yet be similar. Further, I am in agreement with the Opponent’s submission that, in spite of its observations about the PSA and the Legal Profession Uniform Law (NSW),:

   … it is important not to overstate the significance of how each profession/industry is regulated. That is not the concern of the Act. The tests under ss 44(2) and 14(2) are in relation to the services over which the mark in question is sought to be registered. To register a trade mark, it is not necessary for a person to demonstrate that they licensed or qualified to provide the services over which a mark is sought to be registered.

9. The suggestion that both services are offered to the same market and to the same customers is not a decisive factor; pest inspections or building certificates are services offered to the same market and customers without any realistic argument that those services are similar to the services of either of the parties here.

10. The Opponent has a related, but separate, accountancy business; otherwise neither party is a multidisciplinary practice and so, in terms of the Accor factors set out above, I find the origin of the parties’ services to be different.  So too, the nature and characteristics of real estate services are different from legal or accounting services, and as the Applicant submits, “the purpose of the Opposed Services in promoting for sale and procuring a sale of commercial real estate is not the same as completing forms and lodging them within the legislative requirements for a conveyance or application of legal or accounting principles”.  I do not find that the services are, as claimed by the Opponent, “interchangeable or partly interchangeable”.

11. In Prime Property Group SA Pty Ltd v Australian Central Credit Union Limited[4] this office considered whether, for the purposes of ss 44(2) and 14(2) of the Act, the following class 36 services,

    Class 36: Credit union services; Banking; Financial services; Investment; Insurance services; Loan services; Financial savings services; Deposit services; Credit card services; Investment advice; Brokerage; Financial management; Management of funds; Financing of home loans; Advisory services relating to loan services; Provision of home loans; Provision of loans

were similar to any of the opponent’s registered services in classes 35, 36, 36 and 45, namely:

Class 35: Advertising; administration relating to the real estate industry; office functions relating to the real estate industry; real estate, property and strata property advertising and promotions; publication and dissemination of publicity materials; marketing research and advisory services, public relation services; planning of marketing strategies; compiling real estate sales listings; organisation of housing and real estate displays and exhibitions for promotion or advertising purposes; advertising and promotions in relation to real property; real estate auctioneering

Class 36: Real estate affairs; real estate, property and strata property research, valuation, appraisal, advisory, consultancy, selection, acquisition, sales, leasing, rental, management and administration services; domestic and commercial property finding services; property management; property portfolio management; time-share property management; provision of information relating to property (real estate); real estate services and real estate agents' services; real estate services relating to property development; agency services for the selling on commission of real property

Class 37: Cleaning of property; property maintenance; advisory services for cleaning; advisory services for maintenance

Class 45: Conveyancing

[4] 2021 ATMO 133 (Hearing Officer Tuohy).

1. It is helpful to set out the Hearing Officer’s reasoning at length, as follows:

The Opponent alleges that the Applicant’s Services are similar to the Opponent’s Services for the following reasons:

(a)        A number of items available for selection on the IP Australia picklist of goods and services for real estate related services are accompanied by the word ‘financial’ in brackets, and a pick list item for financial evaluation services is specified as including for real estate. The pick list items are as follows, although I note that none of these specific items are claimed in either the Applicant’s Services or the Opponent’s Services:

·     Real estate assessment (financial)

·     Real property evaluation (financial)

·     Financial evaluation (insurance, banking, real estate)

(b)        Financial management and real estate assessment services in the Applicant’s Services are similar to real estate, property and strata property research, valuation, appraisal, advisory, consultancy, selection, acquisition, sales, leasing, rental, management, and administration services in the Opponent’s Services, as both may relate to assessment and management services in the real estate industry. (I note however that the Applicant’s Services do not specifically include a claim for ‘real estate assessment services’, so I assume that the Opponent is inferring that such a claim falls under the broad claim for ‘financial services’).

(c)        Investment advice in the Applicant’s Services is similar to property management, property portfolio management, and provision of information relating to property (real estate) in the Opponent’s Services, as advice relating to investment can be in the form of property investment and management.

(d)        The claim for financial management in the Applicant’s Services is encompassed by the Opponent’s Services for property management, as property management includes the management of funds and finances in relation to a property, including collecting, holding, and distributing lease payments.

(e)        A trader in real estate may at times in the course of business provide services in relation to investment, investment advice, insurance services, financial management, brokerage, and management of funds for real estate or property.  

(f)         Financial services in the Applicant’s Services are similar to Conveyancing in the Opponent’s Services as conveyancing may include the provision of financial services in relation to the transfer of property, including the placement of money in a trust account, calculation of financial figures in relation to rates and taxes, liaising with financial institutions regarding payment and arranging for financial settlement.

(g)        Financial services in the Applicant’s Services are similar to advertising services in the Opponent’s Services. No support is given for this argument other than to refer to an earlier decision of the Registrar (Austexx Pty Ltd v D.F.O Pty (2011) ATMO 93) where a broad claim in class 35 for business administration, assistance, management, and advertising services was deemed to be similar to a broad claim for various financial services in Class 36.

The Opponent’s case is based on the premise that services relating to the management, sale, and transfer of property have an intrinsic financial aspect (which is the transfer of consideration for the purchase or lease of property), or that assessment or investment advice in relation to real estate will encompass the financial risks and benefits of the proposed transaction.  However, the fact that a real estate service may involve some form of financial transaction, or that a real estate agent may occasionally offer financial advice, does not alter the fact that the nature and trade channels of the respective services are fundamentally different.  Real estate investment often requires the input of professionals trained in a myriad of different fields, including financial advisors, mortgage brokers, real estate agents, property managers, lawyers, insurance brokers, builders, property inspectors etc. Each of these professionals has significantly different training, experience, regulatory oversight, and sources of revenue notwithstanding that each may be involved in a property transaction or provide advice on property investment. The engagement of professionals in property transactions is also often by way of referral, for example a mortgage broker may recommend a conveyancer and a lawyer may recommend a pest inspector. The ordinary consumer expects to engage different businesses for different aspects of property investment or property transactions.

Further, there are key differences even in areas of peripheral overlap such as assessment of property value where a provider of real estate services and a provider of financial services may both carry out similar functions. For instance, a real estate agent may provide a property valuation for the purposes of obtaining a new client, or, in the course of acting as a buyers agent. Conversely, a bank when undertaking a property valuation is simply undertaking its own due diligence. It is not providing a service to a third party for a fee, or a service to the person who is seeking the loan. Moreover, the advice given by a real estate agent on whether to purchase a property is likely to have a different emphasis and underpinning rationale when compared to the advice given by a financial advisor.

Overall, despite some peripheral overlaps in some aspects of the Applicant’s Services and the Opponent’s Services, I am not satisfied that they have a fundamentally similar nature and purpose, or that consumers would expect that financial related services and real estate related services generally would originate from the same trade source.  

For the reasons given above, I am not satisfied that the Applicant’s Services are of the same description as the Opponent’s Services. 

1. The Opponent before me referred to this decision but was keen to distinguish it on the basis that, here, the asserted overlap was more than “peripheral”.  That submission can be better understood by consideration of another, older, case.  In The Chase Manhattan Bank, National Association v Piper Alderman[5], this office considered that the services of the opponent, “banking services in class 36”, were not services of the same description as any of the services of the applicant embraced by three applications, being broadly: (i) real estate transactions (ii) business transfer services (iii) corporate, personal and taxation advice; and (iv) business consultation.  The Hearing Officer wrote:

   These subject applications … were made in the last decade of the twentieth century. The scope envisaged by the term ‘banking services’ is somewhat wider than that imagined when the opponent’s marks were registered in 1983.  A bank can no longer be seen as an institution that only accepts deposits and makes loans. The utilisation of computer-generated information has also led to advances in other areas such as foreign exchange dealings  - particularly in relation to currency and interest rate exchanges.  The changing demands by consumers have also generated a range of new services such as bill paying, investment advice, electronic funds transfer - to name a few examples.  Overall it seems to me therefore that the nature of banking services has become closer to the services offered under legal, commercial and real estate services of the applicant’s trade mark applications.

   Customers using banking services would vary enormously. With the growing trend towards a cashless society, the majority of persons are compelled by necessity to have at least one account with a bank or similar financial institution into which their income or other payments are deposited.  Consequently it would be fair to assume that most members of the public use a bank as part of their every day personal financial transactions. However, despite the growth in the scope of services offered, there would still appear to be a clear demarcation as to which services are offered by banks and those that are offered by other parties such as legal practitioners, taxation agents, real estate agents and insurance brokers.  It would appear to me that the separation may be made on the basis of the primary service being sought.  Therefore, if the person required, say, a bank loan, then any other services provided - such as legal advice - are ancillary only.  Conversely, if legal advice was being sought, which involved the provision of a bank cheque, then that person would go to a legal practitioner for the primary service of legal advice.    I am of the opinion that, despite extensive changes to banking services offered, members of the public would not, for example, expect to go to a bank to seek legal advice, prepare their tax return, buy or sell real estate, or arrange insurance for their car.

   [5] Sandra Jarvis, 17 June1996; see also, American Express Co v NV Amev (1985) AIPC 90-258 where ‘travel services’ and ‘insurance services’ were under consideration and it was found that ‘travel and insurance services have nothing of any real substance in common as regards their nature or their purpose.’

2. Applying the logic of these cases I am not persuaded that the Applicant’s Services are similar to the Opponent’s Services and so a critical element of s 44 has not been established. This ground of opposition fails.

Section 58A

1. Section 58A of the Act is only applicable where a trade mark application is accepted pursuant to s 44(4). That is not the case here and so the ground is no longer relevant.

Section 60

1. Section 60 of the Act provides:

60  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.

1. In the SGP the Opponent particularises the s 60 ground of opposition as follows:

   The SOLVE trade mark has been used by Solve Legal Pty Ltd and Solve Accounting Pty Ltd since about 18 November 2019 in the provision of legal and accounting services, which includes conveyancing to persons in Australia, in particular New South Wales and Sydney. The SOLVE trade mark has been used continuously since 18 November 2019.   Use of the SOLVE trade mark pre-dates the priority date of the opposed application.   The SOLVE trademark has many similarities to the opposed trademark.     The logo is aligned similarly to the left with the main SOLVE flowing to the right, with three smaller words placed below.   The logo even takes a cubic form of similar proportions with intersecting horizontal and vertical patterns, and strokes passing through it that look similar to an ‘equals’ sign.  

1. The Opponent must establish that a reputation exists in another trade mark in Australia before the Relevant Date. As with s 44, I note as a procedural matter that the Opponent has standing to rely on s 60 since the trade mark with the reputation need not be owned by the Opponent. The Opponent must show that, because of the reputation, use of the Trade Mark in the marketplace would be likely to deceive or cause confusion.

2. The submissions would indicate that the s 60 claim is based not just on use of the Opponent’s Trade Mark, but also on an earlier iteration thereof, and on use of the word SOLVE more broadly. However, it is expedient to first look at the claim of reputation more generally. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’. Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided decided that, in s 60, reputation is ‘the recognition of the [trade mark] by the public generally’.[6]  Her Honour quoted with approval the following words of Lockhart J from Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

   [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[7]

   [6] [2000] FCA 1335, [81] (Kenny J).

   [7] [1992] FCA 159, [118] (Lockhart, Gummow and French JJ).

3. The Opponent’s submission is that “the Solve Mark enjoyed a significant reputation, particularly in the Greater Sydney region” by reason of existence of a website since November 2019 said to generate at least one new client query per week; use of the Solve Mark in all of the firm’s email signatures, invoices and letterheads; and a Facebook page with 347 followers.  There is a statement of 2021-22 financial year “revenue” which I take to mean gross income.  I treat the figure as confidential.  The revenue period postdates the Relevant Date and might be discounted, but to the extent that it could give some indication of gross income at an earlier time (which I assume to be less), the turnover figure is very modest. 

4. Based on this evidence I am unable to find any sort of reputation in the Opponent’s Trade Mark, or any trade mark comprising or including the word “SOLVE” relied upon by the Opponent, at the Relevant Date. Since the requisite reputation under s 60(a) has not been established, the enquiry ends there. The ground of opposition under s 60 of the Act has not been established.

Decision

1. Section 55 of the Act relevantly provides:

   (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.

2. The Opponent has not established a ground of opposition. Accordingly, I direct that application number 2154564 proceeds to registration not less than thirty days from the date of this decision. If the Registrar is served with a notice of appeal before then, the disposition of the application should otherwise be in accordance with the Court’s order or direction.

Costs

1. Both parties have sought costs. It is usual for costs to follow the event, and there is no reason to depart from that principle in this case. I award costs against the Opponent in accordance with s 221 of the Act, in the amounts set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth).

Debrett Lyons

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

19 March 2024