South Australian Totalizator Agency Board v Club Gaming Systems Pty Ltd

This case concerns an opposition by the South Australian Totalizator Agency Board ("the Opponent") to the registration of a trade mark application by Club Gaming Systems Pty Limited ("the Applicant"). The Applicant sought to register a trade mark, described as a "Keno Racing logo," for a range of goods and services including gaming machines, computer hardware and software, printed matter, clothing, and gaming and entertainment services. The opposition was heard by a delegate of the Registrar of Trade Marks.

The Opponent raised six grounds of opposition. These included claims that the Applicant did not intend to use the trade mark in Australia, that its use would be contrary to law, that it was likely to deceive or cause confusion due to a connotation it possessed, that it was not capable of distinguishing the Applicant's goods or services, that it was identical or deceptively similar to another trade mark for which registration was sought, and that it was similar to a trade mark that had acquired a reputation in Australia. The Opponent relied on statutory declarations detailing its own activities as a major provider of betting services in South Australia and the results of a market research survey conducted in South Australia.

The delegate considered each ground of opposition. The ground under section 59, concerning the intention to use the trade mark, was dismissed as the filing of the application itself indicated a bona fide intention to use it. The ground under section 42, that use would be contrary to law, was not substantiated, as the Opponent's status under the *Racing Act (SA) 1976* did not clearly render the Applicant's proposed use unlawful. The delegate found no evidence of a secondary meaning or connotation that would cause deception or confusion under section 43. The ground under section 41, regarding the capacity to distinguish, was also dismissed, with the delegate finding the trade mark inherently adapted to distinguish the Applicant's goods and services. The opposition under section 44, for identical or deceptively similar trade marks, failed as no other trade mark registration was properly identified, and the Opponent's own later-filed application was not relevant. Finally, the ground under section 60, for similarity to a trade mark with a reputation, was not made out. While the survey indicated potential confusion, the Opponent failed to demonstrate that this confusion arose from the reputation of a specific trade mark, rather than the Opponent's general monopolistic status.

Consequently, the delegate found that the opposition had failed. The application was directed to proceed to registration, subject to a 30-day period from the decision date and any subsequent appeal.