Square, Inc v J Plus S Pty Ltd

This matter concerned an opposition by Square, Inc. (the Opponent) to the registration of a trade mark by J Plus S Pty Ltd (the Applicant). The Opponent relied on its existing trade mark registrations, which predated the Applicant's trade mark application, as the basis for its opposition. The dispute centred on whether the services covered by the Opponent's registrations were similar to the services for which the Applicant sought to register its trade mark.

The primary legal issue before the Hearing Officer was whether the ground of opposition under section 44 of the *Trade Marks Act 1995* (Cth) had been established. This required a determination of whether the services specified in the Applicant's application were similar to the services covered by the Opponent's registered trade marks, and whether the Opponent's registrations were held by a person other than the Applicant.

The Hearing Officer reasoned that section 14(2) of the Act defines services as similar if they are the same or of the same description. In assessing similarity, the Hearing Officer considered the essential characteristics of the services, applying established principles used for comparing goods. These principles involve examining the nature and characteristics of the services, their origin, purpose, and the trade channels through which they are bought and sold. The Hearing Officer found that the Opponent's registrations were held in a name other than that of the Applicant and shared an earlier priority date. Crucially, the Hearing Officer concluded that the services were similar when judged in a business sense, as they could be provided to the same consumers, by the same provider, through the same channels, and for similar purposes.

Accordingly, the Hearing Officer found that the ground of opposition under section 44 of the Act had been established. The application to register the trade mark was refused. Costs were awarded against the Applicant in accordance with the usual principle that costs follow the event.