Taxback Pty Ltd v Skilled Accounting Pty Ltd [Sec=Unclassified]

This matter came before Heath Wilson, a Hearing Officer acting as a delegate of the Registrar of Trade Marks, concerning an opposition by Skilled Accounting Pty Ltd against a trade mark application by European Student Services Limited (ESS). The dispute arose from ESS's application to register a trade mark for services including tax preparation, tax returns, tax advice, and accounting, which Skilled Accounting opposed on grounds under sections 41, 43, and 60 of the relevant Act.

The Hearing Officer was required to determine whether the grounds of opposition, specifically those relating to the trade mark's ability to distinguish the applicant's services, the potential for deception or confusion, and whether the trade mark was likely to be confused with an earlier trade mark having a reputation, were established on the balance of probabilities. The onus rested on the opponent, Skilled Accounting Pty Ltd, to prove at least one of these grounds.

In reaching a decision, the Hearing Officer considered the evidence presented by both parties, including statutory declarations. The decision focused on the ground of opposition under section 60, which concerns the likelihood of confusion with an earlier trade mark having a reputation. The Hearing Officer found that while the opponent's trade mark had some reputation, it was insufficient, when balanced against factors affecting the likelihood of confusion in the marketplace, to create a real and tangible danger of confusion between the two marks. The probability of confusion was deemed not to be finite and non-trivial, as required by precedent.

Consequently, the Hearing Officer found that the ground of opposition under section 60 had not been established. As no grounds of opposition were found to be established, the trade mark application was permitted to proceed to registration one month from the date of the decision, unless an appeal was filed. The opponent was ordered to pay the applicant's costs.