The Design Hunter Pty Ltd v Indesign Publishing Pty Ltd

The Design Hunter Pty Ltd (the Applicant) sought to register a trade mark, application number 1637467. Indesign Publishing Pty Ltd (the Opponent) opposed this application. The dispute concerned whether the Applicant's proposed trade mark was substantially identical or deceptively similar to the Opponent's registered trade mark, registration no. 1526158, for similar services. The matter was heard by Debrett Lyons, a Hearing Officer.

The primary legal issue before the Hearing Officer was whether the Applicant's trade mark application should be rejected under section 44(2) of the relevant Act. This section requires rejection if the applicant's trade mark is substantially identical or deceptively similar to a registered trade mark for similar services, and the applicant's priority date is not earlier than the registered trade mark's priority date. The Hearing Officer also considered whether any exceptions under section 44(3) applied, specifically concerning continuous use of the applicant's trade mark.

The Hearing Officer found that the Opponent's registered trade mark had a priority date of 22 November 2012, which was earlier than the priority date of the Applicant's opposed trade mark. Relying on a previous decision by Hearing Officer Kirov, which found the marks to be substantially identical, and independently concluding that the marks were deceptively similar for the purposes of section 44(2), the Hearing Officer determined that the opposition was successful on the ground raised under section 44 of the Act. The Hearing Officer declined to apply section 44(3) due to insufficient evidence of continuous use by the Applicant in relation to the services in question.

Consequently, the Hearing Officer refused to register the Applicant's trade mark application number 1637467. As the Opponent was the successful party, it was awarded costs against the Applicant in accordance with Schedule 8 of the Trade Mark Regulations 1995.