Trade mark application number 2017362 (classes 35 and 36) –
[2025] ATMO 140
•18 July 2025
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 2017362 (classes 35 and 36) – SUNRISE BROKERS - in the name of Sunrise Brokers LLP
Delegate: | Nicole Worth |
Representation: | Applicant: Melissa Marcus, counsel, instructed by Gilbert + Tobin |
Decision: | 2025 ATMO 140 Reg 17A.24 proceeding – ground for rejection under s 44 of Trade Marks Act 1995 (Cth) – some similar services – amendments proposed – IRDA accepted for limited range of services. |
Background
This is a decision pursuant to reg 17A.24 of the Trade Marks Regulations 1995 (Cth) (‘Regulations’)[1] which provides that the Registrar of Trade Marks (‘Registrar’) must, after examination, accept an International Registration Designating Australia (‘IRDA’) unless satisfied that it has not been made in accordance with the Act or that there are grounds for rejecting it.
[1] Any reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’) or a regulation of the Trade Marks Regulations 1995 (Cth) respectively, unless otherwise indicated.
Sunrise Brokers LLP (‘Holder’) applied to extend protection of its international registration number 1444754 to Australia. The IRDA was assigned Australian trade mark application number 2017362 and its relevant details are below.
Trade Mark: SUNRISE BROKERS (‘Trade Mark’)
Priority Date: 21 June 2018
Filing Date: 23 November 2018
Services:
Class 35: Retail services connected with the sale of financial products and financial investments; economic, accounting, statistical and commercial information; conducting audits and statistics in the economic field; business consulting relating to management, business organization; business management; research of sponsors of industrial and commercial projects; investigations and research for business; professional business consultancy; business expertise; estimates in industrial and commercial affairs; business information; research, studies, analyzes and audits of companies (commercial analyzes); business and business planning, control, analysis, management, inspection, monitoring, information and assessment; account verification; information and advice on industrial and commercial risks; searching for information in computer files (for others); systematization of information into computer databases.
Class 36: Financial affairs; monetary affairs; real estate affairs; financial intermediation services; securities brokerage; brokerage services on the financial markets; interdealer brokering of derivatives, securities, equities, commodities, credit, interest rates foreign exchange and hybrid financial securities; financial transactions; transacting and trading of financial instruments; financial analysis, management and consulting; financial trade execution, confirmation, clearing and settlement services; Internet/web based financial trading facilities and platforms; providing information relating to financial instruments, brokerage, trading investments, companies, commodities, and financial markets through a global computer network; financial investment services; constitution and capital investment services; financing services; receipt, transmission and execution of financial orders on behalf of others; maintaining and managing portfolio accounts consisting of negotiable securities for the benefit of others; financial investment management; management of financial portfolios; management of investment funds; management of financial products; management of UCITS (Undertakings for Collective Investment in Transferable Securities); management of AIFs (Alternative Investment Funds); management of SICAV (Investment Companies with Variable Capital); fund management (mutual funds); management of FCPR (Fonds Commun de Placement à Risque); management of FCPI (Innovation Placement Fund); management of FIP (Proximity Investment Fund); management of SPF (Specialized Professional Investment Fund); FEIL management; management of financing funds for the social and solidarity economy; selection of financial products from UCITS (Undertakings for Collective Investment in Transferable Securities); financial asset allocation services; financial market analysis and reporting thereon; financial research; financial forecasting; projections, estimates and analyzes of risks related to financial markets and financial investments; financial information; financial estimates; financial audits; financial engineering; financial advisory services; financial consultations and expertise; financial investment advice, strategic allocation of business liabilities and / or assets; structuring of financial portfolios; structuring advice for financial portfolios; tax information; tax estimates; consultation and expertise in tax matters; foreign exchange transactions; clearing operation (exchange); electronic transfer of funds; Administrative and accounting management of financial portfolios, financial products; information relating to the financial markets; conducting audits and statistics in the banking and financial fields; maintaining and updating a database of information relating to financial brokerage; management of computer files relating to the list of brokers and banking intermediaries, financial intermediaries, credit intermediaries, credit brokers and financial asset managers.
The IRDA was examined and a ground for rejection under s 44[2] was raised on the basis of the following trade marks (collectively, ‘Cited Marks’), which at the time were registered in respect of a range of services across classes 35, 36, 38, 41 and 42. The Cited Marks’ descriptions of services included broad statements such as ‘financial services’ and ‘monetary affairs’.[3] The current complete specifications of the Cited Marks’ services are at Annexure A of this decision. All are owned by Ebiexchange Australia Pty Ltd (‘EA’).
[2] Reg 17A.28 states that the grounds for rejecting an IRDA are those set out in ss 39 to 44 of the Act.
[3] The statements of services have since been restricted, discussed later in this decision.
| SUNRISE | SUNRISE | |
| Registration No.: 871132 Priority Date: 30 March 2001 Classes: 35, 36, 41, 42. | Registration No.: 944162 Priority Date: 18 February 2003 Class: 36 | Registration No.: 974048 Priority Date: 13 October 2003 Classes: 35, 36, 41, 42. |
| (‘First Cited Mark’) | (‘Second Cited Mark’) | (‘Third Cited Mark’) |
The IRDA was then deferred for a period of time whilst the Holder sought partial removal of the First and Second Cited Marks and complete removal of the Third Cited Mark. The Holder was mostly successful and a number of services of the Cited Marks were restricted or removed (although the Third Cited Mark was not completely removed). The Holder relies in part upon the findings of the delegate in that decision (‘Removal Decision’[4]). It also amended its own IRDA by deleting ‘insurance’ from class 36.
[4] Ebiexchange Australia Pty Ltd v Sunrise Brokers LLP [2024] ATMO 6 (Hearing Officer Makrigiorgos).
The Holder proposed further amendments to its services (‘Proposed Amendments’) and submitted to the examiner that along with the restriction to the Cited Marks’ services, the services of each party were sufficiently differentiated such that the ground for rejection no longer applied. The examiner found these amendments unacceptable on the basis that the amendments left parts of the scope of services unclear, and did not necessarily remove the similarity of services with the Cited Marks because the inherent nature of some of the services remained similar. The examiner maintained the ground for rejection over the course of a further four reports, after which the Holder requested to be heard.
I heard the matter in my capacity as a delegate of the Registrar on 30 April 2025. Melissa Marcus of counsel, instructed by Fiona Brittain of Gilbert + Tobin, made oral and written submissions on the Holder’s behalf.
I mention here that this is not a review of the examiner’s decision and I am not bound in any way by it. Rather, it is a consideration afresh of the ground for rejection under s 44 as it applies to the IRDA.
Section 44
The relevant provision of s 44 is reproduced below:
Section 44 - Identical etc. trade marks
…
(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.
A presumption of registrability is embodied in reg 17A.24 which provides that the Registrar must accept an IRDA unless satisfied that there are grounds for rejecting it (thereby placing the onus for proving the ground upon the Registrar, rather than placing the onus to prove registrability upon the Holder). Accordingly, I am not entitled to reject the IRDA unless satisfied that one or more of the Cited Marks:
· is in the name of a person other than the Holder;
· has a priority date that is earlier than the priority date of the Trade Mark;
· is in respect of similar services or closely related goods to the Holder’s services; and
· is substantially identical with, or deceptively similar to, the Trade Mark.
If I am so satisfied, ss 44(3) and 44(4) provide exceptions to s 44(2). The Holder has not argued for the application of either of these provisions and has provided no evidence in support of either of them. Accordingly, my consideration is confined to s 44(2).
It is straight-forward that each of the Cited Marks is in the name of a person other than the Holder and that they each have a priority date which is earlier than the priority date of the Trade Mark. The Holder did not make submissions regarding deceptive similarity or substantial identity between the Trade Mark and the Cited Marks. I consider that the parties’ trade marks are at least deceptively similar. SUNRISE is a distinct and memorable feature of each trade mark and the presence of the word BROKERS in the context of the Holder’s Services does not differentiate the Trade Mark from any of the Cited Marks (including when comparing it to the Third Cited Mark, wherein SUNRISE remains a distinct feature in combination with the word EXCHANGE and circular arrow device).
The remaining issue to be resolved is therefore whether the services of the Trade Mark are similar to those of the Cited Marks.
Similar services are defined in s 14(2) as services that are the same, or of the same description, as the other services. The term ‘of the same description’ casts a wider net than ‘the same’: it is a term of art to be understood ‘in such a sense that, if two different items are held not to fall within the expression, their sale under the same mark by different companies is not likely to lead to deception or confusion’.[5]
[5] Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd [1993] FCA 203, [27] (Burchett J), cited in Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808, discussing the ‘term of art’ at [275]-[286] (Burley J).
The Holder submits that, following the findings in the Removal Decision, its Proposed Amendments differentiate the services to such a degree that the Holder’s Services would no longer be of the same description as the services of the Cited Marks. To that end, I turn to some of the findings made in the Removal Decision.[6]
[6] I mention that, although consistency in public administration is desirable, I am not bound by the findings of the delegate in the Removal Decision.
The Removal Decision
In 2021 the Holder filed applications to partially remove the First and Second Cited Marks and completely remove the Third Cited Mark. The partial removals sought were to be effected by way of the deletion of a number of services and, in relation to the First Cited Mark, the addition of the words ‘all of the foregoing limited to insurance services’ (the Second Cited Mark did not need this addition because it was to be restricted to only ‘insurance’ and the Third Cited Mark was to be completely removed). Of this matter the Holder says:
The [Holder’s] case in the non-use proceeding was that the only use that EA could show in relation to the Cited Marks was use in the specialised field of insurance services, or, in the case of [the Third Cited Mark], it argued that there was no use at all of that mark as registered (or, with alterations or additions that do not affect the identity of the mark).
The [Holder’s] case was that the specialised field of insurance services is not the same or a similar field as financial services as engaged in by the [Holder] and to allow EA to maintain a monopoly over all financial services and other broad services when its use of the Cited Marks is in a specialised field, would allow EA to cast an extraordinarily wide net in terms of trade mark protection. The [Holder] asserted that such a broad registration is unwarranted and inappropriate.[7]
[7] Applicant’s submissions, [10]-[11].
In the Removal Decision EA did not describe itself as an insurance provider but rather as a provider of a particular computer software program used by participants in the financial industry such as insurance brokers and insurers. EA sought nonetheless to maintain its registrations for broad claims including ‘financial services’ and ‘financial affairs’, submitting that the fundamental nature of these services does not change, even if only offered and provided to the insurance industry.
The delegate found:
In my opinion, while [EA] makes claims that it is a service provider to participants in the financial industry such as insurance brokers and insurers (emphasis added), I find the entirety of [EA’s] evidence makes it crystal clear that [EA] is only a service provider to the insurance industry and not to the entire financial industry or any other industry.[8]
…
[EA] claims it is a service provider in the financial services industry. I agree to the extent that insurance falls under the financial services umbrella. However, the breadth of financial services is extensive, and falls into different sectors, as is shown by the Australian Trade and Investment Commission’s webpage. Further there is no convincing evidence from [EA] to show that in general, in the Australian financial services industry, a provider of one sector e.g. banking is also a provider of insurance services.
I accept that the use of a trade mark for a subset of a particular category of services can in some circumstances be sufficient to maintain a registration of a trade mark for the entire category. Logically, the more extensive the category in question, the less likely it is to be appropriate to allow a broad claim to remain unrestricted based on use only for some services within that category.
Ultimately, financial services are of such broad nature that it is not appropriate to allow a broad claim to remain unrestricted based on the narrow use demonstrated by [EA].
There is no evidence that [EA] provides financial services which are other than insurance related. Therefore, I am not satisfied that the provision of insurance services can support the claim that [EA] provides all the different types of financial services.[9]
[8] Removal Decision, [49].
[9] Ibid [58(b)] (citations omitted).
Having found that EA could not support its claim to use of the Cited Trade Marks in relation to financial services generally, the delegate considered whether she should nonetheless exercise her discretion to maintain the registrations for these services, including a consideration of whether removal would lead to fragmented ownership of similar trade marks in respect of similar services, and therefore confusion. In this regard the delegate stated:
I am not satisfied that this is a case where fine distinctions need to be drawn. Instead, it would appear counterproductive to the purpose of the trade mark system for traders in a different financial services sector to insurance, for example, banking, who wish to obtain registration of a similar mark for banking services, to be hindered in their efforts because of a mark used only in respect of insurance services. In this case, the concern is not fragmentation; rather the restriction sought by the [Holder] solely to insurance services is suitable within the context of the specific market in which [EA] has and continues to operate.
…
[EA] has made submissions that I should exercise the discretion on the basis that the services upon which the Trade Mark Sunrise has been used are similar to the remaining services. For the reasons detailed earlier, the evidence provided on this issue is so scant that I am not satisfied that insurance services can be considered similar to all the Registered Services which do not relate to insurance. I note that the question of whether insurance services are similar to various other types of financial services is likely to arise again in relation to the prosecution before this office of the [Holder’s] SUNRISE BROKERS trade mark. Given mine is a finding of fact based largely on an absence of evidence on this issue, it is unlikely that my finding here could do much to inform that prosecution. Further, I note that were I to restrict or partially remove the Registered Services as proposed, [EA] would still retain the protection of the Trade Mark Sunrise for the services it has used and (both in respect of any opposition or infringement matters) any similar services or closely related goods, which would be expected to prevent any instance of consumer confusion. I am therefore satisfied that partially removing or restricting the Trade Mark Sunrise will not affect [EA’s] insurance business or have an impact on [EA’s] ability to continue to use the Trade Mark Sunrise.[10]
[10] Ibid [69], [71].
In accordance with her various findings (including also that there had been use of the Third Trade Mark which the Holder had sought to completely remove), the delegate decided that all three of the Cited Marks should be partially removed by way of restricting all of their services to insurance or being in relation to insurance. The resultant services of the Cited Marks are those shown in Annexure A.
The Holder submits that the services of the Cited Marks are therefore ring fenced and the findings of the delegate in the Removal Decision provide support for the position that whilst ‘insurance’ and the Holder’s Services (as proposed to be amended) fall under the umbrella of ‘financial services’, they are not in the same sector and are unlikely to be confused.
Moreover, the Holder submits, it is incongruous for the examiner to be positively satisfied that the services of the parties are similar without the provision of evidence whereas the delegate found she could not be satisfied in the absence of evidence on the issue. To that end, the Holder submits that the appropriate forum to test the similarity of services would be in any opposition EA might mount to the IRDA wherein the parties would bring evidence to bear on the issue. Otherwise, in the face of two seemingly conflicting attitudes from the Trade Marks Office, the Holder submits it ought to be entitled to the presumption of registrability embodied in reg 17A.24.
The Proposed Amendments
The Holder submits that its Proposed Amendments ring fence its own services so that they cannot be considered similar to those of the Cited Marks. The Proposed Amendments are shown below, with deletions struck through and additions underlined.
Class 35: Retail services connected with the sale of financial products and financial investments;
economic, accounting, statistical and commercial information; conducting audits and statistics in the economic field; business consulting relating to management, business organization; business management;research of sponsors of industrial and commercial projects;investigations and research for business; professional business consultancy; business expertise;estimates in industrial and commercial affairs;business information; research, studies, analyzes and audits of companies (commercial analyzes); business and business planning, control, analysis, management, inspection, monitoring, information and assessment; account verification; information and advice on industrial and commercial risks; searching for information in computer files (for others); systematization of information into computer databases.all of the foregoing relating to brokerage of listed and over-the-counter (OTC) financial instruments and excluding insurance-related services.[11]Class 36: Financial affairs; monetary affairs; real estate affairs; financial intermediation services; securities brokerage; brokerage services on the financial markets; interdealer brokering of derivatives, securities, equities, commodities, credit, interest rates foreign exchange and hybrid financial securities; financial transactions; transacting and trading of financial instruments; financial analysis, management and consulting; financial trade execution, confirmation, clearing and settlement services; Internet/web based financial trading facilities and platforms; providing information relating to financial instruments, brokerage, trading investments, companies, commodities, and financial markets through a global computer network; financial investment services; constitution and capital investment services; financing services; receipt, transmission and execution of financial orders on behalf of others; maintaining and managing portfolio accounts consisting of negotiable securities for the benefit of others; financial investment management; management of financial portfolios; management of investment funds; management of financial products; management of UCITS (Undertakings for Collective Investment in Transferable Securities); management of AIFs (Alternative Investment Funds); management of SICAV (Investment Companies with Variable Capital); fund management (mutual funds); management of FCPR (Fonds Commun de Placement à Risque); management of FCPI (Innovation Placement Fund); management of FIP (Proximity Investment Fund); management of SPF (Specialized Professional Investment Fund); FEIL management; management of financing funds for the social and solidarity economy; selection of financial products from UCITS (Undertakings for Collective Investment in Transferable Securities); financial asset allocation services; financial market analysis and reporting thereon; financial research; financial forecasting; projections, estimates and analyzes of risks related to financial markets and financial investments; financial information; financial estimates; financial audits; financial engineering; financial advisory services; financial consultations and expertise; financial investment advice, strategic allocation of business liabilities and / or assets; structuring of financial portfolios; structuring advice for financial portfolios; tax information; tax estimates; consultation and expertise in tax matters; foreign exchange transactions; clearing operation (exchange); electronic transfer of funds; Administrative and accounting management of financial portfolios, financial products; information relating to the financial markets;
conducting audits and statistics in the banking and financial fields;maintaining and updating a database of information relating to financial brokerage; management of computer files relating to the list of brokers and banking intermediaries, financial intermediaries, credit intermediaries, credit brokers and financial asset managers.; all of the foregoing relating to brokerage of listed and over-the-counter (OTC) financial instruments and excluding insurance-related services.[11] Listed financial instruments are those traded on a centralised exchange, such as the Australian Securities Exchange, and over-the-counter financial instruments are those traded directly between private parties. See Daniel Liberto, ‘Over-the-Counter (OTC) Markets: Trading and Securities’, Investopedia (Web Page) < of similar services
Principles for the comparison of goods, subject to any necessary qualification, apply also to the comparison of services.[12] The Full Court in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd (‘Accor’) described them in the following terms:
[12] Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd (‘Accor’) [2017] FCAFC 56 (Greenwood, Besanko and Katzmann JJ); MID Sydney Pty Ltd v Australian Tourism Company Ltd [1998] FCA 1616 (Burchett, Sackville and Lehane JJ).
As to whether impugned services might properly be understood as services of the same description as services for which a trade mark is registered, the features to be considered are likely to include these considerations:
(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 consumer of the services perceive the services…[13]
[13] Accor, ibid [339].
In applying the first principle, here the assessment of the inherent character of the parties’ services must largely be made on the basis of the language used to describe them. There is no evidence from the owner of the Cited Marks as to what its services entail, as would be expected given this matter is between the Registrar and the Holder. There is also limited research on the examination file that goes to the nature of the parties’ services and the potential nexus between them. The Holder has provided a declaration from one of its officers[14] which provides some information as to the nature of its services. That which is most relevant is as follows:
The Sunrise Group offers broking services across equity, foreign exchange, and commodity driven asset classes, convergence analytics and execution in cash equities via the regulated entities … (for these purposes the “Sunrise Group”). The broking services are in the rate, credit, foreign exchange, equity and commodity asset classes but do not include insurance related services. Products include income securities, interest rate swaps, foreign exchange spot and derivatives, equity-related products, credit derivatives, commodities, listed futures & options, and structured products. In terms of electronic brokerage services, a suite of offerings provide clients with electronic marketplaces, connectivity, aggregation, and order routing to access BGC Partners’ [of which the Holder is apparently a part or division] global liquidity pools in multiple asset classes…[15]
[14] Being a declaration of JP Aubin, board member of the Holder, a director of Sunrise Brokers (Hong Kong) Limited and an officer of BGC Brokers LP, dated 3 October 2022 (‘Aubin’), which was provided during the course of the removal proceedings of the Cited Marks.
[15] Ibid [7].
Whilst this statement provides some assistance it does not explain what may be included within the full notional scope of Holder’s services as specified in its IRDA (and it is the notional scope of its services which must be considered[16]).
[16] Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43, [11] (Mason J).
It must also be borne in mind that the parties’ services do not equate to the limitations applied (or proposed to be applied) to their respective specifications. The Holder submits:
[I]n the case at hand it is obvious that the nature and purpose of brokerage of financial instruments and insurance are completely different i.e. investing money with a view to gaining a return on that investment as compared with paying a small known amount (insurance premium) in exchange for the insurer assuming a risk and possibly making a payout in the event of a loss occurring. The services are not offered as any sort of alternative. They are not substitutable at all.[17]
[17] Holder’s submissions, [33].
However, the Holder’s services are not merely brokerage of listed and over-the-counter financial instruments and EA’s services are not merely insurance services. Rather, is it the actual services claimed, qualified as being in relation to these things, which must be considered.
It is useful to examine first what the restrictions mean. Financial instruments are assets that can be traded or exchanged[18] and brokerage is the act of facilitating these exchanges, which may or may not also include advice.[19] Insurance, on the other hand, is purchased to provide financial protection or reimbursement against losses.[20] Insurance is not generally considered to be a tradable financial instrument, albeit the underlying risk may be packaged and traded with reinsurers.[21]
[18] Will Kenton, ‘Financial Instruments Explained: Types and Asset Classes’, Investopedia (Web Page) < Tim Smith, ‘Boker: Definition, Types, Regulation and Examples’, Investopedia (Web page) < Julia Kagan, ‘What is Insurance?’, Investopedia (Web Page) < The Investopedia Team, ‘Are Insurance Companies and Pension Funds Considered Financial Instruments?’, Investopedia (Web Page) <
With this in mind, I turn to the assessment of the similarity between the parties’ services as qualified by their respective limitations.
I begin with a consideration of the Holder’s services in class 35 as they would be if amended as proposed by the Holder. There are effectively three claimed services all of which would be qualified by the statement ‘all of the foregoing relating to brokerage of listed and over-the-counter (OTC) financial instruments and excluding insurance-related services’:
· retail services connected with the sale of financial products and financial investments;
· research of sponsors of industrial and commercial projects;
· estimates in industrial and commercial affairs.
As a matter of language, the proposed amendment does not sit naturally with the latter two services, in that rather than clarifying their nature such that they may be differentiated from EA’s services, it renders them unclear. For example, ‘research of sponsors of industrial and commercial projects, relating to brokerage of listed and over-the-counter (OTC) financial instruments and excluding insurance-related services’ is difficult to comprehend. Research into sponsorship of industrial and commercial projects would seem to have nothing to do with brokerage of financial instruments. The same may be said of ‘estimates in industrial and commercial affairs, relating to brokerage of listed and over-the-counter (OTC) financial instruments and excluding insurance-related services’.
As for ‘retail services connected with the sale of financial products and financial investments, relating to brokerage of listed and over-the-counter (OTC) financial instruments and excluding insurance-related services’, this description is somewhat more comprehensible. However, as a matter language the words ‘connected with the sale of…’ render the description wider than simply the retail of financial products and investments. Similarly, ‘in relation to’ does not limit the services to being brokerage of listed and over-the-counter (OTC) financial instruments (which would not be an allowable amendment in class 35 in any event). It is reasonable to suppose that the Holder’s services under this description notionally includes the provision of electronic retail trading platforms upon which brokers trade non-insurance financial products and financial investments (being retail services connected with the sale of financial products and financial investments). I do not require evidence to make such a supposition, the language used to describe the services incorporates the possibility. Comparing this to the provision of electronic business commerce solutions limited to insurance (as claimed in the First and Third Cited Marks), it is reasonable to consider them ‘of the same description’ even bearing in mind the different fields to which they are confined by their restrictions. Their inherent nature remains the same – that of providing an electronic platform or solution by which parties may trade their services.
For these reasons I consider the ground for rejection applies to the class 35 services and the proposed amendment does not overcome it.
I turn then to the Holder’s services in class 36. All of them are proposed to be amended by the qualification ‘all of the foregoing relating to brokerage of listed and over-the-counter (OTC) financial instruments and excluding insurance-related services’. As already mentioned, the Holder indicates that this qualification is sufficient to differentiate between the parties’ services. However, as stated previously the Holder’s services are not merely brokerage of listed and over-the-counter financial instruments and EA’s services are not merely insurance. Both parties’ specifications of services are wider than that.
Given the length and complexity of the Holder’s specification in class 36, and wishing to avoid fine distinctions between services, I have dealt with the services using three broad approaches. The first is identifying services whose inherent nature is not defined by the financial sector to which they are applied (judged by the language used to describe them), even though they are limited here to brokerage of listed and over-the-counter financial instruments. Otherwise it is identifying services whose inherent nature is relevant to both the insurance sector and brokerage of financial instruments. The second approach is to identify services which incorporate the first group – these are generally broad, general descriptions. The services identified by both these approaches are those I consider the ground for rejection applies to. Even though such services are alleged to be ‘ring fenced’ by each party, their inherent nature is that they may be provided across financial sectors, and so the limitations to each parties’ specifications are not sufficient to prevent confusion. The third approach is identifying services that essentially amount to brokerage of listed and over-the-counter financial instruments, which without evidence to the contrary I am not satisfied are of the same description as EA’s services. Otherwise, this approach identifies services that may be broader than brokerage of financial instruments but for which I would need evidence demonstrating the extent to which they converge with EA’s services to be satisfied the ground for rejection applies. I have also assessed all of the services as though qualified as proposed by the Holder.
The services are accordingly identified below.
First approach:
·Financial transactions; financial trade execution, confirmation, clearing and settlement services; Internet/web based financial trading facilities and platforms; receipt, transmission and execution of financial orders on behalf of others; projections, estimates and analyses [sic] of risks related to financial markets and financial investments; foreign exchange transactions; clearing operation (exchange); electronic transfer of funds; all of the foregoing relating to brokerage of listed and over-the-counter (OTC) financial instruments and excluding insurance-related services.
Second approach:
·Financial affairs; monetary affairs; financial information; financial advisory services; financial consultations and expertise; all of the foregoing relating to brokerage of listed and over-the-counter (OTC) financial instruments and excluding insurance-related services.
Third approach:
·Financial intermediation services; securities brokerage; brokerage services on the financial markets; interdealer brokering of derivatives, securities, equities, commodities, credit, interest rates foreign exchange and hybrid financial securities; transacting and trading of financial instruments; financial analysis, management and consulting; providing information relating to financial instruments, brokerage, trading investments, companies, commodities, and financial markets through a global computer network; financial investment services; constitution and capital investment services; financing services; maintaining and managing portfolio accounts consisting of negotiable securities for the benefit of others; financial investment management; management of financial portfolios; management of investment funds; management of financial products; management of UCITS (Undertakings for Collective Investment in Transferable Securities); management of AIFs (Alternative Investment Funds); management of SICAV (Investment Companies with Variable Capital); fund management (mutual funds); management of FCPR (Fonds Commun de Placement à Risque); management of FCPI (Innovation Placement Fund); management of FIP (Proximity Investment Fund); management of SPF (Specialized Professional Investment Fund); management of financing funds for the social and solidarity economy; selection of financial products from UCITS (Undertakings for Collective Investment in Transferable Securities); financial asset allocation services; financial market analysis and reporting thereon; financial research; financial forecasting; financial estimates; financial audits; financial engineering; financial investment advice, strategic allocation of business liabilities and / or assets; structuring of financial portfolios; structuring advice for financial portfolios; tax information; tax estimates; consultation and expertise in tax matters; Administrative and accounting management of financial portfolios, financial products; information relating to the financial markets; maintaining and updating a database of information relating to financial brokerage; management of computer files relating to the list of brokers and banking intermediaries, financial intermediaries, credit intermediaries, credit brokers and financial asset managers; all of the foregoing relating to brokerage of listed and over-the-counter (OTC) financial instruments and excluding insurance-related services.
I have not included either ‘real estate affairs’ or ‘FEIL management’ in the above. The proposed amendment would render ‘real estate affairs’ nonsensical according to its ordinary meaning. There is also a degree of intersection between those involved in real estate and those who provide insurance, such as the entities Elders or Ray White. Nor does it appear to be a service of primary interest to the Holder. For that reason I have not proposed that it remain in the Holder’s services, either qualified or unqualified by the proposed amendment. ‘FEIL management’ is undefined and my own research does not reveal any obviously applicable meanings. It is therefore likewise omitted from the above.
Resolution of the IRDA
I am satisfied that the ground for rejection applies to some, but not all, of the Holder’s services. Specifically, the ground for rejection applies to those services identified above under the ‘First Approach’ and ‘Second Approach’ headings. It does not apply to the services identified under the ‘Third Approach’ heading, if they are qualified as proposed by the Holder.
In such circumstances, the Registrar has the discretion to offer an amendment to the Applicant to amend its services by removing those for which the ground for rejection applies.[22] I consider it appropriate to exercise that discretion here.
[22] The Registrar also has the discretion to refuse an application in its entirety, per Apple Inc. v Registrar of Trade Marks [2014] FCA 1304, [232] (Yates J). Circumstances that may lead to such refusal include where an amendment would result in fine distinctions between goods or services such that confusion would be likely; or where a specification is broad and little or no effort has been made by a party to indicate an amendment it believes will remove the likelihood of confusion.
On 1 July 2025 I advised the Holder that I intended to reject the IRDA unless the Holder amended its services as below by removing the words struck out and adding the words underlined.
Class 35:Retail services connected with the sale of financial products and financial investments; economic, accounting, statistical and commercial information; conducting audits and statistics in the economic field; business consulting relating to management, business organization; business management; research of sponsors of industrial and commercial projects; investigations and research for business; professional business consultancy; business expertise; estimates in industrial and commercial affairs; business information; research, studies, analyzes and audits of companies (commercial analyzes); business and business planning, control, analysis, management, inspection, monitoring, information and assessment; account verification; information and advice on industrial and commercial risks; searching for information in computer files (for others); systematization of information into computer databases.Class 36:
Financial affairs; monetary affairs; real estate affairs;financial intermediation services; securities brokerage; brokerage services on the financial markets; interdealer brokering of derivatives, securities, equities, commodities, credit, interest rates foreign exchange and hybrid financial securities;financial transactions;transacting and trading of financial instruments; financial analysis, management and consulting;financial trade execution, confirmation, clearing and settlement services; Internet/web based financial trading facilities and platforms;providing information relating to financial instruments, brokerage, trading investments, companies, commodities, and financial markets through a global computer network; financial investment services; constitution and capital investment services; financing services;receipt, transmission and execution of financial orders on behalf of others;maintaining and managing portfolio accounts consisting of negotiable securities for the benefit of others; financial investment management; management of financial portfolios; management of investment funds; management of financial products; management of UCITS (Undertakings for Collective Investment in Transferable Securities); management of AIFs (Alternative Investment Funds); management of SICAV (Investment Companies with Variable Capital); fund management (mutual funds); management of FCPR (Fonds Commun de Placement à Risque); management of FCPI (Innovation Placement Fund); management of FIP (Proximity Investment Fund); management of SPF (Specialized Professional Investment Fund);FEIL management;management of financing funds for the social and solidarity economy; selection of financial products from UCITS (Undertakings for Collective Investment in Transferable Securities); financial asset allocation services; financial market analysis and reporting thereon; financial research; financial forecasting;projections, estimates and analyzes of risks related to financial markets and financial investments; financial information;financial estimates; financial audits; financial engineering;financial advisory services; financial consultations and expertise;financial investment advice, strategic allocation of business liabilities and / or assets; structuring of financial portfolios; structuring advice for financial portfolios; tax information; tax estimates; consultation and expertise in tax matters;foreign exchange transactions;clearing operation (exchange); electronic transfer of funds;Administrative and accounting management of financial portfolios, financial products; information relating to the financial markets;conducting audits and statistics in the banking and financial fields;maintaining and updating a database of information relating to financial brokerage; management of computer files relating to the list of brokers and banking intermediaries, financial intermediaries, credit intermediaries, credit brokers and financial asset managers.; all of the foregoing relating to brokerage of listed and over-the-counter (OTC) financial instruments and excluding insurance-related services.
The Holder requested its services be amended in accordance with the above on 11 July 2025. The amendment has now been made.
Decision
I am not satisfied that there is a ground for rejection under s 44(2) in relation to the amended services of the Trade Mark.
Regulation 174A.24 provides that unless I am satisfied there are grounds for rejecting the IRDA, I must accept it.
Accordingly, I accept the IRDA number 2017362 for potential extension of protection and it will be advertised for opposition purposes.
Nicole Worth
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
18 July 2025
Annexure A
SUNRISE
Registration no. 871132
Class 35: Compilation of business directories; business services, including business management, administration and information services, business services provided online from a computer database or the Internet; compilation and provision of business and commercial information; appraisal, consultancy, information, management, research and organisation services for advertising, business, marketing and promotion; market research and study services; statistical services; compiling, arranging and publishing directories; provision of electronic commerce business solutions; all of the foregoing limited to insurance services
Class 36: Financial information services relating to insurance; accepting and authorising financial transactions relating to insurance; payment services using electronic and non-electronic means relating to insurance; on-line payment services relating to insurance
Class 41: Publication of information in electronic form on the subject of insurance, finance or telecommunications; arranging and conducting colloquiums, conferences, congress, seminars and symposiums; none of the foregoing being the production of radio or television programmes or television broadcasting services including news programmes, live shows and interactive television programmes; all of the foregoing limited to insurance services
Class 42: Research services; computer programming services; design and implementation of IT solutions; network outsourcing, being technical management and operation of networks for others; computer consultancy; all of the foregoing limited to insurance services
SUNRISE
Registration no. 944162
Class 36: Insurance
Registration no. 974048
Class 35: Compilation of business directories; business services, including business management, administration and information services, business services provided online from a computer database or the Internet; compilation and provision of business and commercial information; appraisal, consultancy, information, management, research and organisation services for advertising, business, marketing and promotion; market research and study services; statistical services; compiling, arranging and publishing directories; provision of electronic commerce business solutions; all of the foregoing limited to insurance services
Class 36: Financial information services relating to insurance; accepting and authorising financial transactions relating to insurance; payment services using electronic and non-electronic means relating to insurance; on-line payment services relating to insurance
Class 41: Publication of information in electronic form on the subject of insurance, finance or telecommunications; arranging and conducting colloquiums, conferences, congress, seminars and symposiums; none of the foregoing being the production of radio and television programmes or television broadcasting services including news programmes, live shows and interactive television programmes; all of the foregoing limited to insurance services
Class 42: Research services; computer programming services; design and implementation of IT solutions; network outsourcing, being technical management and operation of networks for others; computer consultancy; all of the foregoing limited to insurance services
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