Trade mark application number 2017362 (classes 35 and 36) –

This matter concerned an application for trade mark registration by Ebiexchange Australia Pty Ltd (the Holder) for services in classes 35 and 36. The application was opposed by Sunrise Brokers LLP (Sunrise) on the grounds of substantial identity or deceptive similarity to registered trade marks (the Cited Marks). The Holder sought to amend its application, including deleting "insurance" from class 36, and argued that these amendments, along with restrictions to the services of the Cited Marks, sufficiently differentiated the services. The examiner rejected the application, finding the amendments unclear and the inherent nature of some services still similar. The delegate of the Registrar, Hearing Officer Makrigiorgos, heard the matter afresh.

The primary legal issue before the delegate was whether the Holder's trade mark application should be rejected under section 44(2) of the *Trade Marks Act 1995* (Cth). This required determining if the applicant's trade mark was substantially identical with, or deceptively similar to, any of the Cited Marks, and if those Cited Marks were registered in respect of similar services or closely related goods, with an earlier priority date. The delegate also considered the onus of proof, noting that under regulation 17A.24, the Registrar must accept an application unless satisfied there are grounds for rejection, placing the onus on the Registrar to prove the grounds for rejection.

The delegate reasoned that to reject the application, it must be satisfied that a Cited Mark is in the name of a person other than the Holder, has an earlier priority date, 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 Holder's trade mark. The delegate acknowledged that the Holder had made efforts to restrict the scope of the Cited Marks' services and had amended its own application. However, the delegate was not bound by the examiner's previous findings and was required to consider the grounds for rejection anew. The delegate noted that the Holder had proposed further amendments to its services, which the examiner had found unacceptable due to lack of clarity and remaining inherent similarity. The delegate's decision would ultimately depend on whether these factors, when considered afresh, satisfied the criteria for rejection under section 44(2).