UmlautIT v Accenture Global Solutions Limited

The dispute before the Delegate of the Registrar of Trade Marks concerned two International Registration Designations (IRDA) filed by Umlaut AG, an opponent, against Accenture Global Solutions Limited, the holder. The opponent, UmlautIT, an Australian company, argued that the holder's applications for the trade mark "Umlaut" were made in bad faith and that its own prior use and reputation in Australia would cause confusion. The core of the disagreement stemmed from overlapping businesses in technical consultancy services, with both parties using the "Umlaut" mark.

The legal issues the Delegate was required to determine included whether the IRDAs were filed in bad faith under section 62A of the *Trade Marks Act 1995* (Cth), whether the opponent was the owner of the trade mark under section 58, and whether the holder's use of the mark would cause confusion due to the opponent's existing reputation under section 60. The Delegate noted that success on any one ground would be sufficient to determine the oppositions.

The Delegate found that the opponent had established the ground of bad faith. Applying the principle from *Callico LLC v Calico Global Pty Ltd*, the Delegate determined that bad faith infects the entire application. The evidence indicated that the holder's actions, in light of the opponent's established use and reputation in Australia, constituted bad faith. Consequently, the Delegate applied regulation 17A.34N(1)(a) and refused to extend protection of the IRDAs to Australia in their entirety.

The Delegate awarded costs against the holder in accordance with section 221 of the Act, noting that the two oppositions proceeded on virtually identical evidence and therefore no additional costs were to be accounted for the second opposition. The International Bureau was to be notified of the decision to refuse protection.