University of Sydney v Cameron Jenkinson and Bim Ricketson

This decision concerns an opposition filed by the University of Sydney against the trade mark application 876986, filed by Cameron Jenkinson and Bim Ricketson, for services in class 35, specifically advertising, integrated marketing, and business management. The opposition was heard by a delegate of the Registrar of Trade Marks.

The delegate was required to determine several grounds of opposition, including those based on sections 39, 41, 42, 43, 44, 58, 59, 60, 61, and 62 of the Trade Marks Act 1995. The primary grounds considered were section 44, concerning substantial identity or deceptive similarity to prior registered or pending trade marks for similar services, and section 60, relating to the likelihood of deception or confusion due to a prior trade mark with a reputation in Australia.

The delegate dismissed grounds under sections 39, 41, 42, 43, 58, 59, 61, and 62 due to a lack of evidence or submissions. The opposition under section 44 was successful. The delegate found that the subject trade mark was substantially identical to the University of Sydney's registered trade mark 817230, which had an earlier priority date. The delegate applied the test of "total impression of resemblance" and found that despite minor differences in appearance, the essential features of both marks, a letter G within concentric circles resembling a target, were the same. Furthermore, the delegate found that the advertising services offered under the subject application were the same or similar to the services covered by registration 817230, specifically in relation to promoting awareness of glycaemic levels in foods. The opposition under section 60 was unsuccessful as the delegate was not satisfied that either of the cited trade marks had acquired a reputation in Australia by the priority date of the subject application.

Consequently, the delegate refused to register trade mark application 876986 based on the successful ground of opposition under section 44.