Visa International Service Association v TBM Accountants Pty Ltd

Visa International Service Association (the Opponent) opposed the registration of the trade mark application "BE WHERE YOU WANT TO BE" by TBM Accountants Pty Ltd (the Applicant). The opposition was brought under section 52 of the Trade Marks Act 1995 (Cth), with grounds including sections 42(b), 44, 59, 60, and 62A. The delegate of the Registrar of Trade Marks considered the evidence and submissions from both parties.

The primary legal issue before the delegate was whether the Opponent could establish a ground for opposition under section 60 of the Act. This required the Opponent to demonstrate that its trade mark, "EVERYWHERE YOU WANT TO BE" (the Opponent's Slogan), had acquired a reputation in Australia prior to the Applicant's filing date, and that due to this reputation, the use of the Applicant's trade mark "BE WHERE YOU WANT TO BE" would be likely to deceive or cause confusion. The delegate also considered the similarity between the marks, the services offered by both parties, and the relevant consumer base.

The delegate found that the Opponent had established a substantial reputation in its Slogan amongst a significant proportion of Australian consumers, based on extensive and longstanding use in advertising and promotion for financial and related business services. The delegate determined that the Opponent's Slogan and the Applicant's trade mark were conceptually similar, and that this similarity, combined with the overlap in services and the common consumer base, created a real likelihood that consumers would wonder if the Applicant's services were connected to the Opponent. Consequently, the ground of opposition under section 60 was successful.

The delegate ordered that the registration of the trade mark application "BE WHERE YOU WANT TO BE" be refused.