Defeating all three opposition grounds — Qoney (TM 1870584) cleared to register

Challenge

On 6 March 2018 a Fortune-500 global corporate — one of the country's most experienced trade-mark opponents — filed a Notice of Intention to Oppose registration of our client's Qoney trademark (TM 1870584), filed 7 September 2017 and accepted 29 September 2017 across four classes (9, 35, 36, 42) covering financial software, business administration, financial services and electronic monitoring of financial transactions.

The opponent set out its case in a Statement of Grounds and Particulars filed on 6 April 2018. It pursued three grounds of opposition concurrently:

• Section 42(b) — use of the trade mark would be contrary to law. • Section 44 — substantially identical or deceptively similar to an earlier mark. • Section 60 — similar to a mark that had acquired a reputation in Australia.

The section 60 ground relies on the enormous Australian consumer reputation a well-known Fortune-500 brand has built and has been used with effect against marks that adopt similar structures. For our client — an SME financial-services brand up against a Fortune-500 corporate with deep trade-marks experience — the risk profile of the opposition was significant.

Approach

We coordinated the defence for MyMoney Pty Ltd as the applicant and registered owner. A Notice of Intention to Defend was filed on 30 April 2018, well inside the statutory window.

The opponent filed evidence in support on 6 August 2018. We then prepared the evidence in answer, filed to the 15 November 2018 deadline, addressing each of the three grounds on the record rather than inviting a hearing:

• On section 44 we set out the differences in the marks, the specification, the channels of trade and the target consumer to rebut the deceptive-similarity case. • On section 60 we put in the evidence needed to draw the line between the opponent's reputation and our client's financial-services context, neutralising the reputation ground where generalist opponents usually expect to prevail. • On section 42(b) we addressed the contrary-to-law argument on its own terms and kept the record focused.

The opponent elected not to file evidence in reply (the 8 December 2018 stage closed with the opponent marked "Not relying on evidence" on the register). A hearing was not requested — the Office proceeded to decide the matter on the written record, which placed the entire weight of the decision on the evidence and submissions already filed.

Outcome

On 27 August 2020 the Trade Marks Office issued its decision. The opposition was declared unsuccessful on all three grounds. The register records the outcome as: "opposition under section 52 — grounds pursued under ss 42(b), 44 and 60 — no grounds established — trade mark to proceed to registration."

The mark proceeded to registration on 12 October 2020 with the full class 9, 35, 36 and 42 specification intact. Renewal falls due on 7 September 2027.

For the client, a four-class trademark was preserved against one of the most experienced trade-mark opponents in the country, without escalation to a contested hearing. For the practice, it evidences the ability to assemble an evidence-in-answer record strong enough to carry a full-written-record decision outright, including on the reputation ground most SMEs lose on against Fortune-500 opponents.