Opposition to Trade Mark Registration: Are ‘ACCELERA’ Marks Deceptively Similar, Pre-empted by Earlier Use, or Contrary to Law under the Trade Marks Act 1995 (Cth)?

Introduction
Based on the authentic Australian judicial case Turbo Systems Switzerland Ltd v Cummins Inc. (Trade Mark Applications 2258617, 2327545, 2327538), this article disassembles the Court’s judgment process regarding evidence and law. It transforms complex judicial reasoning into clear, understandable key point analyses, helping readers identify the core of the dispute, understand the judgment logic, make more rational litigation choices, and providing case resources for practical research to readers of all backgrounds.

Chapter 1: Case Overview and Core Disputes

Basic Information:

Court of Hearing: Delegate of the Registrar of Trade Marks
Presiding Judge: Nicholas Smith, Delegate of the Registrar of Trade Marks
Cause of Action: Opposition to trade mark registration under the Trade Marks Act 1995 (Cth), specifically ss 42(b), 44, 58, and 60.
Judgment Date: 3 June 2025
Core Keywords:
Keyword 1: Authentic Judgment Case
Keyword 2: Trade Mark Opposition
Keyword 3: Deceptive Similarity
Keyword 4: Reputation
Keyword 5: Ownership
Keyword 6: Contrary to Law

Background:

This decision concerns an opposition brought by Turbo Systems Switzerland Ltd (“the Opponent”) to the registration of three trade marks (collectively, “the Trade Marks”) which are the subjects of applications 2258617 (ACCELERA), 2327545 (ACCELERA Figurative), and 2327538 (ACCELERA Figurative), all in classes 7, 11, 37, 39, and 40, in the name of Cummins Inc. (“the Applicant”). The Opponent’s corporate history traces back to 1924, and it was previously part of the ABB Group before spinning off in 2022 to focus on turbocharging technology. Following its spin-off, the Opponent adopted the ACCELLERON mark as its primary trademark globally and commenced its use in Australia from April 2022, investing in its promotion. The Opponent claims its marks have acquired a significant reputation and that the Applicant’s marks should not be registered. The Applicant did not file any evidence in support of its applications.

Core Disputes and Claims:

The legal focus of the dispute is whether the Applicant’s trade mark applications should be refused registration due to the Opponent’s grounds of opposition. The Opponent claims that the Applicant’s Trade Marks:
* Are substantially identical with or deceptively similar to the Opponent’s earlier trade marks (under s 44 of the Trade Marks Act 1995 (Cth) or equivalent regulations).
* Should not be owned by the Applicant because the Opponent has an earlier claim to ownership based on prior use (under s 58 of the Trade Marks Act 1995 (Cth)).
* Would, by their use, be contrary to law (specifically under s 42(b) of the Trade Marks Act 1995 (Cth), referring to misleading or deceptive conduct under the Australian Consumer Law or the tort of passing off).

Chapter 2: Origin of the Case

The Opponent, Turbo Systems Switzerland Ltd, a Swiss company, has a long-standing history in turbocharging technology, with its origins dating back to 1924 as part of the ABB Group. This extensive heritage established a foundation of expertise and global presence in the industrial sector. In February 2022, a pivotal moment arrived when the Opponent announced its spin-off from the ABB Group, signifying a strategic repositioning of its business operations. Concurrently, the new brand identity, ACCELLERON, was launched and adopted as its primary trademark. This transition was accompanied by immediate steps to secure its brand, as the Opponent applied to register its ACCELLERON word mark and figurative marks internationally and in Australia. The Australian launch of the ACCELLERON mark commenced on 11 April 2022, marking the beginning of its promotional activities, including sponsorships, industry conferences, and digital marketing.

The conflict emerged when the Applicant, Cummins Inc., filed three trade mark applications for ACCELERA and its figurative versions. These applications covered goods and services highly relevant to the Opponent’s business, such as electric power generators, fuel cells, hydrogen generation systems, and related installation, maintenance, and manufacturing services. Given the phonetic and visual similarities between the marks and the overlap in the scope of goods and services, the Opponent perceived a direct threat to its newly established and actively promoted brand. The “decisive moment” that led to this litigation was the advertisement of the Applicant’s trade mark applications for acceptance, which prompted the Opponent to file Notices of Intention to Oppose their registration, asserting its prior rights and reputation. The Applicant’s subsequent filing of Notices of Intention to Defend solidified the dispute, setting the stage for a formal opposition proceeding before the Delegate of the Registrar of Trade Marks.

Chapter 3: Key Evidence and Core Disputes

Applicant’s Main Evidence and Arguments:

The Applicant, Cummins Inc., did not file any evidence in this opposition proceeding. Consequently, the Delegate had no information before them regarding the Applicant’s use of the Trade Marks, any acquired reputation, or other circumstances that might support their registration, beyond what was available on the public register. The Applicant’s arguments were presented solely through written submissions.

Respondent’s Main Evidence and Arguments:

The Opponent’s main evidence was the joint declaration of Patrizia Aberle (Head of Group Intellectual Property at the Opponent) and Dirk Bergmann (Chief Technology Officer of the Opponent), referred to as the “Aberle-Bergmann declaration.”
* Opponent’s corporate history and spin-off: The declaration detailed the Opponent’s origins with the ABB Group, dating back to 1924, and its spin-off in February 2022.
* Launch of ACCELLERON brand: It explained the coining of the ACCELLERON mark in 2021 by the Opponent’s brand agency and its adoption as the primary trademark globally and in Australia from 11 April 2022.
* Business activities: The Opponent continues to supply turbocharging technologies and solutions for engines, including the design, manufacture, installation, repair, and servicing of turbochargers, supported software products, engineering, research services, and provision of databases and computer networks.
* Financial and market presence: In 2022, the Opponent reported revenue of USD 781 million, an installed base of approximately 180,000 turbochargers, and a global network of over 100 service stations.
* Promotional activities: Extensive promotion of the ACCELLERON marks through sponsorships, industry conferences, social media, and its website, resulting in considerable media attention and a strong reputation for its goods and services.
* Claims of confusion: The Opponent considers that the use of the Applicant’s Trade Marks is likely to cause a real risk of confusion with its own marks.

The annexures to the Aberle-Bergmann declaration included evidence of the spin-off, the new brand launch, and various examples of the Opponent’s Trade Marks in different formats and with various taglines. However, the Delegate noted that evidence of sales and marketing spend was global, with little direct evidence of marketing specifically targeted at the Australian market. The only Australia-specific use evidence prior to the relevant dates for the remaining Trade Marks was a single Turbocharger service report, lacking any Australia-specific quotes or purchase orders under the ACCELLERON mark.

Core Dispute Points:

The core dispute points were framed by the Opponent’s Statements of Grounds and Particulars (SGP), raising grounds of opposition under:
1. Section 44: That the Applicant’s Trade Marks are substantially identical with or deceptively similar to the Opponent’s earlier trade marks for similar goods/services.
2. Section 58: That the Applicant is not the true owner of the Trade Marks due to the Opponent’s prior use.
3. Section 60: That the Opponent’s trade marks had acquired a reputation in Australia, and the Applicant’s use would be likely to deceive or cause confusion.
4. Section 42(b): That the use of the Applicant’s Trade Marks would be contrary to law (specifically referring to ss 18 and 29 of the Australian Consumer Law and the tort of passing off).

Chapter 4: Statements in Affidavits

In this opposition, the legal statements were primarily constructed through the Opponent’s Aberle-Bergmann declaration and the parties’ written submissions. The Applicant chose not to file any affidavits or declarations. This strategic decision by the Applicant significantly impacted the evidentiary landscape, as the Delegate had no sworn testimony or documentary evidence from the Applicant to consider regarding its own use, intention to use, or any defence against the Opponent’s claims beyond the arguments made in its written submissions.

The Opponent’s Aberle-Bergmann declaration served as the primary factual matrix, detailing the Opponent’s corporate history, the strategic launch of the ACCELLERON brand, and its subsequent promotion and use in various markets, including Australia. The declaration meticulously presented events, dates, and the scope of the Opponent’s business activities, supported by extensive annexures.

A crucial aspect of affidavit analysis involves comparing different expressions of the same fact to discern truth. In this case, such a direct comparison of conflicting sworn evidence was not possible due to the Applicant’s lack of evidence. Instead, the Delegate’s task involved scrutinising the veracity and probative value of the Opponent’s sole evidentiary submission. While the declaration outlined global reach and significant investment, the Delegate specifically noted the limited Australia-specific evidence of marketing spend or sales figures directly correlating to the Opponent’s claimed reputation in the Australian market. This absence of granular, local data meant that certain factual assertions, while true globally, might not meet the specific legal thresholds for establishing Australian market presence or reputation for the purposes of the Trade Marks Act 1995 (Cth).

The strategic intent behind the Delegate’s procedural directions regarding submissions was to ensure a fair opportunity for both parties to present their legal arguments and address the evidence on record. Despite the absence of a live hearing or cross-examination of witnesses, the written submissions allowed the parties to articulate their positions based on the established facts (or lack thereof from the Applicant’s side) and the relevant legal principles. The Applicant’s decision not to file evidence was a critical procedural direction, implicitly placing greater weight on the statutory tests and the strength (or weakness) of the Opponent’s positive case. This choice by the Applicant meant that the Opponent’s claims, while uncontested by counter-evidence, still had to independently satisfy the legal burden and standard of proof.

Chapter 5: Court Orders

Following the advertisement of the Applicant’s trade mark applications for acceptance, the Opponent filed Notices of Intention to Oppose, followed by Statements of Grounds and Particulars. The Applicant then filed Notices of Intention to Defend.

Once the period for filing evidence closed, the parties were given the opportunity to request a hearing. Both the Opponent and the Applicant requested a hearing by way of written submissions and paid the appropriate fees.

The matter was set down for a hearing. In line with usual practice, a schedule for the provision of written summaries of submissions was issued to the parties. The Opponent filed its written submissions on 4 February 2025, and the Applicant filed its written submissions on 11 February 2025.

Chapter 6: Hearing Scene: Ultimate Showdown of Evidence and Logic

In this opposition proceeding, the “hearing scene” primarily unfolded through the detailed analysis of written submissions and the evidentiary record, given that both parties opted for a hearing by submissions. The Delegate meticulously reviewed the arguments presented by both the Opponent and the Applicant, weighing the absence of evidence from the Applicant against the sufficiency and specific applicability of the Opponent’s declaration.

The core of the confrontation lay in how the Opponent’s Aberle-Bergmann declaration, rich with global corporate history and brand launch details, translated into meeting the specific legal tests under the Trade Marks Act 1995 (Cth) for the Australian jurisdiction. The Delegate had to consider whether the Opponent’s general narrative of strong global presence and promotional activities could, in the absence of targeted Australian market data, establish a “reputation in Australia” or “earlier use in Australia” with the requisite “real, tangible danger of deception or confusion.”

A critical point of judicial reasoning revolved around the standard of proof required and the nature of the market. The Delegate noted that for sophisticated industrial products, the purchasing market typically comprises “specialist procurement experts” who exercise considerable care. This context meant that a higher degree of similarity between marks would be necessary to establish a likelihood of confusion.

The Delegate carefully considered the principles for assessing deceptive similarity, drawing upon authoritative High Court guidance.
In determining deceptive similarity, the Delegate was guided by the principles from Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd:
“On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].”

This means the focus shifts from a direct, side-by-side comparison to a conceptual one, considering imperfect recollection. The Delegate applied this by examining the phonetic and visual elements of the marks: “ACCELLERON” (Opponent) and “ACCELERA” (Applicant). While acknowledging the common “ACCEL” prefix and phonetic similarities, the Delegate highlighted the differences in the ending syllables and, for the figurative marks, distinct visual devices.

Ultimately, the Delegate’s decision was heavily influenced by the legal requirement for Australian-specific evidence for certain grounds of opposition and the nature of the relevant market. The absence of specific Australian sales or marketing data for the Opponent’s mark, coupled with the sophisticated nature of the target consumers, proved determinative.

Chapter 7: Final Judgment of the Court

The Delegate of the Registrar of Trade Marks found that the Opponent, Turbo Systems Switzerland Ltd, failed to establish any of the grounds of opposition it nominated in its Statements of Grounds and Particulars.

Therefore, trade mark applications numbers 2258617 (ACCELERA), 2327545 (ACCELERA Figurative), and 2327538 (ACCELERA Figurative) may proceed to registration not less than one month from the date of this decision.

If the Registrar is served with a notice of appeal before that time, registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.

The Applicant had sought an award of costs in its favour. Adhering to the general rule that costs follow the event, the Delegate awarded costs against the Opponent. For trade mark application 2258617, costs were awarded under s 221 of the Trade Marks Act 1995 (Cth) in the relevant amounts under Schedule 8 of the Regulations. For trade mark applications 2327545 and 2327538, costs were awarded against the Opponent to be taxed in the same manner as indicated in Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd.

Chapter 8: In-depth Analysis of the Judgment: How Law and Evidence Lay the Foundation for Victory

Special Analysis:

This case highlights the stringent evidentiary requirements in Australian trade mark opposition proceedings, particularly concerning claims of reputation and prior use in a specific jurisdiction. The Delegate’s detailed scrutiny of the geographic scope and specificity of the Opponent’s evidence serves as a crucial reminder that global market success does not automatically translate into registrable rights in Australia without demonstrably local activity. The judgment reinforces the principle that while a mark’s inherent distinctiveness is assessed in isolation, the likelihood of confusion, especially in sophisticated markets, demands more than mere resemblance—it requires a “real, tangible danger” to be established by concrete, local evidence. This emphasis on local impact, even for internationally renowned brands, is a noteworthy jurisprudential point for trade mark strategists.

Judgment Points:

1. Sophisticated Market Impact: The Delegate explicitly acknowledged the “highly sophisticated” nature of the market for the goods and services, comprising “specialist procurement experts.” This heightened sophistication means a “greater degree of similarity is usually required for a finding that marks are deceptively similar,” reflecting judicial recognition of discerning buyers.
2. Global vs. Local Evidence: The Delegate underscored the insufficiency of global sales and marketing data alone to establish Australian reputation. The lack of direct marketing spend, sales figures, or evidence of general esteem specifically targeted at the Australian market for the Opponent’s marks was a critical failing.
3. Limited Australia-Specific Use: For the marks with later priority dates, the Opponent’s 8 months of Australian use, supported by only a single “Turbocharger service report” and no Australia-specific quotes or purchase orders, was deemed “simply an insufficient amount of time” to establish the requisite reputation under s 60.

Legal Basis:

The Delegate’s decision was primarily founded upon the interpretation and application of:
* Section 44 of the Trade Marks Act 1995 (Cth): Concerns trade marks that are substantially identical or deceptively similar to an earlier mark for similar goods or services. This involves assessing visual, phonetic, and conceptual similarities, and whether there is a likelihood to deceive or cause confusion. The Delegate relied on principles from Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd.
* Section 10 of the Trade Marks Act 1995 (Cth): Defines “deceptively similar” as a resemblance so near that it is likely to deceive or cause confusion.
* Section 58 of the Trade Marks Act 1995 (Cth): Addresses the ground that the applicant is not the owner of the trade mark, requiring the opponent to show an earlier claim to ownership based on prior use in Australia.
* Section 60 of the Trade Marks Act 1995 (Cth): Pertains to a trade mark being similar to another mark that has acquired a reputation in Australia, where its use would be likely to deceive or cause confusion. The Delegate referred to McCormick & Co Inc v McCormick and Le Cordon Bleu BV v Cordon Bleu International Ltee for the concept of reputation.
* Section 42(b) of the Trade Marks Act 1995 (Cth): Relates to a trade mark whose use would be contrary to law, often invoked in relation to sections 18 and 29 of the Australian Consumer Law (misleading or deceptive conduct) or the tort of passing off.

Evidence Chain:

The crucial evidence chain was primarily one-sided due to the Applicant’s non-filing of evidence. The Opponent presented:
* Aberle-Bergmann Declaration: Detailed corporate history, global brand launch, business activities, and promotional efforts.
* Annexures: Documentation of the spin-off, brand launch, and examples of mark usage.
* Lack of Australian-specific sales/marketing data: A critical gap identified by the Delegate, which weakened the Opponent’s claims regarding Australian reputation and the likelihood of confusion in this market.

Judicial Original Quotation:

On deceptive similarity, the Delegate cited the High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, summarising the relevant principles, which included:
“the resemblance between the two marks must be the cause of the likely deception or confusion; in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound; the marks should not be compared side by side; the effect of spoken description must be considered; the focus is upon the effect or impression produced on the mind of potential customers of the goods (or services) in relation to which the two marks are used and in the case of the registered mark, allowing for ‘imperfect recollection’; the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the marks prior to filing, or any reputation associated with the registered mark; ‘deceived’ implies the creation of an incorrect belief or mental impression; ‘causing confusion’ may merely involve ‘perplexing or mixing up the minds’ of potential customers; it is not necessary to establish actual probability of deception or confusion, but a mere possibility of confusion is not enough. There must a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be ‘a real likelihood that some people will wonder or be left in doubt about whether the two sets of products… come from the same source’; evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant; and any intention to deceive or cause confusion may be a relevant consideration but is not required.”

The Delegate then applied these principles to the marks, noting:
“I note that the marks share a very close prefix, being the letters ‘ACCEL’ (and also ACCELER and ACCELLER) … In addition they have phonetic similarities, differing only by the ending syllable. However they are otherwise visually and conceptually different being invented words… Finally, as noted in the Applicant’s Submissions, the shared prefix is recognisable as a reference to the word ‘Accelerate’ and hence is commonly used across the industries in which the Applicant and Opponent operate… I am not satisfied that the shared prefix is likely to result in a real, tangible danger of deception or confusion given the nature of the goods and services and sophisticated entities purchasing the common goods or services.”

Analysis of the Losing Party’s Failure:

The Opponent failed on all grounds for the following reasons:
* Section 44 (Substantially Identical / Deceptively Similar): The Delegate found that the marks were not “substantially identical” due to clear differences in their overall impression. While acknowledging phonetic similarities and a shared prefix in “ACCEL,” the Delegate determined that the differing suffixes and visual elements (for figurative marks) distinguished them sufficiently. Critically, for “deceptive similarity,” despite the shared prefix, the sophisticated nature of the target consumers and the commonality of the “ACCEL” prefix in the engineering sector meant there was no “real, tangible danger of deception or confusion.”
* Section 58 (Applicant not owner): This ground required establishing that the Applicant’s marks were identical or substantially identical to the Opponent’s mark, that the goods/services were the “same kind of thing,” and that the Opponent had an earlier claim to ownership based on prior use. Since the Delegate had already found that the marks were not substantially identical (the “first factor”), the s 58 ground necessarily failed without needing to assess the other factors.
* Section 60 (Reputation): The Opponent failed to establish a sufficient “reputation in Australia” for its ACCELLERON mark as at the relevant dates. For Trade Mark 2258617, the Opponent had “limited use globally” and had not used the mark in Australia. For the later Trade Marks, the Opponent’s 8 months of Australian use, supported by minimal Australia-specific evidence (a single turbocharger service report), was deemed “simply an insufficient amount of time” to establish the required reputation, particularly given the absence of any sales, marketing expenditure, or evidence of general esteem in Australia. Without establishing reputation, the second limb of s 60 (likelihood of deception/confusion due to reputation) could not be met.
* Section 42(b) (Contrary to Law): The Opponent particularised this ground under ss 18 and 29 of the Australian Consumer Law (ACL) and the tort of passing off. Since the Delegate had concluded that there was no “real, tangible danger of deception or confusion” for the purposes of s 44 (deceptive similarity) and s 60 (reputation), it was determined that the higher standard required for misleading or deceptive conduct under s 18 of the ACL (and consequently s 29 of the ACL and passing off) would also not be met. Therefore, the use of the Trade Marks would not be “contrary to law.”

Implications

1. Local Evidence is Paramount: Even globally recognised brands must demonstrate specific, tangible local market presence and reputation to succeed in Australian trade mark oppositions. Global success does not automatically translate to local rights.
2. Know Your Market: The sophistication of the target consumer group plays a vital role. In highly specialised industries, buyers are assumed to be more discerning, requiring a higher degree of similarity between marks to prove a likelihood of confusion.
3. Prefixes Are Not Always Unique: A shared prefix, especially one derived from a common word in the industry (like “ACCEL” from “accelerate”), may not be enough to establish deceptive similarity if other elements of the marks and the market context differentiate them.
4. No Evidence, No Defence: The Applicant’s decision not to file any evidence in support of its applications meant it relied solely on the weaknesses of the Opponent’s case. While this can sometimes be a viable strategy, it carries significant risk as it leaves the court with no factual basis to consider any counter-arguments or exceptional circumstances.
5. Interconnected Grounds: The failure of one ground (e.g., establishing deceptive similarity under s 44) can directly impact the viability of other grounds (e.g., ownership under s 58 or being contrary to law under s 42(b) linked to the ACL). A holistic assessment of a brand’s strength and market presence is crucial when mounting an opposition.

Q&A Session

Q1: What does “deceptively similar” mean in trade mark law, and why wasn’t it established in this case despite the similar names?
A1: “Deceptively similar” means a trade mark so closely resembles another that it is likely to deceive or cause confusion among consumers. In this case, despite sharing the “ACCEL” prefix, the Delegate found that the different suffixes (“-ERA” vs. “-ERON”) and, for figurative marks, distinct visual elements, along with the highly sophisticated nature of the industrial market, meant there was no “real, tangible danger” of confusion. Buyers in this market, being specialist procurement experts, are expected to exercise greater care. Also, the “ACCEL” prefix is commonly used in the engineering sector, which further reduced the likelihood of confusion.

Q2: Why was the Opponent’s extensive global reputation not sufficient to establish “reputation in Australia” under Section 60?
A2: Section 60 requires a trade mark to have acquired a reputation in Australia. While the Opponent is a significant global entity with a long history, the Delegate noted the lack of specific evidence demonstrating sales, targeted marketing expenditure, or widespread general esteem for the ACCELLERON brand within Australia prior to the relevant priority dates. An 8-month period of Australian use, supported by only a single service report, was deemed insufficient to establish a substantial reputation among Australian consumers for complex industrial products, which often require extensive local market penetration.

Q3: What was the significance of the Applicant not filing any evidence in the case?
A3: The Applicant’s decision not to file evidence meant that the Delegate had no factual basis from the Applicant’s side to weigh against the Opponent’s claims. While the onus of proof remains on the Opponent to establish its grounds, the absence of counter-evidence meant that if the Opponent had successfully presented a compelling local evidentiary case, the Applicant would have had no factual material to argue against it or to invoke discretionary provisions like honest concurrent use. It makes the Applicant’s success entirely dependent on the Opponent’s inability to meet its burden of proof.

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Appendix: Reference for Comparable Case Judgments and Practical Guidelines

1. Practical Positioning of This Case
Case Subtype: Trade Mark Opposition – Deceptive Similarity, Ownership, and Reputation for Industrial Goods/Services
Judgment Nature Definition: Final Judgment

2. Self-examination of Core Statutory Elements

Section 44 – Identical etc. trade marks

• Substantially identical with, or deceptively similar to (s 10): A trade mark is deceptively similar if it so nearly resembles another trade mark that it is likely to deceive or cause confusion. This requires a comparison of the overall impression, considering look, sound, and meaning, allowing for imperfect recollection, and focusing on the notional buyer in the relevant market.
• Registered by another person in respect of similar goods or closely related services (s 14(1)): Whether the goods/services are comparable in nature, trade channels, and user base.
• Priority date not earlier: The Applicant’s priority date for its trade mark registration must not be earlier than the priority date for the other trade mark’s registration.
• Exceptions (ss 44(3) & 44(4)):
  • Honest concurrent use (s 44(3)(a)): If there has been genuine simultaneous use of the two trade marks by different parties.
  • Other circumstances (s 44(3)(b)): If, due to other factors, it is proper to allow registration.
  • Continuous prior use (s 44(4)): If the applicant has continuously used its trade mark before the priority date of the other trade mark.

Section 58 – Applicant not owner of trade mark

• Applicant not owner: The opponent must prove that the applicant is not the true owner of the trade mark.
• Owner definition: The owner is generally the first person who uses the trade mark in Australia or files an application in Australia (with an intention to use), whichever is earlier.
• Three factors to establish:
  1. The applicant’s trade mark is identical, or substantially identical, to the trade mark(s) relied upon by the opponent.
  2. The applicant’s goods and/or services are the “same kind of thing” as the goods and/or services for which the opponent’s trade mark was used.
  3. A person other than the applicant has an earlier claim to ownership based on use of the opponent’s mark(s) prior to the earlier of (a) the application to register or (b) any actual use of the applicant’s mark(s) by the applicant.

Section 60 – Trade mark similar to trade mark that has acquired a reputation in Australia

• Reputation in Australia (s 60(a)): Another trade mark had, before the priority date for the registration of the first-mentioned trade mark, acquired a reputation in Australia among a significant or substantial number of persons in the relevant market. This considers quantum of sales, advertising, promotion, public esteem, and image.
• Likely to deceive or cause confusion (s 60(b)): Because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion. This is assessed by considering the impression on the mind of potential customers, allowing for imperfect recollection, and must demonstrate a “real, tangible danger.”

Section 42(b) – Trade mark scandalous or its use contrary to law

• Use contrary to law: The use of the trade mark would be contrary to law.
• “Would be” vs. “could be”: The opponent must establish that use “would be” (not merely “could be”) contrary to law, on the balance of probabilities.
• Relevant time: Assessed at the relevant date, but “looking forward to prospective conduct after registration.”
• Common contraventions: This often involves misleading or deceptive conduct under s 18 of the Australian Consumer Law or the tort of passing off.

3. Equitable Remedies and Alternative Claims
If dealing with [Civil / Commercial / Property / Family / Estate] matters:
* Promissory / Proprietary Estoppel:
* Did the other party make a clear and unequivocal promise or representation?
* Did you act in detrimental reliance on that promise?
* Would it be unconscionable for the other party to resile from that promise?
* Result Reference: Even without a written contract, Equity may “estop” the other party from going back on their word.
* Unjust Enrichment / Constructive Trust:
* Has the other party received a benefit (money or labour) at your expense? Is it against conscience for them to retain that benefit without payment?
* Result Reference: The Court may order the restitution of the benefit or declare that you hold a beneficial interest in the asset via a Constructive Trust.

4. Access Thresholds and Exceptional Circumstances
Regular Thresholds:
* Trade Mark Application Priority Date: Key for determining “earlier rights” under ss 44, 58, and 60. This is typically the filing date of the Australian application, or an earlier Convention Priority Date if claimed.
* Evidence Filing Deadlines: Strict timelines apply for filing evidence in trade mark opposition proceedings (e.g., Regulations 17.5 to 17.7 of the Trade Marks Regulations 1995). Failure to file evidence may result in the party not being able to rely on it.

Exceptional Channels (Crucial):
* Section 44(3) & (4) Exceptions: Even if a mark is found to be substantially identical/deceptively similar, registration may still be permitted due to honest concurrent use, other circumstances making it proper, or continuous prior use by the applicant. This requires evidence from the applicant which was absent in this case.
* Suggestion: Do not abandon a potential claim simply because you do not meet the standard time or conditions. Carefully compare your circumstances against the exceptions above, as they are often the key to successfully filing a case.

5. Guidelines for Judicial and Legal Citation
Citation Angle:
It is recommended to cite this case in legal submissions or debates involving:
* The rigorous evidentiary standards for establishing reputation or prior use in Australian trade mark opposition proceedings, particularly for global brands with limited local market data.
* The assessment of “deceptive similarity” in sophisticated markets where buyers are assumed to be highly discerning.
* The interplay between trade mark opposition grounds, especially the lack of evidence impacting multiple grounds.
Citation Method:
* As Positive Support: When your matter involves an opponent with insufficient Australia-specific evidence of reputation or use for industrial goods/services, or a sophisticated market where a low likelihood of confusion is argued, citing this authority can strengthen your argument.
* As a Distinguishing Reference: If the opposing party cites this case to argue for a high threshold for deceptive similarity, you should emphasize the distinct consumer base (e.g., general public vs. specialist procurement experts) or the unique nature of the marks (e.g., highly distinctive vs. common prefixes) of the current matter to argue that this precedent is not applicable.
Anonymisation Rule: Do not use the real names of the parties; strictly use professional procedural titles such as Applicant / Respondent or Appellant / Respondent.

Conclusion
The rigorous scrutiny applied to the Opponent’s evidence, particularly its lack of Australia-specific market data, was decisive in this case. While global reach builds a brand, local evidence builds a legal claim. Understanding these evidentiary thresholds is critical for any entity seeking to protect its intellectual property rights in Australia.

Everyone needs to understand the law and see the world through the lens of law. The in-depth analysis of this authentic judgment is intended to help everyone gradually establish a new legal mindset: True self-protection stems from the early understanding and mastery of legal rules.

Disclaimer
This article is based on the study and analysis of the public judgment of the Delegate of the Registrar of Trade Marks (Turbo Systems Switzerland Ltd v Cummins Inc.), aimed at promoting legal research and public understanding. The citation of relevant judgment content is limited to the scope of fair dealing for the purposes of legal research, comment, and information sharing.
The analysis, structural arrangement, and expression of views contained in this article are the original content of the author, and the copyright belongs to the author and this platform. This article does not constitute legal advice, nor should it be regarded as legal advice for any specific situation.

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