Application by Care Connect to register its “My Life, My Choice, My Way” trade mark was opposed by Lifestyle Solutions on the grounds of sections 58 and 60.
Considering section 58 first, both parties agreed that the opponent had earlier use of the trade mark MY LIFE, MY CHOICE, MY FUTURE in relation to similar (or the same) services as those covered under the applicant’s trade mark. So, the question before the Hearing Officer was whether the trade marks ‘My Life, My Choice, My Way’ and ‘MY LIFE, MY CHOICE, MY FUTURE’ are substantially identical.
The Hearing Officer came to the view that the trade marks were not substantially identical, noting; both trade marks are nevertheless comparatively weak in terms of their inherent adaptation to distinguish, the parties’ trade marks are used subordinate to the parties’ primary trade marks and, as a result of these factors, the difference between the trade marks assumes a greater significance.
Turning to section 60, the Hearing Officer found weaknesses within the evidence of reputation led by the opponent, in particular the opponent’s inability to provide a direct link between its ‘MY LIFE, MY CHOICE, MY FUTURE’ trade mark and the revenue and advertising figures provided. The other significant weakness identified by the Hearing Officer was the relatively low proportion of the relevant market that would have been exposed to the opponent’s trade mark - less than 1% - meant that it would not be possible for the reputation threshold of section 60 to be met.
The opposition failed on both the grounds pressed.
To view the Office decision, click here.
This article is an extract from Spruson & Ferguson’s monthly summary of Australian Trade Mark Office decisions. You can view the entire month’s summary here.
Principal / Solicitor / Trade Mark Attorney
Litigation Team, Trade Marks Team
Associate / Trade Mark Attorney
Trade Marks Team