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Trademark Lawyer Sydney – Federal Circuit and Family Court – QUANTUM GROUP Appeal

Quantum Group Holding Pty Ltd v Thomson [2021] FedCFamC2G 339 (24 December 2021)

Partly successful appeal by Quantum Group from the Registrar’s decision.

The Registrar’s delegate upheld the opposition by Thompson to trademark registration of the QUANTUM GROUP Logo mark shown below filed on 10 July 2014 for various financial, insurance and real estate services in class 36.

Trademark Registration Quantum Group Logo

Neither party filed any evidence or submissions.

The opponent prevailed under s44 by relying on his prior registration for QUANTUM covering various taxation and accounting services in class 35.

In the absence of any evidence, the delegate considered the applicant’s services were similar to those covered by the opponent’s registered QUANTUM mark and that the applied for mark was substantially identical and deceptively similar to this registered mark.

Appeal

Judge Baird concluded the s44 ground was established in part and only some of the applicant’s services were similar.

Her Honour considered the applied for composite QUANTUM GROUP Logo mark is not substantially identical with the word mark QUANTUM. The graphic device element is a dominant cognitive cue and the total impression conveyed in a side by side comparison is one of dissimilarity. However, the respective marks are deceptively similar.

When considering the similarity of the respective services, her Honour noted that financial services and tax agent services are governed by different regulatory regimes, but this factor may not be of much relevance to the average consumer of either services. Nonetheless, these types of services have the same providers and trade channels.

Her Honour concluded that “Financial services and investment services, including financial management, funds management, asset management, and investment portfolio management services; advisory, consultancy and information services in relation to the aforementioned services” were similar to the taxation and accounting services covered by the opponent’s QUANTUM trade mark registration.

However, her Honour was not persuaded that the following class 36 services claimed by the applicant were similar:

money lending services, mortgage services, mortgage broking services, lease purchase financing and hire purchase financing, equity raising and funds raising services, property investment services, financing of property development; insurance services, including business insurance, property insurance, life insurance, disability insurance, superannuation services and insurance brokerage services; real estate services, including buying, selling and leasing real estate; real estate services relating to property development; real estate management including the management of resorts, hotels, motels, retail premises, shopping centres, entertainment premises, industrial premises, office premises, residential premises and/or development sites; advisory, consultancy and information services in relation to the aforementioned services.

Her Honour considered it was appropriate for QUANTUM GROUP Logo trade mark application to be amended so that it could proceed for these limited class 36 services.

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