Riding for the Disabled Association of Australia v Pony Club Australia Incorporated [2019] ATMO 63

Australian Trade Marks Office

Delegate of Registrar/Hearing Officer: Adrian Richards

Decision Date: 23 April 2019

The matter concerns two prominent entities in the Australian equestrian industry. Pony Club Australia Incorporated (“Applicant”) applied for trade mark no. 1700826 for “ ” (“Applicant’s mark”) on the 2 July 2015 for services in Class 41 including “Horse riding instruction; Horse riding schools; Horse training” (“Applicant’s Services”). The application was accepted for publication on the 24 December 2015 and opposed by Riding for the Disabled Association of Australia (“Opponent”) on grounds under ss 42(b), 44, 58 and 60 of the Trade Marks Act 1995 (Cth)(“TMA”). The Opponent relied on a number of its earlier registered trade marks which featured a similar “horse and rider motif” in the device in class 41 for services including “instructions for the disabled”.

The issue central to the dispute was whether the Applicant’s mark is substantially identical or deceptively similar to the Opponent’s earlier mark/s.

The delegate of Registrar of Trade Marks noted in a side by side comparison of the “”Applicant’s mark and “” (“Opponent’s Device Mark”). While the horse and rider motif are quite similar, the hearing officer took the view that the words “PONY CLUB AUSTRALIA” and overall differences in shape and various other visual differences outweigh the similarities. The hearing officer found the competing marks are not substantially identical and held that s 58 did not hold ground.

In considering if “” is deceptively similar to “” (“Opponent’s Trade Mark”) Trade Mark No. 1169477 (“Priority Date: 12 April 2007 in Class 41”) and “” Trade Mark No. 1489038 ((“Priority Date: 3 May 2012 in Class 41”) and its variant thereof under s 44 (since it was earlier held that “” and “” are not substantially identical, the hearing officer further noted the horse and rider motif common to the parties’ marks are not distinctive of the equine industry and thus held to be lacking in distinctiveness. Consumers will pay a lot more attention to the selection of providers due to the high cost associated with the equestrian industry. On balance, the hearing officer took the view that the marks when compared in its entirety, fell short of being deceptively similar. The ground under s 44 was not established. 

Under the s 60 ground, the hearing officer took the view the “Opponent’s Device Mark” did not meet the requisite threshold for reputation to subsist at the relevant date. The delegate of the Registrar did find that reputation for Opponent’s Trade Mark met the requisite threshold at the relevant date but is unlikely to result in confusion under s 60(b). As a result of failing under s 60, the ground of s 42(b) being higher in requisite threshold for reputation under s 18 of the Australian Consumer Law – was dismissed as well. 

Disclaimer: The above is provided to assist in the understanding of the decision by the delegate of the Registrar. It should not be relied upon as legal advice. Any errors or omissions are the author’s. For queries related to the article, please contact the author here.