Re: Opposition by Dr Dushyant Singh Pty Ltd to registration of trade mark application number 2305005 (class 44) - Brisbane Northside Emergency & Device (fig.) - in the name of Impact Healthcare Pty Ltd

2025 ATMO 252

Trade Marks Act 1995 (Cth) - opposition under section 52 - s 41 considered and established - evidence of use insufficient for s 41(4) - trade mark refused registration

1. This is a decision on the opposition by Dr Dushyant Singh Pty Ltd ('Opponent') under s 52 of the Trade Marks Act 1995 (Cth)[1] to registration of the trade mark detailed below filed in the name of Impact Healthcare Pty Ltd ('Applicant'):

Trade Mark: ('Trade Mark')

Specification: Class 44: Medical services; hospital services; provision of healthcare services for patients; palliative treatment; medical counselling; medical clinics; welfare services; diagnostic imaging; pathology services; pharmaceutical services; pharmacy services; hospital services; provision of medical services and hospital services; aged care services; respite care (medical and nursing services) and nursing services; treatment and prevention of disease and illness; therapeutic and rehabilitation services; surgical services; complementary medical services; genetic testing; health and wellness services; obstetrics and midwifery services; women's health services; provision of weight management and nutrition advice and services; provision of immunisation services; provision of facilities and equipment in relation to the aforementioned services; perinatal care and neonatal care; advisory, consulting and information services relating to all the foregoing

Endorsements: The colour black is not an element of the trade mark. It is merely the background of the logo mark

Evidence and/or other circumstances provided under subsection 41(4).

1. On 15 February 2024, the Application was advertised as accepted for possible registration. On 5 March 2024, the Opponent filed a Notice of Intention to Oppose. After obtaining an extension of time for filing its Statement of Grounds and Particulars ('SGP'), the Opponent filed its SGP on 7 April 2024 (subsequently rectified). The Applicant filed a Notice of Intention to Defend on 10 June 2024.
2. The parties then had an opportunity to file evidence in accordance with the Regulations. The Opponent did not file any evidence in the proceedings. The Applicant filed its evidence in answer ('EIA') on 23 October 2024. No other evidence was filed.
3. Once the time for filing evidence had ended, the parties had an opportunity to request a hearing. The Applicant requested a hearing by way of written submissions and filed those submissions, prepared by Mark Metzeling of Macpherson Kelley, on 29 October 2025. The Opponent did not ask to be heard. This matter has been allocated to me to determine as a delegate of the Registrar of Trade Marks. I do so based on the aforementioned materials.

1. In its SGP, the Opponent nominated grounds of opposition under ss 41, 42(b) and 43.
2. The onus of proof in an opposition rests upon the Opponent.[2] The standard of proof is the ordinary civil standard on the balance of probabilities.[3] The rights of the parties are to be determined at the Relevant Date being the filing date of the Application.[4]

1. The only evidence filed in the proceedings was the Applicant's EIA consisting of:
   • Redacted Confidential Statutory Declaration of Dr Philip Kay, founder and director of the Applicant, made on 1 February 2024 with Exhibits PK-01 to PK-16 ('Kay'); and
   • Declaration of Jonas Aaron Schulz, lawyer at Macpherson Kelley Pty Ltd, representatives of the Applicant, made on 21 October 2024 with Exhibits JS-01 to JS-14 ('Schulz').
2. The entirety of Kay and almost the whole of Schulz is claimed to be confidential, even publicly available information. I adopt the approach of the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim stated:

The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent's statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent's wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter's request (made within several declarations) at face value, that would be the end of these matters.

This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.[5]

1. I note that if a party considers a piece of information to be commercially sensitive, it must identify that information with specificity. If in my summary of the evidence, I have disclosed information that is sensitive, then this is an issue that has arisen by that party not specifically identifying that information as sensitive.
2. Kay declares that the Applicant was incorporated in 2001 and has operated in the medical centre/hospital industry since that time ('General Industry'). The Applicant specialises in providing advice for setting up and operating emergency medical centres in the private sector. Kay exhibits an extract from the Applicant's website dated 20 November 2023 identifying their services and an extract dated 21 October 2022 listing the emergency centres it has established.
3. Kay explains that the General Industry is highly segmented. The location of hospitals and emergency medical centres is especially important, as is ensuring that each centre's name clearly reflects its location so people can quickly identify and reach the nearest emergency centre during a crisis.
4. According to Kay, the Applicant originally traded as Holy Spirit Northside Emergency to identify the larger hospital to which it was attached. In around February 2008, the Applicant changed its name to BRISBANE NORTHSIDE EMERGENCY to distinguish itself from the hospital and for other reasons detailed in Kay.[6] At the time of adopting the name BRISBANE NORTHSIDE EMERGENCY, the Applicant sent out a notice informing the public and customers of the new name.
5. From around 2009 to 2012, the Applicant used a different logo and then adopted the Trade Mark. Extracts from the Applicant's website at www.emergencybne.com.au ('Applicant's Website'), obtained using the Wayback Machine, illustrating use of the Trade Mark from 1 November 2012 to October 2023 are provided.
6. In addition to using the Trade Mark on the Applicant's Website, the Applicant has promoted its emergency medical services in the following ways, examples of which are exhibited to Kay:
   • information flyers on various health topics;
   • advertisements and promotional materials including advertisements on billboards, in cinemas, magazines and Google AdWords; and
   • the Applicant's social media accounts; and
   • company documents such as invoices.
7. Kay also exhibits examples of patients' testimonials and notes that the Applicant's BIRSBANE NORTHSIDE EMERGENCY centre was the runner-up for the Australasian Emergency Department of the Year by the College of Emergency Nursing Australasia in 2020.
8. Finally, Kay declares that he is not aware of any instances of confusion as a result of the Applicant's continuous use of the Trade Marks since 2008.
9. Schulz explains that after the deadline for opposing the Application, two further Notices of Intention to Defend were filed by the Opponent and Health Hub Springfield Pty Ltd respectively. Schulz exhibits an extract from the website at www.healthhubspringfield.com.au ('Opponent's Website') which lists Dr Dushyant Singh as a general practitioner and 'the founder of Urgent Care Brisbane and now Health Hub Springfield...'. Schulz exhibits company details for the Applicant and the Opponent from the Australian Securities and Investments Commission.
10. According to Schulz, Dr Kay became aware of the Opponent on about 4 October 2022 by conducting a Google search for 'brisbane northside emergency' which returned an ad result for the Opponent's Website. Dr Kay sent a screenshot of this search result and other examples of use of Brisbane Northside Emergency by the Opponent to his attorneys. As a result, the Application was filed and a letter of demand sent to the Opponent. No response was received to that correspondence.

41 Trade mark not distinguishing applicant's goods or services

(1) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

Note: For goods of a person and services of a person see section 6.

(2) A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

(a) the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b) the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

(a) the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b) the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

(i) the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

(ii) the use, or intended use, of the trade mark by the applicant;

1. The opposition under s 41 will succeed if I am satisfied that the Trade Mark is not capable of distinguishing the Applicant's Services from those of other traders. To assess this, I must consider whether the Trade Mark is inherently adapted to distinguish the Applicant's Services. If the Trade Mark is sufficiently adapted to distinguish, the opposition under section 41 will not succeed. However, if I find that the Trade Mark lacks sufficient inherent adaptation, I must then consider whether the Trade Mark has any inherent adaptation at all. If the Trade Mark has no inherent adaptation, the opposition will only succeed if, as of the Relevant Date, the Trade Mark did not actually distinguish the Applicant's Services taking into account how the Applicant has used the Trade Mark.[7] If the Trade Mark has some inherent adaptation, the opposition will only succeed if, after considering the degree of inherent adaptation, the Applicant's use of the Trade Mark, and other relevant factors, I am satisfied that the Trade Mark does not and will not distinguish the Applicant's Services.[8]
2. According to Kitto J in Clark Equipment Co v Registrar of Trade Marks, the capacity of a trade mark to distinguish the owner's goods or services is assessed:

[B]y reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess- will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[9]

1. The majority of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited[10] explained that the test for inherent distinctiveness under s 41 involves a two-step process. Firstly, to ascertain what is the ordinary signification of the trade mark in Australia to persons who will purchase, consume or trade in the goods.[11] Secondly, once the ordinary signification is established, to ask whether other traders might legitimately desire to use the trade mark, or some mark nearly resembling it, for the sake of its ordinary signification in respect of the same or similar goods.[12]
2. What will inform this enquiry is how the word/s comprising the mark are understood by the target audience, being those who purchase, consume or trade in the goods and services. The key question is whether the way the elements of the Trade Mark are combined and arranged makes it possible to distinguish the Applicant's Services from the similar goods and services of others. When a trade mark consists of several elements, the enquiry is not whether each element is separately registrable.[13] Nor is it a requirement that the words comprising a trade mark be totally meaningless for a trade mark to be registrable.[14]
3. This ground of opposition is not clearly detailed in the SGP. However, although the Opponent has mainly focused on the word 'emergency' in the Trade Mark, they have adequately stated their position that they consider the Trade Mark to be descriptive, and believe that granting exclusive rights to it could unfairly restrict other providers of emergency services from using similar terms.
4. While the Trade Mark should be assessed as a whole, it is important to examine the meaning of each element to determine whether, as a whole, the mark has an ordinary signification.[15] The word Brisbane is clearly a geographic reference to the capital city of Queensland and the term 'northside' simply means the northern side of that city. Kay acknowledges the descriptive meaning of BRISBANE NORTHSIDE explaining that Brisbane is 'colloquially divided into the northside and southside (with the Brisbane river as the dividing line)' and it was important for the Trade Mark to indicate that the Applicant's emergency practice is located on the north side of the river so consumers could avoid the traffic and time taken to cross the river.
5. The definition of 'emergency' includes an 'emergency department'.[16] In my opinion, taken together, the Trade Mark clearly indicates to consumers that the Applicant provides emergency medical services in the northside of Brisbane. This meaning aligns with the Applicant's stated reasons for adopting the Trade Mark.
6. Therefore, I am satisfied that the Trade Mark's ordinary signification is a reference to the provision of emergency medical services in Brisbane's northside. Further, I consider it likely that other traders would naturally desire to make honest use of the combination of words comprising the Trade Mark (or a mark so nearly resembling the Trade Mark) to indicate that they offer emergency services in the northside of Brisbane.
7. While I consider that the ordinary signification of the Trade Mark is something that other traders would desire to use in connection with the same or similar services, I note that the Trade Mark includes a device element. This element adds a limited degree of inherent distinctiveness to the mark as a whole but in my view is not sufficient to render the combination prima facie capable of distinguishing the Applicant's Services. Hence, I am satisfied that the Trade Mark is to some extent, but not sufficiently, inherently adapted to distinguish the Applicant's Services.
8. Therefore, I must now consider the matters set out in s 41(4)(b), namely the combined effect of the extent of the inherent adaptation to distinguish, the use or intended use of the Trade Mark and any other circumstances.
9. The Applicant has given evidence that it has used BRISBANE NORTHSIDE EMERGENCY since February 2008 when the Applicant communicated its change of name. The Trade Mark has been used since 1 November 2012 as demonstrated by an extract from the Applicant's Website. The Applicant points to its use of the Trade Mark on the Applicant's Website,[17] informational flyers,[18] other promotional materials,[19] and on social media.[20]
10. It is apparent from the aforementioned examples of use that the Trade Mark has been used since November 2012. However, the Applicant's evidence does not include any quantitative data about the extent of that use. For example, whilst it is clear that the Trade Mark has featured on the Applicant's Website for over a decade, Kay does not provide any details about the traffic to that site. Whilst some of the website extracts include a handful of patient testimonials, some of these appear the same for a number of years and the overall quantity is minimal.
11. Further, there are no specifics about the number of informational flyers distributed annually nor is there evidence about how these flyers are distributed (although the Applicant's submissions mention the flyers being available to patients at the Applicant's emergency care centre). Whilst the informational flyers appear to be dated July 2023, the other promotional materials are undated. The social media extract in Kay consists of 2 YouTube video screenshots, one of which is undated and the other shows it was viewed 7 times despite being posted 10 years ago. The Applicant's Facebook account was created in July and has about 4000 followers but there is minimal consumer engagement with less than 10 'likes' per post. Some of the invoices at Exhibit PK-11 suggest that various advertising has been undertaken by the Applicant over the years with 50 promotional mugs ordered in 2009; 10,000 promotional brochures ordered in 2011 and AdWords, cinema and radio advertising undertaken in 2014. Exhibit PK-12 includes a list of 10 promotional examples from 2013 to 2017 but no more recent examples are provided. Moreover, there are no details about how long the billboard appeared at Westfield Chermside nor how many train stations featured ads in 2016.
12. The Applicant has redacted the patient numbers, marketing expenditure and revenue. Whilst the Applicant offered to provide this information upon receipt of an undertaking from myself and a legal representative of the Opponent (subject to the Opponent appointing legal representation), it is for the Applicant to furnish the information on which it intends to rely within the timeframe stipulated in the Regulations. Part 51.1.4 of the Trade Marks Office Manual of Practice and Procedure states:

When a valid notice of intention to defend is filed, notices are sent to both parties about the conduct of opposition proceedings. The Registrar is aware that the parties may be in direct competition in the marketplace and for this reason those notices contain a direction that information filed on a party and properly identified as confidential is restricted to those persons who reasonably need to see it for the purposes of the opposition. Such information must be treated as confidential and may be used by the receiving party only in relation to the conduct of, or the giving of advice in relation to, the opposition. If a party uses information in any manner other than for the conduct of that opposition it is vulnerable to legal action for breach of confidence.

It may be that one of the parties would like the additional certainty of a signed confidentiality agreement. In that case it should ensure the terms of the agreement are reasonable. If evidence has been filed 'conditionally' and the other party does not agree to the 'conditions', the evidence will not be considered when the opposition is decided. The Registrar is not permitted to take information into account if one of the parties has not been able to view it and make representations about it (reg 21.19). Nor will information in evidence be taken into account if the party providing the evidence has deleted or blacked out that information.

1. The official notice confirming the filing of the Notice of Intention to Defend in this matter stated:

The Registrar of Trade Marks directs that access to information in this opposition and properly identified as confidential is restricted to those persons who reasonably need to see it for the purposes of the opposition. Such information must be treated as confidential and may be used by the receiving party only in relation to the conduct of, or the giving of advice in relation to, the opposition. Should a party consider it necessary to seek a separate confidentiality undertaking from the other side, they should do so well within the period for filing the evidence. It is highly unlikely an extension of time for this purpose would be allowed.

1. Therefore, the Applicant was informed that any redacted information would not be considered and that any confidential material provided must be handled appropriately. If confidential information is improperly disclosed, the affected party may have legal recourse. It is up to each party to decide how to share confidential information in a manner with which they are comfortable. For instance, parties may choose to provide generalised data such as stating that advertising expenditure over the past five years exceeded $100,000 or averaged $20,000 annually. Generalised data gives the hearing officer and the other party an understanding of the use of the mark. If the Applicant chooses not to provide quantitative information to support or answer relevant grounds, it may be unable to support its claims.
2. In the present case without the redacted information, I am not able to determine the extent of use of the Trade Mark. Therefore, after considering the level of inherent adaptation of the Trade Mark, the extent of the Applicant's use, and other relevant circumstances, I am not satisfied that the Trade Mark does or will distinguish the Applicant's Services.

(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

1. A ground of opposition has been established under s 41 and therefore, I refuse to register the Trade Mark which is the subject of application 2305005. If the Registrar is served with a notice of appeal, I direct that the disposition of the Application should be in accordance with the Court's order or direction.
2. Both parties requested an award of costs. Further, the Opponent's submissions include arguments that discretionary costs should be awarded against the Opponent under regulation 21.13(1)(b) on the basis that the Opponent has engaged in bad faith conduct by using the terms BNE and Brisbane Northside Emergency and has not actively participated in the proceedings beyond filing the opposition. The alleged use of BNE and Brisbane Northside Emergency by the Opponent are not relevant to the grounds of opposition. Moreover, the Opponent has succeeded in its opposition. Costs generally follow the event and hence I award costs against the Applicant in accordance with Schedule 8 of the Regulations.

[1] Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) ('Act') or the Trade Marks Regulations 1995 (Cth) ('Regulations'), respectively.

[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

[3] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelman JJ).

[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2] (Kitto J).

[5] [2008] ATMO 17, [5]-[6] (Hearing Officer Thompson).

[6] In Kay, the Applicant also claims use of the mark BRISBANE NORTHSIDE EMERGENCY since 2001. Based on Kay's initial statement that the Applicant initially traded as Holy Spirit Northside Emergency, I have assumed that 2008 is the more accurate date of first use.

[7] Section 41(3).

[8] Section 41(4).

[9] 1964] HCA 55; (1964) 111 CLR 511, 514.

[10] [2014] HCA 48 (French CJ, Hayne, Crennan and Kiefel JJ) ('Cantarella').

[13] Diamond T Motor Car Co's Application (1921) 38 RPC 373, 380 (Lawrence J).

[14] Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177 (Wilcox J).

[15] Grayson's International Pty Ltd v Top Intellectual Property Pty Ltd [2023] ATMO 113, [29] (Hearing Officer N. Worth).

[16] Macquarie Dictionary, (online at 17 November 2025), def 2.