A well-used acronym can be the basis for a successful trade mark opposition on the grounds of reputation.

The Australian Curriculum, Assessment and Reporting Authority relied on the reputation in its NAPLAN acronym to successfully oppose an application by the company Ogawie Pty Ltd in relation to an application for the following logo for goods and services in Classes 9 and 42. See Australian, Curriculum, Assessment and Reporting Authority v Ogawie Pty Ltd [2013] ATMO 14 (26 February 2013) for further details. 

The ground pursued by the Opponent was that the NAPLAN Online logo application was similar to the government’s NAPLAN acronym, which had acquired a reputation in Australia.

The Opponent had to establish that the NAPLAN trade mark had acquired a reputation in Australia in respect of relevant goods and services before the priority date of the applicant’s NAPLAN Online logo mark, accordingly, use of the applicant’s NAPLAN Online logo would be likely to deceive or cause confusion.

NAPLAN is an acronym for the “National Assessment Program – Literacy and Numeracy”. The acronym is commonly referred to as NAPLAN by teachers, students, the media and the public.

The Opponent showed that it had used the term NAPLAN from at least early 2008, and potentially earlier.  By 2009 and 2010, over 1 million students sat NAPLAN tests in Australia.  The Opponent also provided details of the applicant’s website which stated that the applicant’s goods/services were “an online resource which aims to assist all Australian students and teachers to achieve excellent learning that comes while preparing for the Naplan …. tests ….”. 

The also Opponent tendered evidence of articles and media releases that demonstrated that the members of the public had been aware of the NAPLAN name and would associate the name NAPLAN with the Opponent,  or with a relevant State and Territory education and training department that administered the Opponent’s various NAPLAN tests.

The Hearings Officer was satisfied that the NAPLAN acronym had acquired a strong and valuable reputation in Australia, and that NAPLAN would be particularly well known to students, parents and teachers, along with other people involved in the education and training of children.

While the applicant’s nominated goods and services did not specify the education sector, the evidence tendered by the Opponent about the applicant’s website indicated the likely target market for the applicant’s nominated goods and services was the education sector.

The opposition was successful and the Hearings Officers consequently refused to register Ogawie Pty Ltd’s Application No. 1310510.