Aaron Shearer v Revl IP Pty Ltd

[2023] ATMO 21

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Oppositions by Aaron Shearer to registration of trade mark application numbers 2111699 (classes 35, 41) – REVL TRAINING and device and 2111700 (classes 35, 41) – Inverted triangle device – held in the name of Revl IP Pty Ltd

Delegate:	Nicholas Butson
Representation:	Opponent: Andrew Sykes of Counsel, instructed by Catherine Macneil and Jacqui Pryor of Mark My Words. Applicant: Wen Wu of Counsel, instructed by Davies Collison Cave.
Decision:	2023 ATMO 21 Trade Marks Act 1995 (Cth) – oppositions under s 52 – grounds pursued under ss 42, 44, 58A, 60 – s 44 established in respect of services in class 41 – no other grounds established – applicant given opportunity to amend services – services amended – trade marks to proceed to registration.

Background

1. This decision is in respect of oppositions under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’)[1] by Aaron Shearer (‘Opponent’) to the registration of each of the following trade marks (‘Applicant’s Trade Marks’), in the name of Revl IP Pty Ltd (‘Applicant’):

   [1] Unless otherwise stated, each reference to a regulation below is a reference to a regulation in the Trade Marks Regulations 1995 (Cth) and each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth).

   Trade mark number:   2111699

   Trade mark:               

   (‘Applicant’s Composite Mark’)

   Trade mark number:   2111700

   Trade mark:   

   (‘Applicant’s Device Mark’)

2. The Applicant’s Trade Marks have the following identical filing dates and specifications:

   Filing date:                 21 August 2020

   Specification:             Class 35: Business advertising services relating to franchising; Business advice relating to franchising; Business assistance relating to franchising; Business consultancy relating to franchising; Business consultation services relating to franchising; Business franchising consultancy and business support services; Business franchising services (group purchasing, group advertising); Business management services relating to franchising; Provision of business advice relating to franchising; Provision of business information relating to franchising; Administration of the business affairs of franchises; Business advisory services relating to the establishment of franchises; Business advisory services relating to the operation of franchises; Business assistance relating to the establishment of franchises; Provision of assistance (business) in the establishment of franchises; Provision of assistance (business) in the operation of franchises

   Class 41: Boot camp services (fitness training); Conducting fitness classes; Conducting fitness classes (aerobics); Fitness and exercise clinics, clubs and salons; Health club services (health and fitness training); Instruction in physical fitness; Lifestyle counselling and consultancy (health and fitness training); Personal trainer services (fitness training); Physical fitness centre services; Physical fitness instruction; Physical fitness training services; Physical fitness tuition; physical fitness assessment services for training purposes; Physical training services; Booking of exercise facilities; Conducting boot camp exercise classes; Conducting exercise classes; Conducting prenatal exercise classes; Health club services (exercise); Provision of apparatus for exercise; Provision of exercise facilities; Rental of exercise equipment

   (‘Applicant’s Services’)

3. The Applicant’s Trade Marks were accepted for possible registration on 4 September 2020 and acceptance was advertised on 22 January 2021.

4. A Notice of Intention to Oppose each of the Applicant’s Trade Marks was filed by the Opponent on 2 March 2021, followed by a Statement of Grounds and Particulars (‘SGP’) on 17 March 2021. A Notice of Intention to Defend each of the Applicant’s Trade Marks was filed by the Applicant on 19 May 2021.

5. The Opponent filed Evidence in Support in respect of each opposition on 19 August 2021. Evidence in Answer in respect of each opposition was filed by the Applicant on 22 November 2021. Evidence in Reply was filed by the Opponent on 21 January 2022 in respect of each opposition.

6. On 21 December 2021, the Registrar issued a Notice to Produce pursuant to s 202, seeking production of documents by the Applicant. The Applicant supplied the documents on 31 January 2022.

7. The Opponent filed a request to add two new grounds of opposition to the SGP on 26 November 2021. The amendment to the SGP was allowed and both parties were given an opportunity to provide evidence in respect of the new grounds. The Opponent confirmed the Notice to Produce documents as Evidence in Support to the amended SGP on 25 May 2022. The Applicant filed Evidence in Answer on 6 July 2022.

8. Following the evidence stages, the parties requested to be heard. Both parties filed an outline of submissions prior to the hearing. As a delegate of the Registrar of Trade Marks, I heard the matter by video conference on 22 November 2022. The Opponent was represented by Andrew Sykes of Counsel, instructed by Catherine Macneil and Jacqui Pryor of Mark My Words. The Applicant was represented by Wen Wu of Counsel.

9. I have decided this matter in my role as delegate of the Registrar of Trade Marks.

Grounds of Opposition, Onus and Relevant Date

1. The grounds of opposition nominated in the SGP were ss 42(b), 44, 58, 58A and 60. However, only ss 42(b), 44, 58A and 60 were pressed in written submissions and at the hearing. As such, I treat the ground under s 58 as abandoned.

2. The Opponent bears the onus of establishing one or more of the grounds of opposition.[2] The required standard of proof is on the balance of probabilities.[3] For the grounds, the Opponent is relying upon the following trade mark for which they are the registered owner:

   [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 Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   Trade mark number:   2105290

   Trade mark:               

   (‘Opponent’s Trade Mark’)

   Priority date:              22 July 2020

   Specification:             Class 41: Gymnasium services; Conducting fitness classes; Fitness and exercise clinics, clubs and salons; Health club services (health and fitness training); Instruction in physical fitness; Lifestyle counselling and consultancy (health and fitness training); Personal trainer services (fitness training); Physical fitness training services; Training; Health education; Provision of apparatus for exercise (‘Opponent’s Services’)

3. The date at which the rights of the parties are to be determined is 21 August 2020 (‘Relevant Date’) being both the filing and priority date of each of the Applicant’s Trade Marks.

Evidence

1. The following evidence was filed in respect of each opposition.

The Opponent

1. The Opponent’s evidence is comprised of:

• Declaration by Aaron Shearer, made on 19 August 2021 with Annexures AS1 to AS21 (‘Shearer Declaration’); and

• Declaration by Catherine Macneil (Trade Marks Attorney at Mark My Words), made on 21 January 2022 with Annexures CM1 to CM4 (‘Macneil Declaration’); and

• Documents regarding the creation of the Applicant’s Trade Marks provided by Davies Collison Cave (Applicant’s legal representative), dated 31 January 2022 with Schedules A to C (‘Design Documents’).

1. The Shearer Declaration details the Opponent’s history as the sole owner of a fitness, gym and personal training business operating on the Gold Coast since March 2015. The business originally operated under the name Raw Iron Functional Fitness but changed to Raw Iron in July 2017. The Opponent declares that he hired a graphic designer to create the Opponent’s Trade Mark in October 2019 and that it has been continuously used since that date. A variety of examples stated to be use of the Opponent’s Trade Mark are provided including on websites, social media, signage and promotional material. Confidential information on sales revenue and marketing expenditure is also provided.

2. In the Shearer Declaration, the Opponent also provides details and examples of use of the Applicant’s Trade Marks, which he states have been used in relation to fitness and training services since around 2020. The Opponent states that due to the similar nature in the parties’ trade marks and services as well as the geographic spread of the Applicant’s business, he believes there is a real risk of confusion.

3. The Macneil Declaration includes information and evidence in relation to a variety of other trade marks featuring triangular devices present on the Australian Trade Mark Register, including some which have received previous objections due to similarities with other trade marks.

4. The Design Documents were provided by the Applicant under the Notice to Produce. These include details on the Applicant’s engagement and discussions with a graphic designer regarding the creation of the Applicant’s Trade Marks.

The Applicant

1. The Applicant’s evidence comprises of:

• Declaration by Ben Woolford (Chief Executive of Officer and a Director of the Applicant), made on 19 November 2021 with Exhibits BW-1 to BW-24 (‘First Woolford Declaration’); and

• Declaration by Claire Groves (Trade Marks Attorney at Davies Collison Cave), made on 22 November 2021 with Exhibits CG-1 to CG-3 (‘Groves Declaration’); and

• Declaration by Ben Woolford, made on 6 July 2022 with Exhibits BW-1 to BW-4 (‘Second Woolford Declaration’).

1. The First Woolford Declaration provides information on the Applicant being a related entity to Revl Training Pty Ltd. Mr Woolford refers to both entities collectively as ‘my Company’ throughout this declaration. Mr Woolford provides details that this company was established in May 2020 as a franchisor business relating to gym and training services, the franchisees then provide these services to consumers under the Applicant’s Trade Marks by way of a franchising agreement. The company had multiple Australian franchises as of November 2021 and has extended overseas.

2. The First Woolford Declaration states that the Applicant engaged a graphic designer in August 2019 to create the Applicant’s Trade Marks which were used from as early as July 2020 on its website,[4] (‘Applicant’s website’). The declaration includes information and examples of the Applicant’s Trade Marks being used at a variety of dates in relation to fitness and training services across a variety of mediums including websites, blogs, social media, and venues. Confidential information on sales revenue and marketing expenditure is also provided.

   [4] The original date was listed as being in May 2020. Mr Woolford corrected this in the Second Woolford Declaration as being from July 2020.

3. The Groves Declaration includes the results of a variety of searches of the Australian Trade Marks Register and captures of websites and social media profiles showing other traders using triangular devices as trade marks.

4. The Second Woolford Declaration clarifies that in delivering the franchising business referred to in the First Woolford Declaration, the Applicant owns the intellectual property and Revl Training Pty Ltd enters into the franchise agreements.

5. The Second Woolford Declaration also provides details of three entities, the Applicant, Revl Training Pty Ltd and JJBTBT Pty Ltd. Mr Woolford declares and provides information that the Applicant and Revl Training Pty Ltd are wholly owned subsidiaries of JJBTBT Pty Ltd. Mr Woolford also provides information on shared directors between the three entities at various dates.

6. The Second Woolford Declaration also provides additional information and examples regarding use of the Applicant’s Trade Marks on the Applicant’s website and mobile phone applications.

Discussion and Reasons

Section 44

1. The Opponent submits that under s 44, the Applicant’s Trade Marks are substantially identical with, or deceptively similar to, the Opponent’s Trade Mark and that the Applicant’s Services are similar to the Opponent’s Services.

2. Section 44(2) relevantly provides:

   (2)  Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

   (a)  it is substantially identical with, or deceptively similar to:

   (i)  a trade mark registered by another person in respect of similar services or closely related goods; or

   (ii)  a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

   (b)  the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

1. To establish the s 44 ground of opposition the Opponent’s Trade Mark must:

• be held in the name of a person other than the Applicant and have an earlier priority date than the Relevant Date; and

• be substantially identical with, or deceptively similar to, the Applicant’s Trade Marks; and

• be in relation to services that are similar to the Applicant’s Services.

The exceptions in s 44(3) and (4) only need to be considered if all these other elements are satisfied. Those provisions set out specific circumstances in which I must not reject the application, regardless of the existence of some other earlier trade mark. Section 44(3) relates to considerations of honest concurrent use of the two trade marks in the marketplace, or other circumstances where it is proper to allow co-existence. Section 44(4) relates to earlier prior continuous use by the applicant of its trade mark/s, from before the priority date of the other trade mark.

1. The Opponent’s Trade Mark has an earlier priority date than the Relevant Date and is held in a name other than that of the Applicant. My next consideration is whether the Opponent’s Trade Mark is substantially identical with, or deceptively similar to, the Applicant’s Trade Marks.

Substantially identical

1. In its submissions, the Opponent asserted that the Opponent’s Trade Mark is substantially identical to the Applicant’s Device Mark. The test for whether trade marks are substantially identical is set out in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[5]

   [5] (1963) 109 CLR 407, 415 (Windeyer J).

2. In comparing the Applicant’s Device Mark and the Opponent’s Trade Mark, while both do feature triangular devices sharing a similar thickness in linework, there are some differences in the location and number of ‘cuts’ into the triangular device. I would think the different locations of these cuts, which in the Opponent’s Trade Mark completely segment the right side of the device, create an apparent difference and an overall impression of dissimilarity when viewed in a side by side comparison.

3. For the sake of completeness, I do not consider the Applicant’s Composite Mark and the Opponent’s Trade Mark to be substantially identical. The Applicant’s Composite Mark features additional elements to the Applicant’s Device Mark, such as the wording under the device, which in my opinion would further the overall impression of dissimilarity.

4. I therefore find that the Opponent’s Trade Mark is not substantially identical with either of the Applicant’s Trade Marks.

Deceptively similar

1. Section 10 relevantly sets out:

   [A] trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

2. What is meant by ‘likely to deceive or cause confusion’ has been discussed in various decisions. To ‘deceive’ requires the creation of false belief that the goods/services are provided by the same trader. Whereas to ‘cause confusion’ only needs to go so far as to cause a consumer to wonder whether they may come from the same trader.[6] Under these tests, if something is deceptive, it is also almost certainly confusing. But something that is confusing may not also be deceptive. Since confusion presents the lower bar, this aspect of the test is my focus below.

   [6] Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410, 423 (Richardson J).

3. The test for deceptive similarity requires there to be a real tangible danger of confusion occurring.[7] Unlike substantial identity, this is not a side by side comparison. It involves a consideration as to the impression or recollection that a person of ordinary intelligence and memory would have of the trade marks,[8] in their entirety,[9] informed by the look, sound and ideas they convey.[10]

   [7] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J); Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French J).

   [8] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan J).

   [9] Clark v Sharp (1898) 15 RPC 141, 146 (Byrne J).

   [10] Re Pianotist Co Ltd’s Application (1906) 23 RPC 774, 777 (Parker J).

4. A primary question this specific consideration turns on is whether the consumer would be caused to wonder whether the services come from a related trade source due to the triangular devices present in each parties’ trade marks. The distinctiveness of such a shared element is often a critical factor in the consideration of the likelihood of confusion. Generally, a highly distinctive shared element will increase the likelihood of consumer confusion, the opposite being true when the shared element is common or descriptive.[11]

   [11] Havana Club Holding SA v Pac-Rim Management Services Ltd (1998) 43 IPR 177 (Hearing Officer Zars); Re Broadhead’s Application (1950) 67 RPC 209, 215 (Evershed MR).

5. While the devices present in each parties’ trade marks are triangular, they are far from some common, non-distinctive geometric shape, nor do the devices carry some kind of descriptive meaning in relation to either parties’ services. The triangular devices are highly stylised compared to a common triangle, including being ‘inverted’ in terms of rotation and featuring lines of a particular thickness, with cuts into the linework. I would think they would be relatively striking and memorable to a consumer of each parties’ claimed services.

6. While the devices are not identical, there are a number of similarities including the orientation and angles, the size and thickness of the lines forming the device and that they both feature cuts into the device in a top corner. While there are some differences including the number, location and shape of the cuts into the triangular devices, when considering the devices in each parties’ trade marks overall, I find they share significant visual similarities.

1. The fitness, gym and training services covered in both parties’ specifications are rather common in the Australian marketplace. Such services can be offered a number of ways, including day passes or contracts of varying length. Considering how commonplace and numerous such service providers are in the marketplace, and the many possible ways such services are provided, I do not think it is appropriate to put any undue weight on a discerning consumer carefully considering differences between traders providing such services, as they would with highly specialised or expensive services.[12]

   [12] Re GE Trade Mark [1973] RPC 297, 321 (Lord Diplock).

2. Imperfect recollection is also a consideration for deceptive similarity.[13] Since the trade marks are not being viewed side by side, it must be considered whether a person who has seen the Opponent’s Trade Mark before (but may have only their recollection of it to go on), would upon seeing each of the Applicant’s Trade Marks, be confused as to whether the services offered in relation to it, come from the Opponent or a related trade source. I think that due to the similar look of the prominent devices in each parties’ trade marks, a consumer of such services upon viewing the trade marks independently with an imperfect recollection, would likely be confused as to whether there was a link between the two trade sources.

   [13] Re Rysta Ltd’s Application (1943) 60 RPC 87, 108 (Luxmoore LJ).

1. While the Applicant’s Composite Mark has additional wording under the triangular device, I think this would be unlikely to sufficiently change any shared impression or recollection with the Opponent’s Trade Mark. Especially considering the size and dominant nature of the larger triangular device in the Applicant’s Composite Mark and the lack of any additional wording or other elements apart from the device in the Opponent’s Trade Mark. Furthermore, in the Applicant’s Composite Mark, the word element also features the triangular device, further reinforcing the likelihood of a consumer carrying away the impression of the triangular device. In my opinion, even with the additional elements present in the Applicant’s Composite Mark, consumers would still likely be confused and caused to wonder whether there was a link between the two trade marks.

2. In considering all the above, I think that there is a real tangible danger of confusion occurring when considering the similarities and likely imperfect recollection of each parties’ trade marks. As such, I find the Opponent’s Trade Mark is deceptively similar to each of the Applicant’s Trade Marks.

Similar services

1. As I have found that the trade marks are deceptively similar, I now need to consider whether the services are similar. In assessing the similarity of the services, the established test is to consider their nature, use and trade channels.[14]

   [14] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 606 (Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ).

2. The Opponent’s Services are in class 41, with many broad and general claims for fitness, exercise and training services. It is plainly apparent that the Applicant’s Services in class 41 which also all relate to fitness, exercise and training services are identical, or at the very least similar in nature, use and trade channels to the Opponent’s Services.

3. The Applicant’s Services claimed in class 35 are a different matter. While gym and fitness services may be provided via a franchise structure, the class 35 services claimed here center around providing business advice and support to others, in running their own franchising or franchisee business. They would not for example, include the provision of gym or fitness services via a franchise model. The types of services claimed by the Applicant in class 35 would generally be provided via companies associated with the business management and support, who operate in a very different sector to the fitness, gym and training services which have been claimed by the Opponent in class 41. As such, I do not find these services similar in nature, use or trade channels to those claimed by the Opponent in class 41.

4. In conclusion, I find the Opponent’s Services are similar to all of the Applicant’s Services in class 41 (‘Conflicting Services’), but not those in class 35 (‘Remainder Services’).

Exceptions under ss 44(3) and 44(4)

1. As s 44(2) has been established in relation to at least some of the Applicant’s Services, the aforementioned exceptions in ss 44(3) or 44(4) need to be considered.

Prior use

1. The Applicant has provided evidence and submissions in relation to the exception for prior use under s 44(4). Section 44(4) relevantly provides:

   (4)  If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

   (a)  beginning before the priority date for the registration of the other trade mark in respect of:

   (i)  the similar goods or closely related services; or

   (ii)  the similar services or closely related goods; and

   (b)  ending on the priority date for the registration of the applicant’s trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

1. Section 44(4) states that I must not reject the Applicant’s Trade Marks, if I am satisfied that the Applicant, or a predecessor in title, continuously used the relevant trade mark in respect of the Conflicting Services, from before the priority date of the Opponent’s Trade Mark until the Relevant Date. The priority date of the Opponent’s Trade Mark is 22 July 2020.

2. The majority of examples of use of the Applicant’s Trade Marks that have been submitted as being use before the Relevant Date, either do not clearly feature an identical or substantially identical trade mark to either of the Applicant’s Trade Marks or are undated and therefore unable to be given any significant weight. The exception is the following examples, which show use of each of the Applicant’s Trade Marks on a social media platform with reference to the Conflicting Services, from the 29 June 2020 and 6 July 2020 respectively:

1. However, there is a point of contention as to whether these examples establish prior use by the Applicant which is required for this exception to be made out, or some other entity. In carefully considering all the evidence provided, it appears to me that the above examples are likely use by two franchisees, being Revl Training Prahan or Revl Training Unley, who appear respectively as the publisher of each social media post.

2. The Applicant has provided information that in its business structure, it owns the intellectual property including the Applicant’s Trade Marks, while the related company, Revl Training Pty Ltd enters into the franchise agreements with franchisees, engaging and establishing franchised venues. No evidence has been provided that sufficiently establishes that either of the above venues were directly owned or run by the Applicant. It would appear on the information provided that the franchises are separate entities.

3. Under s 7(3), use of a trade mark by its owner includes authorised use by another person. Authorised use is defined in s 8 to include use of the trade mark by an authorised user, being a person who uses the trade mark under the control of the owner of the trade mark. Control is further relevantly defined in s 8 to non-exhaustively include financial and quality control of the services in relation to which the trade mark is used.

4. The Applicant has provided a variety of material which may demonstrate control over Revl Training Pty Ltd’s use of the Applicant’s Trade Marks, due to having a shared director acting with a unity of purpose in the maintenance and enhancement of the trade marks.[15] However, it is unnecessary to make a finding on that relationship, as sufficient evidence has not been provided relating to any entities control over the above trade mark use by the franchisees.

   [15] Trident Seafoods Corporation v Trident Foods Pty Ltd [2019] FCAFC 100, [45] (Reeves, Jagot, Rangiah JJ).[15]

5. The Applicant has made bald statements that use of the Applicant’s Trade Marks by its franchisees is controlled by franchise agreements but has not provided any examples of the terms of these agreements as evidence. Regardless, the mere existence of such an agreement or licence alone has been held to not be sufficient without further information or evidence relating to compliance or how the control was exerted over the other entities trade mark use,[16] which has also not been provided. As such, I am not satisfied that there is sufficient evidence of control over these two franchisees to consider them an authorised user, and therefore, those examples do not assist the Applicant.

   [16] E & J Gallo Winery v Lion Nathan (Aust) Pty Ltd [2010] HCA 15, [79] (Heydon J) and [55] – [59] (French CJ, Gummow, Crennan and Bell JJ).

6. As such, I am not satisfied that the Applicant has established prior continuous use of either of the Applicant’s Trade Marks by it or an authorised user.

Honest concurrent use and other circumstances

1. The Applicant has also provided submissions relating to the exceptions under s 44(3) for both honest concurrent use and other circumstances.

2. The exception for honest concurrent use under s 44(3)(a) requires amongst other elements, a consideration of the extent of the use of the Applicant’s Trade Marks in terms of duration, area and volume from prior to the Relevant Date.[17] This generally needs to be proportional to the likelihood of confusion between each parties’ trade marks.[18]

   [17] John Fitton & Co Ltd.’s Application (1949) 66 RPC 110, 115-116 (Assistant-Comptroller Chisholm).

   [18] EJOT GmbH & Co. KG v Eastcoast Fasteners Pty Limited [2017] ATMO 45, [24] (Hearing Officer Wilson).

3. The earliest use that can be established of the Applicant’s Trade Marks by any entity is in June 2020, mere months before the Relevant Date. Considering the level of resemblance between the Applicant's Trade Marks and the Opponent's Trade Mark combined with the level of similarity between the Conflicting Services and the Opponent's Services, the risk of confusion amongst potential consumers is on the face of it, significant.

4. Taking into account the likelihood of confusion, in my opinion the volume of use is simply not sufficient to counterbalance such a small duration of use. As such, I am not satisfied that the exception for honest concurrent use is made out in these circumstances.

5. The exception for other circumstances under s 44(3)(b) provides me with the discretion to accept the Applicant’s Trade Marks if because of some other circumstances, it is proper to do so. The Applicant submits that the Applicant’s Trade Marks should be accepted due to the ‘voluminous use’ of the Applicant’s Trade Marks after the Relevant Date.

6. I do not find the Applicant’s submissions persuasive. As I have discussed above in relation to the prior use exception, the evidence is often unclear as to who the Applicant’s Trade Marks are being used by, and the Applicant has not sufficiently established control over use by other parties such as the franchisees. As such, I am not satisfied that it is appropriate to apply the exception under s 44(3)(b).

Section 44 Conclusion

1. As none of the exceptions apply, I find the s 44 ground of opposition is established for each of the Applicant’s Trade Marks in respect of the Conflicting Services.

Section 58A

1. Section 58A relevantly provides:

   (1)  This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:

   (a)  subsection 44(4); or

   (b)  a similar provision of the regulations made for the purposes of Part 17A.

    (2)  The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:

   (a)  first used the similar trade mark in respect of:

   (i)  similar goods or closely related services; or

   (ii)  similar services or closely related goods;

   before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and

   (b)  has continuously used the similar trade mark in respect of those goods or services since that first use.

1. Section 58A applies where the application for a trade mark has been accepted because of the exception under s 44(4), or a hearing officer finds during an opposition that is appropriate to apply the provisions of s 44(4).

2. In these matters, the Applicant’s Trade Marks were not accepted under the provisions of s 44(4) and, as I have discussed above, I have not found the s 44(4) exception to be established in these oppositions. As such this ground has not been made out.

Section 60

1. Section 60 sets out:

   Trade mark similar to trade mark that has acquired a reputation in Australia

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)  another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b)  because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

2. In the SGP and submissions, the Opponent’s Trade Mark was nominated as the basis for this ground of opposition. To establish this ground of opposition, the Opponent must demonstrate:

   • The existence of a reputation in the Opponent’s Trade Mark, in Australia at the Relevant Date; and
   • That the use of the Applicant’s Trade Marks would be likely to deceive or cause confusion because of the reputation in the Opponent’s Trade Mark.

3. The reputation for this ground requires the Opponent to demonstrate that the Opponent’s Trade Mark was recognised by a significant or substantial number of the relevant purchasing public of such goods/services.[19] This can be demonstrated by a variety of means, including advertisements, news and media.[20]

   [19] McCormick &Company Inc v McCormick [2000] FCA 1335, [81] (Kenny J).

   [20] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 176, [34] (Lockhart J).

4. Turning to the evidence, the Shearer Declaration states that the Opponent commenced using the Opponent's Trade Mark in October 2019, approximately 12 months prior to the Relevant Date. This is a relatively short period of time in which to accrue the goodwill and public recognition envisioned by s 60.

5. The Opponent has provided the revenue and marketing expenditure. The figures before the Relevant Date are relatively modest and are focused in a small geographic location in the Gold Coast, Queensland.

6. On the evidence before me, I am not satisfied that the Opponent has established (as a matter of fact) that the Opponent's Trade Mark was recognised at the Relevant Date by a significant or substantial number of consumers. The revenue figures, promotional expenditure and documented exposure in the marketplace are all modest. Additionally, these modest figures seemingly relate to use of the Opponent's Trade Mark and use of a composite trade mark incorporating the words 'Raw Iron'.

7. Consequently the s 60 ground has not been established.

Section 42(b)

1. Section 42(b) provides:

   42  Trade mark scandalous or its use contrary to law

   An application for the registration of a trade mark must be rejected if:

   …

   (b)  its use would be contrary to law.

2. The Opponent relies on ss 18 and 29 of the Australian Consumer Law (‘ACL’) of Schedule 2 of the Competition and Consumer Act 2010 (Cth) and the tort of passing off as the basis for the ground of opposition under s 42(b).

Australian Consumer Law

1. Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading.

2. In the SGP, the Opponent states that ‘in light of the established reputation’ of the Opponent’s Trade Mark, use of the Applicant’s Trade Marks would contravene ss 18 and 29 of the ACL. I have already found that a reputation has not been established in the Opponent’s Trade Mark that is sufficient to enliven s 60. It follows that it is unlikely that use of the Applicant’s Trade Marks will amount to misleading or deceptive conduct under the ACL because ‘for the public to be misled or deceived…there must be in the minds of the relevant public some established truth against which the notion of misleading or deceptive conduct can be measured’.[21] Similarly, without sufficient reputation having been demonstrated, the use of the Applicant’s Trade marks would not falsely represent to an Australian consumer that the Applicant’s Services have the sponsorship or approval of the Opponent.

   [21] Dairy Vale Metro Co-op Ltd v Brownes Dairy Ltd [1981] FCA 63 [42] (Toohey J).

3. As such, the Opponent has not satisfied me that use of the Applicant’s Trade Marks would be contrary to the ACL.

Passing Off

1. Where use of a trade mark does not contravene s 18 of the ACL, the same conduct will not amount to passing off.[22] In Re Equity Access Pty Ltd v Westpac Banking Corporation, Hill J discussed the tort of passing off and the operation of s 52 of the Trade Practices Act1974 (Cth), being the predecessor to s 18 of the ACL:

   The scope for the operation of s.52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s.52 or s.53 will invariably mean that proceedings for passing off would likewise fail.[23]

   [22] Monster Energy v USA Nutraceuticals Inc [2017] ATMO 22, [58] (Hearing Officer Wilson).

   [23] [1989] FCA 506, [40] (Hill J).

2. Considering my finding in relation to s 18 of the ACL above, it follows that use of the Applicant’s Trade Marks would not amount to passing off.

3. As such, I find that the s 42(b) ground has not been established.

Decision

1. Section 55(1) relevantly provides:

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

   (a)  to refuse to register the trade mark; or

   (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.

2. The Opponent has established the ground of opposition under s 44 for each of the Applicant’s Trade Marks in relation to the Conflicting Services.

3. None of the other grounds of opposition have been established.

4. On 8 February 2023 I informed the Applicant that it was my intention to refuse registration of the Applicant’s Trade Marks unless the specification was amended to remove the Conflicting Services claims in class 41.

5. In response, on 16 February 2023 the Applicant filed divisional applications (TM no. 2335345 and 2335346) in respect of all the services in class 41. The divisional applications were examined resulting in the specification of the Applicant’s Trade Marks being amended to remove the class 41 claims and contain only those in class 35.

6. The Applicant’s Trade Marks can now proceed to registration.

Costs

1. The parties sought costs. As both parties were, strictly speaking, partly successful I decline to award costs.

Nicholas Butson
Hearing Officer
Delegate of the Registrar of Trade Marks
23 February 2023