Altina Australia Pty Ltd v Tina Drinks Pty Ltd

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Altina Australia Pty Ltd to registration of trade mark application numbers 2224727 (32), 2253912 (32) and 2253913 (32) – This Is Not Alcohol, T.I.N.A. , T.I.N.A. THIS IS NOT ALCOHOL– in the name of TINA Drinks Pty Ltd

Delegate: Bianca Irgang

Representation:
Opponent: Written submissions by Mengel Law

Applicant: Scott Buchanan of Buchanan Law Firm Pty Ltd

Decision: 2025 ATMO 66
Trade Marks Act 1995 (Cth) - Section 52 opposition – ss 41, 42, 44 and 60 grounds of opposition argued – no grounds of opposition established – trade marks to proceed to registration.
Background

TINA Drinks Pty Ltd (‘the Applicant’), filed trade mark application numbers 2224727, 2253912 and 2253913 respectively on 1 November 2021 and 4 March 2022. Current details of the applications (‘the Applicant’s Trade Marks’) are set out below.
Trade mark:   (‘First Trade Mark’)
Trade mark application no: 2224727
Filing Date:  1 November 2021
Specification:  Class 32: Aerated beverages (non-alcoholic)
Trade mark:  T.I.N.A. (‘Second Trade Mark’)
Trade mark application no: 2253912
Filing Date:  4 March 2022
Specification:  Class 32: Aperitifs, non-alcoholic; Carbonated non-alcoholic drinks; Essences for making beverages; Preparations for making non-alcoholic beverages; Aerated beverages (non-alcoholic); Aerated drinks (non-alcoholic); Non-alcoholic cocktails; Cocktails, non-alcoholic; Non-alcoholic beverages flavoured with tea; Non-alcoholic punches
Trade mark:  T.I.N.A. THIS IS NOT ALCOHOL (‘Third Trade Mark’)
Trade mark application no: 2253913
Filing Date:  4 March 2022
Specification:  Class 32: Aperitifs, non-alcoholic; Carbonated non-alcoholic drinks; Essences for making beverages; Preparations for making non-alcoholic beverages; Aerated beverages (non-alcoholic); Aerated drinks (non-alcoholic); Non-alcoholic cocktails; Cocktails, non-alcoholic; Non-alcoholic beverages flavoured with tea; Non-alcoholic punches (‘Applicant’s Goods’)[1]
[1] I will refer to the goods specifications of the First Trade Mark, Second Trade Mark and Third Trade Mark collectively as the ‘Applicant’s Goods’.
Acceptance of the applications for possible registration was advertised on 2 April 2022 and 5 August 2022. Subsequently, Altina Australia Pty Ltd (‘the Opponent’) filed its Notices of Intention to Oppose registration followed by its Statements of Grounds and Particulars (‘SGP’). The Applicant then filed its Notices of Intention to Defend. Thereafter, the Opponent and the Applicant filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (Cth) (‘the Regulations’).
I heard the opposition by teleconference as a delegate of the Registrar of Trade Marks on 19 February 2025. The Opponent was not present at the hearing but did provide written submissions by way of its legal representatives Mengel Law. The Applicant was represented by Scott Buchanan of Buchanan Law Firm Pty Ltd.
Grounds of Opposition
The SGP nominated a number of grounds of opposition under the Trade Marks Act 1995 (Cth) (‘the Act’) but only those grounds of opposition under ss 41[2], 42(b), 44 and 60 were pursued at the hearing. The Opponent bears the onus of establishing at least one of the grounds of opposition.[3] The standard of proof is the ordinary civil standard of the balance of probabilities.[4]
[2] The Opponent has only argued the ground under s 41 in relation to the First Trade Mark.
[3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[4] Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26] (Gyles J); Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelman JJ).
Evidence
The evidence filed in this matter consists of the following declarations being:
Evidence in Support
·Declaration of Lindsay Stuart Douglas Mengel, solicitor for the Opponent, made on 8 May 2023 and its Exhibits LM-1 to LM-43 (‘Mengel’).
Evidence in Answer
·Statutory Declaration of Christina Trabucco, director of the Applicant, made on 25 July 2023 and its Exhibits CT-1 to CT-17.
·Statutory Declaration of Mike Bennie, director of P&V Wine + Liquor Merchants, made on 8 August 2023.
·Statutory Declaration of Scott Buchanan, lawyer for the Applicant, made on 14 August 2023.
Evidence in Reply
·Declaration of Lindsay Stuart Douglas Mengel, solicitor for the Opponent, made on 18 October 2023 and its Exhibits LM-1 to LM-20 (‘Mengel 2’).
It is noted that the Opponent’s solicitor has filed separate declarations in respect of each opposition rather than single declarations covering the three consolidated oppositions. As such there appears to be three separate versions of Mengel and Mengel 2 but with minor differences only. Unless stated otherwise, references to the Mengel declarations relate to the declarations pertaining to trade mark number 2253913 which were also addressed and referenced by the Applicant during the Hearing.
Discussion
Section 44
Section 44 of the Act relevantly provides:
44 Identical etc. trade marks
(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:
(a) the applicant’s trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services 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 goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
To establish its opposition in terms of section 44 of the Act the Opponent must show all of the following:
·a trade mark (or trade marks), either registered or pending registration, in the name of a person other than the present applicant, and in relation to which the opposed trade mark is either substantially identical or deceptively similar;
·the trade mark(s) in the name of the other person must be in respect of similar goods or closely related services; and
·the priority date(s) of the other person’s trade mark(s) is (are) the earlier.
The Opponent is the registered owner of the following three registrations relied on in support of its s 44 ground of opposition:
I will refer to these trade mark collectively as the ‘Opponent’s Trade Marks’ for ease of reference throughout the decision. As verified on the Register of Trade Marks all of the Opponent’s Trade Marks have an earlier priority date to the Second Trade Mark and the Third Trade Mark and cover the same goods in class 32 to the Applicant’s Goods. Only Registration Number 1954148 has an earlier Priority Date to the First Trade Mark and covers the same goods in class 32.
It is obvious that none of the Opponent’s Trade Marks are substantially identical to the Trade Mark according to the side-by side test set out by Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd[5]. While all of the respective trade marks contain the letters T I N A, this is where the similarities between them end. The Opponent’s Trade Marks each have the prefix ‘AL-’which changes the visual and aural sound of each trade mark and precludes a finding of substantial identity.
[5] (1963) 109 CLR 407, 414.
I now consider whether the Applicant’s Trade Marks are deceptively similar to any of the Opponent’s Trade Marks. Deceptive similarity is defined by s 10 of the Act, which states ‘[f]or the purposes of this Act, 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.’ The determination of deceptive similarity requires a comparison of the impression persons of ordinary intelligence and memory would have, in recalling the Opponent’s trade mark, to the impression they would get from the opposed trade mark.[6] The probability of deception must be finite and non-trivial.[7]
[6] The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407, 415 (Windeyer J).
[7] Registrar of Trade Marks v Woolworths Limited [1999] FCA 1020, [43] (French J).
The Opponent’s Trade Marks share the word Altina. I will initially compare registration no. 1954148 ‘Altina’ (‘Altina Mark’) to the Applicant’s Trade Marks to determine if they are deceptively similar. Given that the remainder of the Opponent’s Trade Marks contain additional elements or stylisation, if the below respective trade marks are not deceptively similar, then it follows that trade marks containing additional and differing elements are also likely to not be deceptively similar.

Altina Mark

Applicant’s Trade Marks

Altina

T.I.N.A.

T.I.N.A. THIS IS NOT ALCOHOL

The Opponent’s Altina Mark consists of the word ‘ALTINA’ which may be viewed as a made up word or a name.
Looking at the Applicant’s Trade Marks it is clear that the respective trade marks share the same four letters being T.I.N.A. which is the prominent and striking expression in each trade mark. The Applicant has advised ‘T.I.N.A.’ is an acronym for “This is not alcohol” which is also located in the First Trade Mark and the Third Trade Mark. The Applicant advises that the ‘T.I.N.A.’ portion of each mark should be referred to and pronounced as the letter T, the letter I, the letter N and the letter A rather than as the word TINA. However, I believe it is disingenuous for the Applicant to suggest that the average consumer would likely pronounce the T.I.N.A element as an acronym in place of the more easily understood and pronounced female name ‘Tina’.
I note that the Altina Mark contains the suffix ‘-tina’. However, even with this similarity present in the respective trade marks, I am not persuaded that any of the Applicant’s Trade Marks are deceptively similar to the Altina Mark.
The Opponent has argued:
…it is the word TINA which strikes the eye and makes the trade mark memorable. It is clear from viewing the Opposed Trade Mark that the additional elements, that is, the words THIS IS NOT ALCOHOL, are secondary. The additional words are made secondary by their inability to distinguish, with the words THIS IS NOT ALCOHOL being directly referential to and descriptive of an important and, primarily sought after, quality of the beverage.
We also submit that the Section 44 ground should not be disregarded simply because the Opponent’s Earlier Registered ALTINA Trade Marks (particularly in this instance those which are the subject of Registration Nos. 1954148 and 2236224) contain an element (“AL”) the that the Opposed Trade Mark does not.
When considering the Opposed Trade Mark in this manner, it is clear that when determining the question of deceptive similarity the word TINA, as contained in the Opposed Trade Mark, should be compared with the word ALTINA, as contained in or comprising the Opponent’s Earlier Registered ALTINA Trade Marks.
We submit that the contention that the Opposed Trade Mark is deceptively similar to the Opponent’s Earlier Registered ALTINA Trade Marks should not be discounted simply because, in each of the Opponent’s Earlier Registered ALTINA Trade Marks, the word ALTINA, commences with the letters “AL” and is then followed by “TINA” whereas the Opposed Trade Mark is the word TINA, followed by descriptive and directly referential wording.
However, I am not persuaded by this reasoning. The Applicant’s Trade Marks focus strongly on T.I.N.A with distinct punctuation as the striking and memorable portion of the respective marks. The Altina Mark does not place any special emphasis on its suffix ‘-tina’ and it is the whole of the mark which must be considered when making a determination. The prefix of the Opponent’s Altina Mark is ‘AL-’ which has a strong and very different oral sound to the Applicant’s Trade Marks as well as being an additional syllable. The visual and oral differences between the respective trade marks are simply too different for a finding of deceptive similarity.
The Applicant has argued:
The Opponent’s solicitor claims that ‘Tina’ is the primary component of the Opponent’s trade marks. This fanciful claim is not grounded in reality and is unsupported by the Opponent’s evidence (i.e. there is no evidence indicating that TINA is the prominent element of Altina). To the contrary, all of the Opponent’s evidence points to the full and complete word.
‘Altina’ being the Opponent’s core trade mark. Similarly, the Opponent’s mischievous claim of “prominent use of the word TINA” in the Opposed Marks is simply wrong. None of the Opposed Marks feature the word TINA without the clear and distinct punctuation elements.
I agree with the Applicant.
Applying all the considerations relevant for an assessment of s 44, I am not satisfied any of the Applicant’s Trade Marks are deceptively similar to the Opponent’s Altina Mark or any of the Opponent’s Trade Marks, plain text or otherwise. This is particularly when the trade marks are considered, as they must be, as wholes. To refuse the Applicant’s Trade Marks because of the suffix -tina would impermissibly seize on a single similarity between the trade marks, while ignoring the trade marks in their entirety. I recall, ‘it is the whole mark as used which is the subject of the comparison with the registered mark.’[8].
[8] Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182, 218 (Allsop J).
The trade marks all convey different ideas and the small changes in those visual, aural and cognitive cues are important and carry significant weight when considering the respective trade marks. This reasoning continues to all the Opponent’s Trade Marks which contain additional and differing elements which further distinguish the Opponent’s Trade Marks from the Applicant’s Trade Marks.
My finding is that the respective trade marks of the two parties are neither substantially identical nor deceptively similar. As a result of this finding, the ground of opposition under s 44 has not been made out.
Section 60 - Reputation in Australia
Section 60 of the Act provides:
60 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.
To establish the ground of opposition under s 60 the Opponent relies on its use of and the acquired reputation in the Opponent’s Trade Marks.
Unlike s44 of the Act, s 60 does not require that the goods upon which the Opponent uses its Trade Marks be of a specified standard of similarity with the goods of interest to the Applicant, nor is there a requirement that the Opponent’s Trade Marks be substantially identical or deceptively similar to any of the Applicant’s Trade Marks. However, I note from the evidence of both parties that the goods of interest to both parties are non-alcoholic beverages.
It is for me to determine whether the Opponent has established that before 1 November 2021 any of the Opponent’s Trade Marks were recognised by the relevant market, or at least by a significant number of persons in Australia and whether because of that, the use by the Applicant of the Applicant’s Trade Marks would be likely to cause the public confusion.
In relation to reputation Kenny J states in McCormick & Co Inc v McCormick[9]:
[i]n ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343; 23 IPR 193 at 234, Lockhart J said:
[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum.
Justice Kenny continues:
[i]n practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: …
[9] (2000) 51 IPR 102, 128-129.
In considering whether the Opponent’s Trade Marks have acquired a reputation in non-alcoholic beverages, I turn to the Opponent’s evidence of use of the trade marks in Australia. Mengel avers that the Opponent commenced using its Altina Mark in 2018 and has amassed a considerable reputation in its trade marks on non-alcoholic beverages.
Since the Opponent commenced using the Altina Mark in 2018, it has continuously used the Opponent’s Trade Marks in connection with its non-alcoholic beverages. In December 2021, the Opponent adopted the stylised version of its Altina Mark. Mengel states that the earliest demonstrated use of the Altina Mark takes place in August 2018. I note that the official launch of the non-alcoholic beverages bearing the Altina Mark was on 1 December 2018 and involved 100 Canberrans according to the article dated 26 January 2021 located in exhibit LM-18 accompanying Mengel.
The articles contained in exhibits LM-18 to LM-34 accompanying Mengel all appear to be dated in 2021 and 2022 and do include the Opponent’s Trade Marks with most containing an elaborate and striking letter ‘A’ as a focus point for the Opponent’s goods and its trade marks in the following way:
[10] [11]
[10] Exhibit LM-13 accompanying Mengel.
[11] Exhibit LM-15 accompanying Mengel.
According to Mengel, the Opponent’s advertises its non-alcoholic beverages under the Opponent’s Trade Marks on a number of platforms including online, Facebook, Instagram, newspaper articles, press releases, magazine articles, LinkedIn, media releases, brochures, packaging, labels, signage, stationary and corporate partnerships[12]. However, I note that many of the exhibits are undated proofs of various pictures of the Opponent’s goods bearing the Opponent’s Trade Marks and of limited use in establishing a reputation.
[12] Exhibits LM-4 to LM-18 accompanying Mengel.
Mr Mengel states that the Opponent receives over a hundred thousand visits to its website annually and that the Opponent’s advertising and promotional activities have generated a social media reach of well over a million and social media impressions of over nine million, resulting in a collective social media following across all platforms of over 15,000 followers. The total advertising expenditure made by the Opponent from 2019 until 2022 is modest[13].
[13] Confidential Exhibit LM-17 accompanying Mengel.
The Opponent’s non-alcoholic beverages are sold through its website, bottle shops, supermarkets, restaurants, cafes and hotels. These retailers include Dan Murphys, BWS, IGA and Liquor Legends. According to Mengel, the Opponent’s goods can be purchased in over 350 retailers across Australia. The revenue generated from these sales from 2019 until 2022 was very modest initially but grew considerably[14].
[14] Confidential Exhibit LM-3 accompanying Mengel.
In considering all this, I am not satisfied that the Opponent has demonstrated it has acquired such a level of reputation in Australia for non-alcoholic cocktails and wines because of which the use of the Applicant’s Trade Marks would be likely to deceive or cause confusion. Establishing a reputation is more than the Opponent merely indicating prior use, the Opponent’s trade mark needs to be ‘associated in the minds of the Australian public’[15] to such a degree that confusion is likely. I am not satisfied that the Opponent has done this.
[15] Seven Up Co v OT Ltd (1947) 75 CLR 203, 211 (Williams J).

The Applicant has argued:
The evidence does not show that the Opponent has a reputation in respect of:
(a) an individual component of its Altina trade mark trade mark divorced from the prefix ‘Al’; or
(b) the acronym ‘T.I.N.A.’ or the term, This is Not Alcohol’.
The Opponent has argued:
The Opponent’s Earlier Registered ALTINA Trade Marks have been used since 2018 and, as shown in the evidence, had acquired a reputation in Australia. The reputation acquired by the Opponent has been generated by:
• Its ever increasing sales, which either result from: o Direct orders placed online; or o Purchases from its stockists (approximately 450 throughout Australia at the time of preparation of the Evidence-in-Reply);
• Advertising;
• Print and electronic media articles, the Opponent’s Goods and the Opponent having been the subject of articles in national newspapers as far back as August 2018;
• Its strong social media presence;
• Attendance at exhibitions and festivals open to all members of the public; and
• Participating in and winning awards in wine and beverage competitions – the Opponent has several award winning products
The Opponent also drew my attention to one incident of potential confusion in the marketplace where someone almost purchased the Applicant’s goods instead of the Opponent’s goods[16].
[16] Exhibit LM-20 accompanying Mengel 2.
In considering whether any of the Applicant’s Trade Marks would be likely to deceive or cause confusion because of the reputation of the Opponent’s Trade Marks in Australia, I consider the degree of distinctiveness of the element or elements shared by the parties’ respective trade marks under comparison, in this case the suffix ‘-tina’, is limited. The likelihood of relevant deception or confusion is in my view very low. There are immediately obvious visual, aural and semantic differences between the parties’ marks when considered as wholes. The marks as wholes do not look alike, nor do they sound alike apart from the suffix, in my estimation (noting that the Applicant refers to its trade marks as the individual letters T.I.N.A. in the acronym).
While I do agree that it is important to consider possible notional use of the Trade Mark, that is to consider ‘what the [A]pplicant can do if registration is obtained’,[17] the evidence before me does not suggest the Applicant’s intention is to mimic the manner in which the Opponent’s Trade Marks are rendered and judicial commentary in this regard indicates I must assume use of an opposed mark in a ‘fair and reasonable manner’[18] and by reference to the use to which the Applicant can properly put its trade mark’[19].
[17] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J) (‘Southern Cross’).
[18] Smith Hayden & Co Ltd’s Application (1946) 63 RPC 97, 101 (Evershed J).
[19] Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353, 362 (Mason J).
In considering the respective trade marks it becomes clear that the only similarity between them is the suffix element -tina. The Opponent has argued that a similarity of idea, impression and language would give rise to a real risk that consumers might have cause to wonder that the Trade Mark used on the Applicant’s goods was somehow related to the Opponent’s non-alcoholic beverages. However, I am not persuaded by this reasoning.
When the respective trade marks are considered as wholes, as they must be, I am not satisfied that use of the any of the Applicant’s Trade Marks will lead a significant number of consumers to experience a reasonable doubt[20] as to the existence of some sort of connection between the Opponent’s Trade Marks and any of the Applicant’s Trade Marks. Nor am I satisfied there would be a real and tangible danger of confusion arising[21] between the respective trade marks given the large size of the non-alcoholic beverage industry in Australia and the Opponent’s comparatively small level of reputation.
[20] Southern Cross (n 16) 594-5 (Kitto J).
[21] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, 382 (French J).
The Opponent has accordingly not established its ground of opposition under s 60.
Section 42(b)
Section 42(b) of the Act is reproduced below:
42 Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
(a) the trade mark contains or consists of scandalous matter; or
(b) its use would be contrary to law.
I have found that the use of the Trade Mark is not, at a minimum, likely to ‘deceive or confuse’ under s 60, and hence it follows that the use is not, on the stricter test posited by the Australian Consumer Law, likely to mislead or deceive. I thus find that the Opponent has not established the ground of opposition under s 42(b).
Section 41
The Opponent only provided submissions under the s 41 ground in relation to the First Trade Mark so I take that the s 41 ground of opposition is only pressed in regards to the First Trade Mark.
Section 41 of the Act provides:
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.
(3) This subsection applies to a trade mark if:
(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.
(4) This subsection applies to a trade mark if:
(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;
(iii) any other circumstances.
Note 1:       Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a)    the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b)    the time of production of goods or of the rendering of services.
Note 2:       For goods of a personand services of a personsee section 6.
Note 3:       Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).
(5) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.
Note 1:       For applicant and predecessor in title see section 6.
Note 2:       If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).
The first step, in terms of subsections 41(3) and 41(4) is to consider the extent, if any, to which the Trade Mark is inherently adapted to distinguish the services of the Applicant from the similar goods and/or services of other persons.
The test for inherent adaptation to distinguish is the familiar one in Clark Equipment Co v Registrar of Trade Marks[22] where Kitto J said:
That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner’s goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others. In Registrar of Trade Marks v. W. & G. Du Cros Ltd. (1913) AC 624, at pp 634, 635 Lord Parker of Waddington, having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not “adapted to distinguish” the applicant’s goods, defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. His Lordship said: “The applicant’s chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use.” The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R.J. Lea, Ltd. (1913) 1 Ch 446, at p 463; (1913) 30 RPC 216, at p 227; but to say this is not to treat the question as depending upon some vague notion of public policy: it is to insist that the question whether a mark is adapted to distinguish be tested by 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.
[22] Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 [513–14].
The consideration of inherent adaptability to distinguish is something which depends on the nature of the trade mark itself. It is not a test conducted with reference to specific traders who happen to have similar trade marks, but a general question of whether “other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their services” per Justice Kitto in F. H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd.[23]
[23] (1965) 112 CLR 537) [6].
The majority of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited[24] noted the following part of Kitto J’s test:
"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"
[24] (2014) 109 IPR 154 at [26]-[30] per French CJ, Hayne, Grennan and Kiefel JJ.
Considering this passage the majority of the High Court explained that the inherent adaptability of a trade mark consisting of a word (including a foreign word) is to be tested by checking the ordinary meaning (that is the “ordinary signification”) of the word to anyone ordinarily purchasing, consuming or trading in the relevant goods, which may be characterised as “the target audience”[25]. The High Court held that CINQUE STELLE and ORO (Italian words meaning FIVE STARS and GOLD) were not shown to convey a meaning or idea sufficiently tangible to anyone in Australia concerned with coffee goods as to be words having a direct reference to the character or quality of the goods. The High Court compared those trade marks to the trade mark TUB HAPPY in respect of cotton goods, as trade marks which “convey an allusive or metaphorical meaning in respect of certain goods” rather than directly describing those goods[26].
[25] Ibid [28], [30].
[26] Ibid [73].
The Opponent has argued:
We submit that any person trading in non-alcoholic beverages – especially those that are designed to be a substitute for alcoholic beverages – would desire, without improper motive, to describe their beverages as “not alcohol” and, further would wish to describe a single non-alcoholic beverage as “this is not alcohol”. We submit that registration of the Opposed Trade Mark would serve to “fence off the great common of the English language” and prevent traders from making honest use of the English language.
I am not persuaded by this reasoning. The First Trade Mark is a stylized trade mark with a strong and striking focal point being the letters T I N A which are vastly larger to the words attached to those letters as follows:
The striking focal point of the First Trade Mark is the letters T I N A or the impression of a name. While the words of the First Trade Mark are ‘This is not alcohol’, the presentation and stylisation of the trade mark add the additional and most striking element being T I N A with the words themselves being secondary. The Applicant has sought registration of the above trade mark, as a whole, with its stylisation and considerable emphasis on the letters T I N A as seen above. It is highly unlikely that other traders would want to use above words in such a stylized manner without improper motive.
The Opponent has not established the s 41 ground of opposition in regards to the First Trade Mark.
Decision
Section 55 of the Act provides:
55 Decision
(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.
Note: For limitations see section 6.
The Opponent has not established any grounds of opposition. The trade mark applications may accordingly proceed to registration one month from the date of this decision. If the Registrar has been served with notice of appeal before that time, I direct that registration of the Applicant’s Trade Marks shall not occur until the appeal has been decided or discontinued.
Costs
The Applicant requested its costs in the event of success in these three opposition matters. All three opposition matters had essentially common evidence and this being the case I award against the Opponent in terms of Schedule 8 of the Trade Mark Regulations 1995 in the at full costs, as per scale, for the opposition to application 2224727 and apply 20% of the scale[27] in the remaining two oppositions.
[27] Hume Industries (Malaysia) Berhad v James Hardie & Co Pty Ltd (2001) 53 IPR 591.
Bianca Irgang
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
31 March 2025

[2025] ATMO 66

31 March 2025

Key Legal Topics

Areas of Law

Intellectual Property

Commercial Law

Legal Concepts

Appeal

Costs

Statutory Construction

Remedies