Bayer Intellectual Property GmbH v Conquest Crop Protection Pty Ltd

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Bayer Intellectual Property GmbH to registration of trade mark application number 1819783 (class 5) - PRECEED - in the name of Conquest Crop Protection Pty Ltd

Delegate: Nicholas Barbey

Representation: Opponent: Written submissions by Anne Makrigiorgos, Griffith Hack
Applicant: Written submissions by Malcolm Farr, Farr Intellectual Property

Decision: 2020 ATMO 48
Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 44, and 60 considered – none established – trade mark may proceed to registration.
Background

This decision concerns an opposition brought by Bayer Intellectual Property GmbH (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to registration of the following trade mark:
Trade Mark:  PRECEED (‘Trade Mark’)
Application Number:             1819783
Applicant:  Conquest Crop Protection Pty Ltd (‘Applicant’)
Filing Date:  11 January 2017
Goods:Class 5: Bacterial, fungal or other inoculants (fungicides, weedkillers, herbicides, insecticides, parasiticides, pesticides); Biological agents (bacterial, fungal or other fungicides, weedkillers, herbicides, insecticides, parasiticides, pesticides); Chemical products for killing weeds; Chemicals for forestry (herbicides); Herbicides; Herbicides for agricultural crops; Herbicides for agricultural use; Preparations of agrochemical herbicides; Preparations for destroying noxious plants; Preparations for destroying weeds; Preparations for killing weeds; Weedkillers; Weedkilling preparations (‘Applicant’s Goods’)
The application to register the Trade Mark was examined as required by s 31 of the Act and its acceptance was advertised in the Australian Official Journal of Trade Marks on 6 July 2017.
The Opponent filed its Notice of Intention to Oppose registration on 6 September 2017 and a Statement of Grounds and Particulars (‘SGP’) on 3 October 2017.
The Applicant filed its Notice of Intention to Defend the Trade Mark on 9 December 2017.
The Opponent filed Evidence in Support (‘EIS’) on 13 February 2018 and the Applicant filed its Evidence in Answer (‘EIA’) on 16 April 2018. No evidence in reply was filed by the Opponent.
At the conclusion of the evidence filing period, both parties were informed of their right to request a hearing or to make written submissions. Neither party requested a hearing and instead both parties relied on written submissions. The Applicant filed its written submissions (‘Applicant’s Submissions’) on 27 July 2018 and the Opponent filed its written submissions (‘Opponent’s Submissions’) on 28 August 2018.
I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act. In doing so I take account of the material comprised of the written record. This record consists of the above described material.
Grounds of opposition, onus and standard of proof
The SGP nominated grounds of opposition under ss 42(b), 44 and 60 of the Act. To be successful in this opposition, the Opponent must establish at least one of these grounds.
The Opponent bears the onus of establishing the ground of opposition.[1] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 11 January 2017, being the filing date of the application[3] which here is the same as the ‘priority date’ stipulated in ss 44 and 60 of the Act.
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].
[2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].
[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [4].
Evidence
The following declarations were filed as evidence in this proceeding:

EIS

Declaration of Florian Bottenschein (Senior Counsel of the Opponent) dated 7 February 2017 [sic] with Annexures FB-1 to FB-10 (‘Bottenschein Declaration’).

EIA

Statutory Declaration of Roy Norman Morgan (Managing Director of the Applicant) dated 13 April 2018 with Annexures RNM-1 to RNM-6 (‘Morgan Declaration’).

The Opponent’s evidence

The Bottenschein Declaration explains that the Opponent is a member of a multinational conglomerate which provides a range of goods including products within the life sciences and pharmaceutical fields. The Opponent is the owner of the following Australian trade mark registration:
Trade Mark:   PRECEPT      (‘Precept Mark’)
Registration Number:             1083970
Priority Date:  2 November 2005
Goods:Class 5: preparations for killing weeds and destroying vermin, insecticides, herbicides, fungicides (‘Precept Goods’)
According to the Bottenschein Declaration, the Precept Mark has been continuously used in Australia since 2008 in relation to herbicides. The declarant states that the herbicide products bearing the Precept Mark are tailored to Australian conditions and are not sold in any other country.
The Precept Mark has been promoted via a combination of online and print mediums. This includes promotion on third party websites as well as advertisements in state government publications. Herbicide products bearing the Precept Mark have also been promoted directly to industry bodies as well as at national conferences such as the Combined Rural Traders’ annual conferences. The evidence submitted demonstrates use of various iterations of the Precept Mark including:

PRECEPT

PRECEPT SELECTIVE HERBICIDE

The Bottenschein Declaration lists the annual sales of herbicide products sold under the Precept Mark. The figures disclosed, which span from 2008 to 2016, indicate significant sales of products bearing the Precept Mark and that such sales have increased on an annual basis since the herbicides were first sold in Australia. Likewise, the Opponent’s advertising and promotional expenditure of the Precept Mark has been considerable especially when considered in context of the seasonal nature of the herbicide products where marketing activities generally occur from March/April through to July.
The Applicant’s evidence
The Morgan Declaration outlines the examination history of the Trade Mark. The declarant points out that the Precept Mark was not raised as a ground for rejection against the Trade Mark during its examination. The declarant explains that ‘preceed’ does not have a dictionary definition but considers it is akin to the word ‘precede’ and therefore would be articulated in a similar manner. With this in mind, the declarant concludes that the Precept Mark and Trade Mark are not confusing because they look different, sound different and carry different connotations.[4] To this end, the declarant states that they have never had the word ‘precept’ mistaken for the word ‘precede’ or vice versa.
[4] Morgan Declaration, [24].
Annexed to the Morgan Declaration are extracts from the Macquarie Concise Dictionary including a pronunciation key and word definitions of ‘prank’ to ‘precursor’ and ‘prescription drug’ to ‘prestige’. Based on this material, the declarant asserts that an ordinary person would emphasise the ‘pre’ portion of the Precept Mark. In contrast, the emphasis in the Trade Mark would naturally occur in the ‘ceed’ part of the Trade Mark. The declarant states that there are numerous words ‘more similar’ to the Trade Mark than the Precept Mark and submits that, in their experience, these ‘more similar’ words would not be confused with the Trade Mark because ordinary people are accustomed to distinguishing between them.
The declarant states that crop control products such as herbicides are legally required to be registered with the Australian Pesticides and Veterinary Medicines Authority (‘APVMA’) in order to be manufactured, imported or otherwise used in Australia. A selection of results obtained from APVMA’s Public Chemical Registration Information System database for products commencing with the prefix ‘prec-’ and ‘pres-’ are annexed to the Morgan Declaration. Included within these results is the APVMA product registration for an iteration of the Precept Mark.[5] The results demonstrate that there are numerous crop control products, in addition to the Precept Mark, which are registered with the APVMA and have a product name beginning with ‘prec’ or ‘pres’. Therefore, the declarant submits that the Opponent does not have a monopoly in marks of this nature registered with the APVMA.
[5] See Annexure RNM-5 to the Morgan Declaration which contains an extract of APVMA registration for product no. 60897 for the product name ‘PRECEPT SELECTIVE HERBICIDE’ in the name of Bayer Cropscience Pty Ltd.
The declarant further explains that, in their experience, consumers necessarily exercise caution when selecting products encompassed within the Applicant’s Goods and the Precept Goods. This is because the misidentification or misuse of such products may have serious health and safety consequences for humans and for the environment in general. As such, the declarant states that crop control products are selected with care.
Discussion
Section 44
Section 44 of the Act relevantly provides:
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 this ground of opposition, the Opponent must identify at least one trade mark which satisfies the following requirements:
(i)it is in the name of a person other than the Applicant;
(ii)it has a priority date which is earlier than that of the Trade Mark;
(iii)it is substantially identical with, or deceptively similar to, the Trade Mark; and
(iv)it is in respect of similar goods, and/or services which are closely related to, the Applicant’s Goods.
The Opponent nominated the Precept Mark as underpinning this ground of opposition.
The Precept Mark is registered by a person other than the Applicant and has a priority date of 2 November 2005 which is earlier than the Trade Mark’s priority date of 11 January 2017. The Precept Mark contains claims in class 5 for goods which are similar to the Applicant’s Goods. This is not disputed by the Opponent. The commonality between the Precept Goods and Applicant’s Goods is evident in the fact that both contain claims for, inter alia, ‘preparations for killing weeds’ and ‘herbicides’. As such, requirements (i), (ii) and (iv) set out at [20] have been satisfied.
This ground of opposition therefore turns on whether the Trade Mark is substantially identical with, or deceptively similar to, the Precept Mark. The test for ‘substantial identity’ was set out in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):
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.[6]
[6] [1963] HCA 66, [12] (‘Shell’).
The Trade Mark and the Precept Mark are reproduced below:

Trade Mark

Precept Mark

PRECEED

PRECEPT

Substantial identity was not pressed in the Opponent’s Submissions and I agree that the trade marks are not substantially identical. A side by side comparison demonstrates a readily apparent difference in the termination of the respective trade marks which is sufficient to preclude a finding of substantial identity.
Consequently, it is necessary to consider whether the respective trade marks are deceptively similar. The term ‘deceptively similar’ is defined in s 10 of the Act:
Definition of deceptively similar
For 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 assessment of deceptive similarity was considered by Windeyer J in Shell who observed:
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].[7]
[7] Ibid [13].
The Opponent’s Submissions emphasise that both the Trade Mark and Precept Mark begin with the prefix ‘prece’, consist of identical length and differ only in respect of the last two letters of each trade mark. The Opponent’s Submissions assert that the ‘pre’ syllable of the Trade Mark would be stressed because the ‘ceed’ syllable would be articulated as ‘seed’ given the context of use is in relation to agricultural and horticultural goods. Reference was made to London Lubricants (1920) Ltd's Appn[8] which provides that the first syllable of a word is generally the most important for the purpose of distinction. In this instance, the Opponent points out that the first syllable of each trade mark is identical. The Opponent’s Submissions argue that the trade marks share numerous aural and visual similarities which, in the context of imperfect recollection, exacerbate the potential for confusion amongst ordinary consumers. To this end, it was observed that the threshold for confusion is not high.[9]
[8] (1925) 42 RPC 264.
[9] See Australian Postal Corporation v Digital Post Australia [2013] FCAFC 153, [70].
The Applicant’s Submissions assert that the first syllable of the Precept Mark, being ‘pre’, would be stressed by the ordinary consumer whereas the termination of the second syllable, ‘ceed’ would be emphasised in the Trade Mark. The Applicant’s Submissions contend that ‘preceed’ would be construed in the same manner as the dictionary defined term ‘precede’. In the context of the trade marks as wholes, the Applicant submits that the second syllable in the Precept Mark, namely ‘cept’, is not in any sense lost notwithstanding the emphasis likely falling on ‘pre’.
In my view, the Trade Mark and the Precept Mark are not deceptively similar. Aurally, the trade marks share a degree of similarity insofar as each is comprised of a two syllable word that commences with the same syllable, namely ‘pre’. However, this is offset by the presence of the second syllable within each trade mark. The parties advanced opposing interpretations regarding which syllable of the Trade Mark would be emphasised. Based on the presence of the long vowel ‘ee’, I consider the Trade Mark would be most naturally pronounced with an emphasis on the second syllable – namely, ‘pre – ceed’. As the Opponent submits, and I agree, ‘ceed’ would likely be pronounced as ‘seed’. This is markedly dissimilar to ‘cept’ which would likely be pronounced in a similar manner to ‘sept’ as it is in the word ‘September’. While I am cognisant that ordinary consumers are not to be credited with perfect elocution, these aural differences cannot be wholly overlooked in the context of a two syllable word wherein each syllable constitutes half of the overall trade mark and are equally likely to retain some importance. This is particularly so when an ordinary consumer’s propensity to slur is mitigated, to an extent, by the fact that emphasis falls on the second syllable in the Trade Mark. As such, the termination of each trade mark meaningfully alters their respective pronunciation.
Conceptually, the trade marks also differ. It was common ground between the parties that ‘precept’ is an English word and it may be defined as ‘a commandment or direction given as a rule of action or conduct’.[10] The Applicant postulates that the Trade Mark is likely to be perceived by consumers as the word ‘precede’ and would be treated as such. I concur that ‘preceed’ is likely to be interpreted by an ordinary consumer as a misspelling or an alternative spelling of the word ‘precede’. The word ‘precede’ may be defined as ‘to go before, as in place, order, rank, importance, or time’[11] and it is likely that this meaning would be attributed to the Trade Mark. It is self-evident that this meaning has no correlation with the definition attributable to ‘precept’. It follows that the trade marks convey dissimilar meanings.
[10] See Annexure RNM-4 to Morgan Declaration, 24.
[11] Ibid 23.
The Opponent asserts that the trade marks are visually similar because each commence with ‘prece’ and the first part of a trade mark is generally the most important for comparative purposes. It is true that the first five letters of each trade mark are shared. However, this alone does not automatically render the trade marks deceptively similar. It is well established that the trade marks must be considered in their entirety[12] and, unsurprisingly, numerous decisions exist where trade marks have not been considered deceptively similar despite sharing a common beginning.[13] In the present matter, it is not unreasonable to consider that consumers would have a degree of familiarity with ‘pre’ given it is a recognised word in its own right and a commonly used prefix that may be defined as ‘a prefix applied freely to mean “prior to”’.[14] The commonality of the prefix ‘pre’ diminishes its distinctiveness and the prospect that it will strike the eye of a consumer and be seized upon as solely denoting trade source is accordingly reduced. Meanwhile, the natural break between the syllables of both trade marks does not yield ‘prece’ and it is unlikely that either trade mark will be visually identified as a ‘prece’ trade mark. Notwithstanding the difference of only two letters in the termination of the trade marks, these two letters remain crucial in altering the visual impact and overall meaning of the trade marks as a whole and thus import further dissimilarity between the trade marks.
[12] Clark v Sharp (1898) 15 RPC 141, 146.
[13] See, eg, Dr August Wolff GmbH & Co. KG Arzneimittel v Combe International Ltd [2020] FCA 39 (‘VAGISAN’ and ‘VAGISIL’); Singtel Optus Pty Ltd v Optum Inc [2018] FCA 575 (‘OPTUM’ and ‘OPTUS’); Geratetechnik v Actron Engineering Pty Ltd [2018] ATMO 85 (‘TRUMAX’ and ‘TRUMA’); AXIS Legal (Australia) Pty Ltd v Axia Litigation Lawyers Pty Ltd [2016] ATMO 41 (‘AXIA’ and ‘AXIS’); Abbott Biologicals BV v Novartis AG [2014] ATMO 60 (‘INFLUGARD’ and ‘INFLUVAC’); Oracle Corporation v Newcom Technologies Pty Ltd [2000] ATMO 105 (‘ORACLE’ and ‘ORATEL’).
[14] See Annexure RNM-4 to Morgan Declaration, 23.
In relation to the Applicant’s Goods and the Precept Goods, there is disagreement with respect of the level of caution likely to be exercised by consumers. The Applicant contends that consumers are likely to be farmers who would be diligent in selecting the goods because of the consequences a wrong choice may have. Conversely, the Opponent asserts that the relevant consumer would encompass a broader cross-section of the community since the goods are available at nurseries, supermarkets and hardware stores. In this context, the level of care exercised by a consumer will vary accordingly. In my view, both perspectives have some merit. Consumers of goods such as herbicides cannot be narrowly confined to farmers given such goods are manufactured in both domestic and commercial grades. However, the hazardous nature of the goods means it is plausible that ordinary consumers will generally pay reasonable attention to, and make informed choices when, selecting the goods. Indeed, the Precept Mark’s safety data sheet identifies serious hazards associated with use of the herbicide such as ‘suspected of causing cancer’, ‘may be fatal if swallowed and enters airways’ and ‘very toxic to aquatic life with long lasting effects’.[15] A such, it is likely consumers will engage a reasonable degree of care when selecting the goods at issue. In turn, this further diminishes the potential for confusion, particularly from a visual standpoint, between the trade marks.
[15] See Annexure FB-4 to Bottenschein Declaration, 102.

In light of the above, I am satisfied that there is no real and tangible danger of confusion between the Precept Mark and the Trade Mark. While the trade marks share visual similarity by virtue of the common letters ‘prece’, the overall impressions conveyed by the trade marks are quite dissimilar. There are sufficient aural, conceptual and visual differences between the trade marks such that, even allowing for imperfect recollection, the trade marks are readily distinguished when considered in their entirety.
Accordingly, the s 44 ground of opposition has not been established.
Section 60
Section 60 of the Act relevantly provides:
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.
In order to succeed under this ground of opposition, the Opponent must demonstrate the existence of another trade mark which had acquired a reputation in Australia before 11 January 2017. The Opponent must then show that because of this reputation use of the Trade Mark would be likely to deceive or cause confusion.
The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick (‘McCormick’) as referring to ‘the recognition of the [trade mark] by the public generally’.[16] Her Honour quoted with approval the following statement of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd (‘ConAgra’):
[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. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner ... [17]
[16] [2000] FCA 1335, [81] (‘McCormick’).
[17] [1992] FCA 159, [118] (‘ConAgra’).
In considering types of evidence that may assist in establishing reputation, Kenny J further observed in McCormick that:
In 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 … public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.[18]
[18] McCormick (n 16) [86].
The reputation in the other trade mark must be amongst a ‘significant’ or ‘substantial’ number of Australian consumers[19] but this is tempered by the nature of the relevant market. The reputation must also be established as a matter of fact by the Opponent.[20]
[19] See Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170. See also ConAgra (n 17).
[20] ConAgra (n 17) [77].
The Opponent submits that the end user of herbicides are farmers but reiterates that the products are sold in normal trade channels such as supermarkets, nurseries and hardware stores. Consistent with this analysis, the relevant market would be considerably large since herbicides are used by a diverse range of consumers in a domestic and commercial context. This was not contested by the Applicant and I accept the Opponent’s characterisation of the relevant market as being accurate in the circumstances.
The Precept Mark is nominated as supporting this ground of opposition. The information and evidence provided in the Bottenschein Declaration indicates that the Precept Mark and iterations thereof enjoy a sizeable commercial presence within Australia. Since 2008, the annual sales figures disclosed are, by any reasonable measure, substantial and demonstrate consistent growth annually. Likewise, the expenditure related to advertising and promotion of the Precept Mark as well as various iterations of same has been considerable. The evidence demonstrates advertisement has occurred through a broad range of mediums and the goods have been sold nationally for an extended duration of time. The Applicant’s Submissions do not contest the issue of reputation and openly concede the significant use of the Precept Mark means that it enjoys a reputation in Australia.[21] Consequently, I am satisfied that the evidence is such that, as at 11 January 2017, the Precept Mark in its own right[22] had acquired a reputation in respect of herbicides among a significant number of Australian consumers for the purposes of s 60(a) of the Act.
[21] Applicant’s Submissions, [6.4.2].
[22] Noting the evidence annexed to the Bottenschein Declaration demonstrates use of various iterations of the Precept Mark, examples of which are reproduced at [13] of this decision.
I now turn to consider whether because of this reputation, confusion or deception is likely. Establishing a ground of opposition under s 60 of the Act does not require the trade marks in question to rise to the level of substantial identity or deceptive similarity. However, the likelihood of deception or confusion naturally increases the more closely the trade marks resemble each other.[23] As the Registrar’s delegate in Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd[24] observed, this is because:
Confusion can not arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.[25]
[23] Qantas Airways Limited v Edwards [2016] FCA 729, [142].
[24] [2010] ATMO 5.
[25] Ibid [39] (emphasis in original).
In view of the information and evidence before me, I am not satisfied that it is likely that confusion or deception will arise between the Precept Mark and Trade Mark. The trade marks retain a very low degree of similarity when consideration is given to the aural, conceptual and visual differences that were discussed in relation to s 44 ground of opposition. I accept that the goods provided under the respective trade marks are similar. However, for the reasons canvassed earlier, a consumer would likely engage a reasonable degree of care in purchasing herbicides given the inherently hazardous nature of same. Therefore, I do not consider the reputation enjoyed by the Precept Mark to be sufficiently strong such that it eclipses the notable differences between the trade marks. On balance, I am satisfied that use of the Trade Mark would not be likely to deceive or cause confusion in the marketplace.
Accordingly, the s 60 ground of opposition has not been established.
Section 42
Section 42 of the Act relevantly provides:
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.
To succeed under this ground of opposition, the Opponent must establish that use of the Trade Mark would be, rather than could be, contrary to law on the balance of probabilities.[26] The relevant time for assessing whether the application is contrary to law is at the priority date, namely 11 January 2017. However, ‘prospective conduct after registration’ may be considered.[27]
[26] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [411] (Rangiah J).
[27] Time Warner Entertainment Company, LP v Stepsam Investments Pty Limited [2003] FCA 1502, [47].
This ground of opposition was particularised in the SGP as follows:
s42(b) - The use of the trade mark PRECEED would be passing off and would breach ss. 18 and 29 of the Australian Consumer Law and is therefore contrary to law.
Accordingly, the SGP identifies ss 18 and 29 of Schedule 2 to the Australian Consumer Law (‘ACL’) of the Competition and Consumer Act 2010 (Cth) and the tort of passing off as the basis for this ground of opposition. Section 18 of the ACL pertains to conduct or representations that have, or are likely, to mislead or deceive and s 29 of the ACL deals with representations that are false or misleading.
For the reasons outlined above, the Opponent has failed to establish the ground of opposition under s 60 of the Act. The test for ‘misleading or deceptive conduct’ under s 18 of the ACL is recognised as imposing a more stringent test than that for ‘deception or confusion’ under s 60 of the Act.[28] It follows that I am satisfied that the Opponent has also failed to establish that use of the Trade Mark would contravene s 18 of the ACL.
[28] See, eg, Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191, 198 (Gibbs CJ).
In Monster Energy v USA Nutraceuticals Inc the Registrar’s delegate observed:
Where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL, nor the tort of passing off. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act 1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’. Section 53(d) of the TPA is the equivalent provision to s 29(1)(h) of the ACL …[29]
Accordingly, I am satisfied that the Opponent has also failed to establish that use of the Trade Mark would be contrary to s 29 of the ACL.
[29] [2017] ATMO 22, [58] (citations omitted).
Given my finding in relation to ss 18 and 29 of the ACL, the observations of Hill J addressing the relationship between s 52 of the superseded Trade Practices Act 1974 (Cth)[30] and passing off in Re Equity Access Pty Ltd v Westpac Banking Corporation[31] are also relevant:
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.[32]
[30] Section 52 of the superseded Trade Practices Act 1974 (Cth), which referred to a ‘corporation’, is in substance the same as s 18 of the ACL which refers to a ‘person’.
[31] [1989] FCA 506.
[32] Ibid [40].
Therefore, I am not satisfied that use of the Trade Mark would amount to passing off at common law given I do not consider s 18 of the ACL would be contravened.
Consequently, I am not satisfied that use of the Trade Mark would be contrary to law. Therefore, the s 42(b) ground of opposition has not been established.
Decision
Section 55 of the Act relevantly provides:
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.
The Opponent has not established a ground of opposition. It follows that trade mark application number 1819783 may proceed to registration one month from the date of this decision.
If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and the disposition of the application should be in accordance with the court’s order or direction.
Costs
The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. Accordingly, I award costs against the Opponent as per s 221 of the Act in the amounts set out in Schedule 8 of the Trade Mark Regulations 1995 (Cth).
Nicholas Barbey
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
31 March 2020

Delegate:	Nicholas Barbey
Representation:	Opponent: Written submissions by Anne Makrigiorgos, Griffith Hack Applicant: Written submissions by Malcolm Farr, Farr Intellectual Property
Decision:	2020 ATMO 48 Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 44, and 60 considered – none established – trade mark may proceed to registration.

[2020] ATMO 48

31 March 2020