Bobby's Drinks Pty Ltd v The Sunraysia Natural Beverage Company Pty Ltd

[2025] ATMO 26

TRADE MARKS ACT 1995

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

Re:Opposition by Bobby’s Drinks Pty Ltd to registration of trade mark application 2303169 –HAPPY GUT– in the name of THE SUNRAYSIA NATURAL BEVERAGE COMPANY PTY. LTD.

Delegate:

Bianca Irgang

Representation:

Opponent: Neil Murray of Murray Trento & Associates Pty Ltd

Applicant: Emma Mitchell of Griffith Hack Lawyers

Decision:

2025 ATMO 26

Trade Marks Act 1995 (Cth) - Section 52 opposition – ss 41, 42(b), 44, 58 and 60 grounds of opposition argued – no grounds of opposition established for the goods – trade mark to proceed to registration.

Background

1.     THE SUNRAYSIA NATURAL BEVERAGE COMPANY PTY. LTD. (‘the Applicant’), filed trade mark application number 2303169 on 26 September 2022 in class 32 of the International Classification of Goods and Services. Current details of the application are set out below.

Trade mark:  HAPPY GUT (the ‘Trade Mark’)

Trade mark application no:   2303169

Filing Date:  26 September 2022 (‘Priority Date’)

Specification:  Class 32: Fruit and vegetable juices; fruit drinks; sodas; fruit and vegetable juice shots; Kombucha (‘Applicant’s Goods’)

2.     Acceptance of the application for possible registration was advertised on 27 February 2023. Subsequently Bobby’s Drinks Pty Ltd (‘the Opponent’) filed a Notice of Intention to Oppose registration on 24 April 2023 followed by a Statement of Grounds and Particulars (‘SGP’) on 22 May 2023.

3.     The Applicant then filed its Notice of Intention to Defend. Thereafter, the Opponent filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (Cth) (‘the Regulations’). The Applicant did not file any evidence in the proceedings.

4.     Following the end of the period for filing evidence, both parties requested to be heard. I heard the opposition by teleconference as a delegate of the Registrar of Trade Marks on 9 December 2024. The Opponent was represented by Neil Murray of Murray Trento & Associates Pty Ltd. The Applicant was represented Emma Mitchell of Griffith Hack Lawyers. The parties’ oral  submissions were supported by written submissions filed prior to the hearing.

Grounds of Opposition

5. The SGP nominated the grounds of opposition being ss 41, 42(b), 44, 58 and 60 under the Trade Marks Act 1995 (Cth ) (‘the Act’). The Opponent bears the onus of establishing at least one of the grounds of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2]

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

[2] 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).

6.     I note that the Opponent advised at the hearing that it was withdrawing a number of grounds of opposition but did not specify which ones were being withdrawn. As no clarity has been provided about which grounds of opposition have been withdrawn, I will discuss each ground.

7.     Additionally, the Opponent requested revocation of the Trade Mark in its written submissions for the hearing. The Applicant has rightly objected and referred me to s 55(1) of the Act, where the Registrar must decide at the end of opposition proceedings to either refuse or register the trade mark (with or without limitations), having regard to the extent (if any) to which any opposition ground has been established.

8.     The Registrar may only revoke acceptance during opposition proceedings if the application was opposed under s 62(a) of the Act and I acknowledge that the Opponent has not raised s 62(a). I am not satisfied that there is any basis for me to revoke acceptance of the Trade Mark at this late stage in the opposition proceedings.

Evidence

9.     The evidence filed in this matter consists of the following declaration being:

Opponent’s evidence

·Declaration of Leon David Trento, director at Murray Trento & Associates Pty Ltd, made on 2 November 2023 and its exhibits LDT-01 to LDT-03 (‘Trento’).

Discussion

Section 41 

10. Section 41 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. 

             (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. 

             (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. 

11. In the SGP the Opponent particularised the s 41 ground of opposition as follows:

This ground is supported by the Australian Registrar of Trade Marks who previously considered a trade mark application filed by Bobby Drinks Pty Ltd for the words “Make your gut happy” in respect of various goods in class 32 including:

Non-alcoholic beverages; Carbonated non-alcoholic drinks; Non-alcoholic carbonated drinks; Soft drinks; Aerated beverages (non-alcoholic); Aerated drinks (non-alcoholic).

The previously filed trade mark application of Bobby Drinks Pty Ltd (Trade Mark No. 2217230) received an adverse report dated 11 October 2021 in which the Registrar objected to the trade mark application in view of Section 41 of the Trade Marks Act 1995.

More particularly, the Delegate of the Registrar stated in the adverse report that:

“Your trade mark is MAKE YOUR GUT HAPPY. This indicates that consumption of your beverage goods will promote good gut health. It is common for traders to indicate that a HAPPY GUT is the purpose of food and drink goods. Other traders are likely to need to use MAKE YOUR GUT HAPPY in relation to their goods and/or services in the normal course of trade.”

12.     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 goods of the Applicant from the similar goods and/or services of other persons.

13.     The test for inherent adaptation to distinguish is the familiar one in Clark Equipment Co v Registrar of Trade Marks[3] 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.

[3] Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 [513–14].

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.[4]

[4] (1965) 112 CLR 537) [6].

15.     The majority of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited[5] 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"

[5] (2014) 109 IPR 154 [26]-[30] French CJ, Hayne, Grennan and Kiefel JJ.

16.     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”[6]. 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[7].

[6] Ibid [28], [30].

[7] Ibid [73].

17. The Opponent has argued that it previously filed a trade mark application that received an adverse report and subsequently the Opponent allowed it to lapse. Trade Mark number 2217230 “MAKE YOUR GUT HAPPY’ (‘Opponent’s lapsed application’) in the name of the Opponent received an adverse report dated 11 October 2021 (‘Examination Report’). The Registrar objected to the trade mark application raising a s 41 ground for rejection on the basis that the Opponent’s lapsed application indicated that consumption of the Opponent’s beverages would promote good gut health. The Registrar stated that it is common for traders to indicate that a HAPPY GUT is the purpose of food and drink goods. Other traders are likely to need to use MAKE YOUR GUT HAPPY in relation to their goods and/or services in the normal course of trade.

18. I note that the Opponent’s evidence is focused on the Examination Report regarding the Opponent’s lapsed application and forms the basis for the Opponent’s s 41 ground of opposition. Mr Neil Murray, legal representative for the Opponent, argued that given the s 41 objection to the Opponent’s lapsed application and given the Trade Mark is for expression HAPPY GUT, a s 41 objection should apply to the Trade Mark.

19.     I am not persuaded by this reasoning. The Opponent’s lapsed application and the Trade Mark are different trade marks. The idea which may be attributed to the respective trade marks is different. The Opponent’s lapsed application has an easily understood and direct meaning to a potential consumer that the beverages of the Opponent will ‘make your gut happy’. Whereas the Trade Mark is for the expression ‘Happy Gut’ which is not descriptive of the Applicant’s Goods and is allusive to the ultimate purpose of the goods. Each case must be assessed on its merits - with regard to the relevant judicial tests - not with regard to the state of the register. I refer to the comments of Justice Wilcox in Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) AIPC 91-539 at paragraph 35:

I add only that, although consistency in public administration is desirable, a public officer is not justified in persisting with error. Marks may, in the past, have been wrongly registered.  It would be an unwarranted distraction from the task at hand to investigate, in a particular case, whether they were or not.

20. The Opponent’s lapsed application for a different trade mark is not sufficient to establish a ground of opposition under s 41.

21.     The Applicant has argued:

The trade mark HAPPY GUT is not a dictionary word. It is not a direct reference to the Goods, a character or quality of the Goods or their intended purpose. HAPPY GUT is instead a skillful allusion to Goods that will cause the gut to be healthy or enjoy the taste of the Goods.

A similarity can be drawn with the seminal decision in Mark Foy’s in relation to the trade mark TUB HAPPY. Similarly to TUB HAPPY, HAPPY GUT does not convey a meaning or idea sufficiently tangible to amount to a direct reference to the character or quality of the Goods.[8] A gut cannot feel happiness. HAPPY GUT provides no more than a “cloudy suggestion” (in the words of William J) that the Goods would result in a healthy gut.

As to the second limb of the test in Cantarella, there is no evidence before the Delegate as to the likelihood that other traders may wish to use the trade mark. To the extent that the Opponent’s MAKE YOUR GUT HAPPY trade mark received an objection in a Headstart report, that is irrelevant or should hold very little weight for the following reasons:

(a) The trade marks HAPPY GUT and MAKE YOUR GUT HAPPY are different trade marks with different meanings.

(b) Each trade mark is to be considered on its own merits.

(c) The objection was raised in a Headstart report, which is a preliminary assessment of a trade mark. The results do not appear on the Register, and were not available to Sunraysia.

(d) If the Opponent had chosen to convert the Headstart application into a standard trade mark application, and a similar objection was raised during examination, the Opponent would have had an opportunity to respond to the examination report. It is by no means certain that the objection would have been maintained.

(e) The Registrar has seen fit to register trade marks, including those relied on under the s44 ground of opposition, which include the words HAPPY and GUT.

[8] Mark Foy’s Ltd v Davis Coops & Co Ltd 95 CLR 190 (‘Mark Foy’)

22.     I am in agreement with the Applicant. The situation before me is analogous to Mark Foy with Tub Happy. I am satisfied that HAPPY GUT does not convey a meaning or idea sufficiently tangible to amount to a direct reference to the character or quality of the Applicant’s goods. The Trade Mark is not a common way to describe the goods and consumers would have to engage in mental gymnastics to apply a descriptive meaning to link the Trade Mark with the beverage goods. I refer to the Laser Tracer case[9] where the Third Board of Appeal stated:

“…a trade mark is considered to be allusive whenever it makes reference to certain characteristics of the products or services in an indirect way … or through a mental association process which requires a special effort on the part of consumers who are expected to transform a suggestive or emotional message into a rational evaluation.”

[9] Laser Tracer, Case R0062/1998-3, 11

23. The Opponent has also not provided evidence as to the likelihood that other traders may wish to use the Trade Mark during the ordinary course of trade. I am satisfied the Trade Mark is sufficiently capable of distinguishing the designated beverage goods. The Opponent has not established the s 41 ground of opposition.

Section 44

24. 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.

25. To establish its opposition in terms of s 44 of the Act the Opponent must show all of the following[10]:

·a trade mark (or trade marks), either registered or pending registration, in the name of a person other than the Applicant, and in relation to which the opposed trade mark is either substantially identical with or deceptively similar to;

·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 than the Priority Date.

[10] As the Opponent is arguing that the Third Trade Mark is deceptively similar to the Trade Mark, reg. 4.15A applies. Reg 4.15A is effectively identical to s 44 but applies when the basis for the ground of opposition is a Protected Internation Trade Mark which is the case with the Third Trade Mark.

26. The Opponent listed three trade mark registrations in its SGP in support of its s 44 ground of opposition. These trade mark registrations (‘Trade Mark Registrations’) are owned by unrelated third parties and each of the trade marks have an earlier priority date to the Trade Mark. Therefore, the remaining issues for me to determine is whether the Trade Mark is either substantially identical with or deceptively similar to any of the Trade Mark Registrations and whether the Trade Mark Registrations cover similar goods or closely related services to the Applicant’s Goods. Details of the Trade Mark Registrations are as follows:

Trade mark:  Happy Gut (‘First Trade Mark’)

Trade mark registration:       1890761

Owner:Hofesh Enterprises Pty Ltd as trustee for WEISS Family Trust No. 1

Filing Date:  29 November 2017

Specification:  Class 29: Beverages made from yoghurt; Custard style yoghurts; Dairy desserts (except ice cream or frozen yoghurt); Desserts made from yoghurt (except frozen yoghurt); Flavoured yoghurts; Fruit flavoured yoghurts; Low fat yoghurts; Non-dairy yoghurt; Preparations for making yoghurt; Preparations made from yoghurt; Set yoghurt; Soya yoghurt; Yoghurt; Yoghurt based drinks; Yoghurt beverages; Yoghurt desserts (except frozen yoghurt); Yoghurt drinks; Yoghurt for drinking; Yoghurt made from goats milk; Yoghurt powder; Yoghurt preparations; Yoghurt products; Yoghurts containing pulped fruits; Kefir (milk beverage); Aerated drinks (predominantly of milk); Carob drinks; Drinks based predominantly on milk; Drinks flavoured with chocolate and having a milk base; Drinks flavoured with fruit pastes and having a milk base; Drinks flavoured with herbs and having a base of milk; Drinks flavoured with spices and having a base of milk; Drinks made from dairy products; Drinks made wholly or principally with milk; Flavoured milk powder for making drinks; Milk based drinks (milk predominating); Milk drinks; Fermented milk; Kimchi (fermented vegetable dish); Ryazhenka (fermented baked milk)

Class 30: Muesli; Muesli bars; Muesli consisting predominantly of cereals; Muesli desserts; Snacks manufactured from muesli; Frozen yoghurt (confectionery ices); Yoghurt based ice cream (ice cream predominating); Yoghurt confectionery; Coffee drinks; Drinks based on cocoa; Instant powder for making flavoured coffee-based, tea-based or cocoa-based drinks; Malted food drinks

Trade mark:  (‘Second Trade Mark’)

Trade mark registration:       1897730

Owner:  Lactalis Australia Pty Ltd

Filing Date:  8 April 2022

Specification:  Class 29: Milk, cheese, butter, yogurt and other milk products; dairy products; dairy-based spreads and dips; edible oils and fats for food; eggs; yoghurt-based drinks; soya-based dairy substitutes.

Trade mark:  HAPPY GUT (‘Third Trade Mark’)

Trade mark registration:       1997631

International Registration:    1456549

Owner:  Wellness Media LLC

Filing Date:  12 February 2019

Specification:  Class 5: Dietary supplements; herbal supplements; nutritional supplements; all the foregoing for promoting intestinal and digestive health.

Class 44: Dietary and nutritional guidance; providing information about dietary supplements and nutrition.

27.     I will firstly consider the respective goods and services of the Trade Mark Registrations when compared to the Applicant’s goods. Section 14 provides:

(1)     For the purposes of this Act, goods are similar to other goods:

(a)  if they are the same as the other goods; or

(b)  if they are of the same description as that of the other goods.

(2)     For the purposes of this Act, services are similar to other services:

(a)  if they are the same as the other services; or

(b)  if they are of the same description as that of the other services.

28.     Whether goods are of the same description depends on ‘whether the goods belong to the same of different trades’[11]. This is determined through consideration of a number of factors, including the nature of the goods,[12] the purpose for which the goods will be used,[13] and the trade channels through which the goods are bought and sold.[14] In Reckitt and Colman (Australia) Limited v Boden, Dixon J stated:

What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put.  Another is whether they are commonly dealt with in the same course of trade or business.[15]

[11] Re an Application by Ladislas Jellinek for the Registration of a Trade Mark (1947) 63 RPC 59, [64] (Romer J).

[12] Ibid.

[13] Ibid.

[14] Ibid; see also: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [5] (Kitto J).

[15] (1954) 70 CLR 84, [94].

29.     The Act does not define ‘closely related’ goods and services. Justice French noted in Registrar of Trade Marks v Woolworths:

The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related” … it is a term of wider import than “similar” and can apply to the relationships between competing services as well as between goods and services.[16]

[16] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [37] (French, Branson and Tamberlin JJ) (‘Woolworths’).

30.     I will now consider the goods of the First Trade Mark against the Applicant’s Goods.

31. The First Trade Mark was initially raised as a ground for rejection under s 44 during the examination period. However, the Applicant amended the goods of the Trade Mark in order to narrow the scope of the goods and remove any conflict between the goods of the respective marks. The beverage goods of the First Trade Mark are yogurt, cocoa, coffee and milk based which are different to the water and juice based beverages of the Applicant’s Goods. I am not satisfied that these are similar goods.

32.     In determining whether there is a likelihood of deception or confusion I must consider all the surrounding circumstances including the circumstances in which the goods are offered and the probable acquirer of those goods. These goods are beverages directed at the public at large. I consider that consumers would be typically engaged with a moderate level of care and attention when purchasing these goods as they would know if they wanted a chilled milk, coffee, yogurt or fruit juice when looking in the refrigerated drink section of a supermarket. In this regard, I find it more probable than not that consumers of these goods would not be contextually confused by the offerings of the Opponent and the Applicant by picking up a yogurt drink when they wanted a fruit juice.    

33.     Considering the goods and services specifications of the Second Trade Mark and the Third Trade Mark, I am satisfied that these goods and services are not similar goods or closely related services to the Applicant’s Goods applying the above factors. The Applicant’s Goods are Fruit and vegetable juices; fruit drinks; sodas; fruit and vegetable juice shots; Kombucha. These are not the same goods or similar goods to Milk, cheese, butter, yogurt and other milk products; dairy products; dairy-based spreads and dips; edible oils and fats for food; eggs; yoghurt-based drinks; soya-based dairy substitutes or Dietary supplements; herbal supplements; nutritional supplements; all the foregoing for promoting intestinal and digestive health.

34.     This is because the Applicant’s goods are specific types of beverages that are not milk, yogurt, dairy or dairy-substitute based, nor are they dietary, nutritional or herbal supplements. Their natures are quite different particularly when considering that supplements are produced by manufacturers and taken by consumers for health benefits which cannot be said for all of the Applicant’s goods. Additionally, it is unlikely that the Applicant’s goods and those of the Second Trade Mark and Third Trade Mark would be produced by one and the same manufacturer. Further it is unlikely that they would be distributed by the same wholesalers. While these goods can all be sold in a supermarket, it is unlikely that they would be in the same section. I am satisfied that the goods are  sufficiently different from each other.

35.     Nor are the Applicant’s goods closely related to the dietary and nutritional guidance; providing information about dietary supplements and nutrition services in class 44. These services are unlikely to be provided through the same trade channels. As the goods and services of the Second Trade Mark and the Third Trade Mark are not the same or similar, the Opponent is unable to establish a s 44 ground of opposition using these trade mark registrations.

36.     Therefore, given that none of the goods and services of the Trade Mark Registrations are the same or similar to the Applicant’s goods, I am not satisfied there would be a real and tangible danger of confusion arising[17] between the respective trade marks. My finding is that the ground of opposition under s 44 has not been made out.

[17] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, 382 (French J).

Section 60 - Reputation in Australia

37. 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.

38. In the SGP the Opponent particularised the s 60 ground of opposition as follows:

The Opponent is the owner of the trade mark “make your gut happy” and the Opponent’s trade mark has acquired a reputation in Australia since the Opponent commenced use of the trade mark on or about September 2021 in respect of flavoured prebiotic soft drinks.

Since commencement of operations and adoption of the Opponent’s mark on or about September 2021, the Opponent has committed substantial resources to the promotion of the Opponent’s Trade Mark throughout Australia and the Opponent’s products are available nationally online by virtue of their website and stocked in food service and independent retailers nationally and throughout Victoria, New South Wales, Queensland, Western Australia, Northern Territory and South Australia.

The supermarket operator Coles is a major stockist of the Opponent’s products in Victoria, New South Wales and Queensland and 7-Eleven Australia stocks the Opponent’s products in 720 stores nationally. Further, the Opponent distributes their goods to which their trade mark is applied to over 400 independent retailers with their most significant accounts in this regard comprising IGA Grocers and Foodworks with even further distribution of their products to over 1200 cafes nationwide.

39. In the SGP the Opponent relies on its ‘make your gut happy’ trade mark. Unlike section 44 of the Act, section 60 does not require that the goods upon which the Opponent uses its unregistered ‘make your gut happy’ trade mark be of a specified standard of similarity with the goods of interest to the Applicant, nor is there a requirement that the Opponent’s ‘make your gut happy’ trade mark be substantially identical or deceptively similar to the Trade Mark.

40.     It is for me to determine whether the Opponent has established that before 26 September 2022 its trade mark was recognized 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 Trade Mark would be likely to cause the public confusion.

41.     In relation to reputation Kenny J states in McCormick & Co Inc v McCormick[18]:

[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: …

[18] (2000) 51 IPR 102, [128-129].

42.     In considering whether the Opponent’s marks had acquired a reputation in its goods, I turn to the Opponent’s evidence.

43.     While the SGP does assert that the Opponent has used its ‘make your gut happy’ trade mark on prebiotic soft drinks, the Opponent’s evidence is limited to statements in Trento and the SGP which are unsupported by documents in the evidence. Exhibit LDT-01 accompanying Trento is an undated picture of a can of the Opponent’s soft drink. The rest of the Exhibits are in relation to the lapsed application.  Without actual evidence to support the assertions made in Trento, the SGP and the Opponent’s submissions I am unable to determine the level of reputation vested in the trade marks within the Australian marketplace. There is nothing before me to factually demonstrate that the Opponent sells it beverage goods to large traders in Australia or how much revenue has been generated through those sale or how much expenditure there has been on promotion of the Opponent’s goods. Therefore, I cannot be satisfied that use of the Trade Mark will lead a significant number of consumers to experience a reasonable doubt[19] as to the existence of some sort of connection between the Opponent’s ‘make your gut happy’ trade mark and the Trade Mark.

[19] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5 (Kitto J).

44. The Opponent has accordingly not established its ground of opposition under s 60.

Section 42

1. Section 42 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.

2. The Opponent pressed this ground of opposition solely on the basis that the use of the Trade Mark would be contrary to law (s 42(b)).  The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law.[20]  The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[21]

   [20] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683 (Madgwick J).

   [21] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353 (Wilcox J).

3. The Opponent has particularised the ground of opposition in the SGP in respect of the Trade Mark in the manner set out below: 

   i.Misleading or deceptive conduct contrary to Section 18 of the ACL;

   ii.ii. False or misleading representations about goods or services, contrary to Section 29 of the ACL, including specifically, subsections 20(g) and 29(h); and

   iii.iii. The Applicant’s use of the Opposed Trade Mark amounts to passing off at common law.

4. As previously stated the Opponent has failed to establish a ground of opposition under s 60. The test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘ACL’) is a more stringent one than that for deception or confusion under s 60,[22] and consequently I find that the Opponent has also failed to establish that the Applicant’s use of the Trade Mark would be contrary to s 18 of the ACL.

5. Paraphrasing the statement of the Registrar’s delegate in A G Professional Hair Care Products Ltd v Geagroup Invest SRL[23], 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. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act1974 (Cth)(‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[24] Sections 52 and 53 of the TPA were, respectively, the equivalent provisions to ss 18 and 29 of the ACL. Similarly, there is no evidence before me which would demonstrate that the Applicant’s use of the Trade Mark amounts to passing off at common law[25].

   [22] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36] (Hearing Officer Williams); Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).

   [23] [2014] ATMO 65, [50] (Hearing Officer Wilson).

   [24] [2003] FCA 104, [107] (Beaumont J).

   [25] Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506, [40] (Hill J).

6. For these reasons I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law. Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).

   Section 58 – Applicant not the owner of the trade mark

   51. Section 58 of the Act provides:

   58             Applicant not owner of trade mark

   The registration of a trade mark may be opposed on the ground that the Applicant is not the owner of the trade mark.

   52. In order to establish a ground of opposition under section 58, the Opponent must establish that:

   ·   the respective trade marks of the Applicant and Opponent are either identical or substantially identical,[26]

   ·   the respective services on which the trade marks have been or are to be used are the ‘same kind of thing’; and[27]

   ·   the Opponent has the earlier claim to ownership based on authorship[28] and use of its trade mark prior to both the filing of the application and any actual use of the opposed trade mark by the Applicant.[29]

   [26] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd (1994) 120 ALR 495; 31 IPR 375 (Gummow J).

   [27] Re Hicks’ Trade Mark (1897) 22 VLR 636 (Holroyd J).

   [28] Authorship in that sense involves the origination or first adoption of the word as and for a trade mark Aston v Harlee Manufacturing Company [1960] HCA 47; (1960) 103 CLR 391 [399]( Fullagar J).

   [29] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402 [413] (McGarvie J).

   53. In the SGP the Opponent particularised the s 58 ground of opposition as follows:

   The Opposed Trade Mark is deceptively similar to the Opponent’s Trade Mark in relation to the words “make your gut happy”. The Opponent has used their trade mark in Australia in relation to flavoured prebiotic soft drinks.

   Use of the Opponent’s Trade Mark commenced on or about September 2021 shortly after commencement of operations of the company and the Opponent’s Trade Mark has been continuously used and applied to the Opponent’s goods and promotional materials in relation to each of their products. The Opponent’s use of their trade mark commenced before the priority date of the Opposed Trade Mark application and according to searches conducted by the Opponent, there is no apparent use of the trade mark by the Applicant to date.

   Accordingly, the Applicant cannot claim to be the owner of the proposed trade mark in Australia in respect of various goods recited in class 32 of the Opposed Trade Mark application and hence, registration should be refused in accordance with Section 58 of the Act.

   54. As with s 60 of the Act, the Opponent’s evidence is limited to statements in Trento and the SGP which are unsupported by any documents in the evidence. There is nothing before me, apart from unsupported assertions, that the Opponent commenced using its ‘make your gut happy’ trade mark before the Priority Date. As such the s 58 ground of opposition is not established.

   Decision

   55.     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.

   56.     The Opponent has not established any grounds of opposition. The Trade Mark 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 Trade Mark shall not occur until the appeal has been decided or discontinued.

   Costs

   57.     It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Opponent under section 221 of the Act in terms of Schedule 8 of the Regulations.

   Bianca Irgang

   Hearing Officer

   Oppositions and Hearings

   Trade Marks and Designs

   7 February 2025