Canadian Standards Association v Connectivity Standards Alliance

[2025] ATMO 100

TRADE MARKS ACT 1995

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

Re:Opposition by Canadian Standards Association to extension of protection under regulation 17A.33 of the Trade Marks Regulations 1995 of trade mark number 2229294 (International Registration number 1626852) (35) – CSA (Figurative) – in the name of Connectivity Standards Alliance

Delegate:

Louise Tuohy

Representation:

Opponent: Gabriella Rubagotti of Counsel instructed by Baker McKenzie

Holder: Jessie Buchan of DLA Piper Australia

Decision:

2025 ATMO 100

Trade Marks Act 1995 (Cth) – opposition to extension of protection under regulation 17A.29 – sections 42(b), 58 and 60 considered – no ground established – protection may be extended to Australia

Background

1. This matter concerns an opposition made under reg 17A.33 of the Trade Marks Regulations 1995 (Cth) brought by Canadian Standards Association (‘Opponent’) to the extension of protection for the following International Registration Designating Australia (‘IRDA’) in the name of Connectivity Standards Alliance (‘Holder’):

   Trade mark:   (‘Trade Mark’)

   Australian trade mark number:         2229294

   International registration number:     1626852

   Filing date:  16 June 2021

   Specification:  Class 35: Association services, namely, promoting the goods and services of others in the field of interoperability standards and wireless communication standards; association services, namely, promoting the commercial interests of business and advertising services to promote public awareness in the field of interoperability standards and wireless communication standards.

   (‘Holder’s Services’)

2. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

3. The Trade Mark was examined and advertised as accepted for possible protection on 12 May 2023.  

4. On 12 July 2023 the Opponent filed a Notice of Intention to oppose extension of protection followed by its Statement of Grounds and Particulars (‘SGP’) on 14 August 2023. The Holder filed a Notice of Intention to Defend on 19 September 2023.

5. Thereafter the parties filed evidence in accordance with the Regulations. The Opponent filed the following evidence in support:

• Declaration of Christine Abi-Najem, Manager, Legal Operations at the Opponent, made on 18 December 2023, with Annexures 1 to 20 and Confidential Exhibits 1 to 3 (‘Abi-Najem’).

1. The Holder filed the following evidence in answer:

• Statutory Declaration of Michelle Mandala-Freeman, Chief Operating Officer of the Holder, made on 1 April 2024, with Exhibit MF-1 (‘Mandala-Freeman’).

1. The Opponent filed the following evidence in reply:

• Declaration of Kathryn Yung, Chief Legal, Ethics and Compliance Officer and Corporate Secretary at the Opponent, made on 7 June 2024, with Annexures 1 to 18 (‘Yung’).

1. Once time for filing evidence had ended, both parties were given an opportunity to either request an oral hearing or a hearing by way of written submissions. Both parties requested an oral hearing via videoconference. As a delegate of the Registrar of Trade Marks (‘Registrar’) I heard the matter by videoconference on 29 April 2025. Gabriella Rubagotti of Counsel instructed by Jonathan Flintoft of Baker McKenzie appeared on behalf of the Opponent. Jessie Buchan assisted by Sophie Tiberio of DLA Piper Australia appeared on behalf of the Holder. The parties’ oral submissions were supported by its written submissions filed prior to the hearing.

Grounds of Opposition, Date and Onus

1. Regulation 17A.34 provides that the extension of protection may be opposed on any of the grounds on which an IRDA may be rejected and also on the grounds set out in ss 58 to 61 and 62A.

2. In the SGP the Opponent nominated the grounds of opposition under ss 42(b), 43, 58, 60 and 62A. The Opponent advised in its written submissions that it was not pressing the ss 43 and 62A grounds of opposition. I therefore treat these grounds as abandoned.

3. The date at which the rights of the parties are to be determined is the filing date of the IRDA, being 16 June 2021 (‘Relevant Date’) which is also the priority date for the purposes of s 60.

4. 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] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132] (Besanko, Jagot and Edelman JJ).

Discussion

The Opponent

1. The Opponent is a not-for-profit association founded in 1919 as the Canadian Engineering Standards Association to resolve World War 1 compatibility issues among Allied nations’ technical resources. In 1946, it rebranded to the Opponent and in 1947 joined the International Organisation for standardisation. Today the Opponent engages in standards research, development, and through its subsidiaries testing, inspection and certification across 57 areas, including information technology and telecommunications.

The Holder

1. The Holder is a global, open standards organisation. The Holder’s predecessor Zigbee Alliance was established in 2002 and in May 2021 it announced that it was rebranding to the Holder’s name. The Holder’s has a global membership of over 700 companies across 48 countries and brings together the world’s most innovative companies for creating, maintaining and delivering open global standards for the internet of things (‘IoT’). The Holder has several standards including Zigbee and Matter aimed at simplifying and harmonising the future and interoperability of IoT and IoT devices.

Section 58

1. Section 58 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.

2. It is now well established in law that in order to succeed under this ground, the Opponent must establish three factors. These are:

• that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first factor’);[3]

• that the Holder’s Services are the ‘same kind of thing’ as the services for which the trade mark(s) relied upon by the Opponent was used (‘the second factor’);[4] and

• that a person other than the Holder has the earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark by the Holder (‘the third factor’).[5]

  [3] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [62] (Gummow J).

  [4] Re Hicks’s Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636, 640 (Holroyd J).

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

1. In the SGP the Opponent claims that the Holder is not the owner of the Trade Mark. It states that the Opponent has used the Trade Mark with alterations that do not substantially affect its identity, including the trade marks CSA, cCSAus, cCSAus Safety Shoes and the device trade mark in respect of business management, safety standards and performance, testing, inspection and certification services in various different areas of specialisation, including those for electrical and electronic equipment, industrial equipment, boilers and pressure vessels, compressed gas handling appliances, environmental protection, and construction material (‘Opponent’s Services’).

2. The Abi-Najem declaration and the Opponent’s written submissions include two other trade marks, namely CSA Group and CSA OnDemand. While these trade marks were not outlined the SGP, the Holder has addressed the addition of these trade marks in its EIA and written submissions. As such I will consider them for the purposes of ss 58, 60 and 42(b).  

3. With respect to the first factor, the test for whether trade marks are substantially identical was set out by Windeyer J in Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited as follows:

   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.

4. This test requires the trade marks to be considered side by side while having regard to the essential features of the trade marks. In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd,[6] the Full Court held that a comparison of trade marks is to be carried out cognisant of the essential elements of the trade marks, noting that essential elements are unlikely to be found in mere descriptive elements.

[6] [2017] FCAFC 83, [52] (Greenwood, Jagot, and Beach JJ).

1. For the purposes of comparison, I have reproduced the respective trade marks below:

Opponent’s Marks	Trade Mark
CSA (‘CSA Mark’)
CSA Group (‘CSA Group Mark’)
CSA OnDemand (‘CSA OnDemand Mark’)
cCSAus (‘cCSAus Mark’)
cCSAus Safety Shoes (‘cCSAUs Safety Shoes Mark’)
(‘Logo Mark’)

CSA Mark

1. On a side by side comparison I find that the CSA Mark and the Trade Mark are not substantially identical. The essential element of both trade marks are the letters CSA. The Trade Mark is for the letters CSA in lower case with a curved stripe joining the letters S and A. In comparison Opponent’s CSA Mark is for plain letters. I consider that the resultant shape created by the curve connecting the letters S and A is something that is more than a minor or common feature and creates a significantly different visual impression. The total impression emerging from a side by side comparison is not one of similarity.

CSA Group and CSA OnDemand Marks

1. On a side by side comparison I find that the CSA Group and CSA OnDemand Marks and the Trade Mark are not substantially identical. While all the trade marks share the essential element CSA. The Trade Mark is for the letters CSA in lower case with a curved stripe joining the letters S and A. In comparison the CSA Group and CSA OnDemand Marks are plain word trade marks which contain additional word elements. For these reasons a total impression emerging from a side by side comparison is not one of similarity.

cCSAus and cCSAus Safety Shoes Marks

1. On a side by side comparison I find that there are clear differences between the cCSAus and cCSAus Safety Shoes Marks and the Trade Mark. The Trade Mark is for the letters CSA and stylised elements. In comparison the cCSAus and cCSAus Safety Shoes Marks contain indicators for Canada (c) and the United States (us) before and after the core element CSA and the cCSAus Safety Shoes Marks contains additional word elements. Because of these indicators and word additions a total impression emerging from a side by side comparison is not one of similarity.

Logo Mark

1. On a side by side comparison I find that the Opponent’s Logo Mark and the Trade Mark are not substantially identical. The essential element of both trade marks are the letters CSA. The Trade Mark is for the letters CSA in lower case with a curved stripe joining the letters S and A. In comparison Opponent’s Logo Mark is for an incomplete circle forming the letter C with the stylised uppercase letters S and A inside. For these reasons a total impression emerging from a side by side comparison is not one of similarity.

2. As I have found that the Trade Mark and the Opponent’s Marks are not substantially identical, the first factor is not established. As the Opponent has failed to establish the first factor (and must establish all three factors to succeed under the s 58 ground of opposition), I find that the Opponent has not established the ground of opposition pursuant to s 58.  

Section 60

1. Section 60 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

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

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

   The trade mark/s had acquired reputation before the priority date of the trade mark being opposed. Founded in 1919, the Opponent is a leader in standards development and in testing, inspection and certification around the world, including Australia. The Opponent uses the marks CSA, cCSAus, cCSAus Safety Shoes and [the logo trade mark ] in respect of [the Opponent’s Services]. The Opponent’s Services have been offered under or by reference to the CSA Marks globally since at least 1946 and in Australia since at least 29 April 1976. As at the priority date of the opposed application, the Opponent enjoyed significant reputation in the CSA Marks in Australia in respect of the Opponent’s Services such that the Applicant’s use of the opposed mark will be likely to deceive or cause confusion.

3. To satisfy s 60 the Opponent must establish that the trade mark upon which it relies had a reputation in Australia at the priority date of the Trade Mark. The Opponent must then establish that because of that reputation, use of the Trade Mark would be likely to deceive or cause confusion.

4. In McCormick & Co Inc v McCormick, Kenny J asked what is intended by the word ‘reputation’ in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.12F9F[7]

   [7] [2000] FCA 1335, [81].

5. Justice Kenny also referred to the Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG, where the Registrar’s delegate observed:

   [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sale or turnover of goods sold under the trade mark and contemplation of the advertising and promotional figures.

   As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum sale, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorship, cross-promotions, ‘contra deals’ and so forth.

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sale may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an association of the trade marks with the goods or services themselves.14F11F[8]

   [8] (1999) 47 IPR 423, 436.

6. What constitutes a significant or substantial number of persons in the relevant market must be considered. Justice Heerey in Le Cordon Bleu BV v Cordon Bleu International Ltee provided some guidance:

   What is “significant” or “substantial” will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.F12F[9]

   [9] [2000] FCA 1587, [91], (albeit in relation to paragraph 28(a) of the now superseded Trade Marks Act 1955 (Cth)), (emphasis in original).

7. In considering the reputation of the Opponent’s Marks for the purposes of s 60, the Opponent must establish a reputation in each trade mark on which it relies.

8. The Opponent is a standards development organisation based in Canada. The Opponent is comprised of two organisations described below:

   (1)   Standards.

   The Opponent provides standards research, development, education, and advocacy. CSA standards (‘CSA Standard(s)’) cover 57 different areas of specialisation including electrical and electronic equipment, gas fired appliances, building materials, environmental protection, and information technology and telecommunications.

   (2)   Testing, Inspection and Certification.

   The Opponent’s global commercial subsidiaries provide testing, inspection and certification services that enable manufacturers to demonstrate that their products comply with applicable standards for markets around the world.

9. Abi-Najem states that the Opponent’s Services have been offered under or by reference to the Opponent’s Marks in Australia since at least 29 April 1976, when it entered into a factory agreement with an Australian entity.[10]

   [10] Abi-Najem [16], Confidential Exhibit 1.

10. Abi-Najem declares that the Opponent currently has a total of 251 active contracts and projects in Australia with services ranging from safety equipment, electrical equipment, lighting, medical, energy and power. Confidential Exhibit 2 to Abi-Najem comprises an annual breakdown of new contracts and projects undertaken by the Opponent in Australia from 2017 to 2023. Abi-Najem also declares that the Opponent has entered into various service agreements and memorandum of understanding with Australian entities and associations.[11]

    [11] Abi-Najem [30], Confidential Exhibit 3.

11. Abi-Najem attests that since 1976 the Opponent has certified products in Australia and that it works closely with Australian companies through the testing and certification process to ensure products meet CSA standards. Annexure 2 to Abi-Najem comprises extracts from the Opponent’s website (‘CSA Website’) which provides a list of 72 Australian products certified by the Opponent and the extracts feature the CSA Group and Logo Marks.

12. Annexures 3, 4 and 5 to Abi-Najem comprises screenshots from the CSA Website of the  certification records for three Australian products and copies of articles published by the owners of these products:

• certification record for process control equipment (certified for hazardous locations) featuring the CSA Group and Logo Marks and article by Trio Datacom Pty Ltd listing CSA standards and an article by Schneider Electric featuring the CSA Mark and CSA standards; [12]

• certification record for domestic gas cooking appliances featuring the CSA Group and Logo Marks and article by Thermofilm referencing CSA standards; and

• certification record for leather shoes (certified to United States standards) featuring the CSA Group and Logo Marks and article by Redback Boots referencing the CSA Group licence number and CSA standards.[13]

  [12] Abi-Najem [18], Annexure 3.

  [13] Abi-Najem [18], Annexure 5.

1. Annexure 6 to Abi-Najem comprises sample copies of Certificates of Compliance issued by the Opponent to Australian businesses dated between 2009 to 2020. The certificates show compliance for process control equipment (certified for hazardous locations), telecommunications equipment (certified to United States standards), industrial control switches, and a battery system for use in stationary applications (certified to United States standards) and reference the CSA standards. The certificates feature the CSA Group Mark and/or Logo Mark and/or the Logo Mark with additional country indicators ‘C’ and/or ‘US’ and the CSA standards.

2. Abi-Najem attests that the Opponent offers its CSA standards in Australia through its online store at and through the SAI Global website saiglobal.com/en-au/ (‘SAI Website’). Annexure 17 to 18 of Abi-Najem comprise extracts from the SAI Website including the information page about the Opponent and a sample of the CSA standards available for purchase featuring the CSA Group and Logo Marks.[15]

   [15] Abi-Najem [22], Annexure 17 to 18.

1. Abi-Najem states that the Opponent’s Marks and CSA standards have been promoted on Australian websites. Annexure 7 to Abi-Najem comprises an extract from the website lappaustralia.com.au dated 2019 which promotes the CSA and Logo Marks in relation to CSA standards for electrical and electronic materials and equipment. Annexure 8 to Abi-Najem comprises an extract from the website dated 2011 displaying the CSA Mark in relation to CSA standards for electrical circuits. Annexures 9, 10, 11 and 12 to Abi-Najem comprise pages from the Australian Steel Institute which provides members library access to CSA standards for the design of steel structure and the manufacturer of steel building systems.   

2. The Opponent’s CSA standards have been acknowledged in the following Australian standards:

• the Australian standard for ‘Electrical equipment for explosive atmospheres’ published in 1979 which relied on the CSA standards issued in 1979. The standard acknowledges that the Opponent provided assistance in the development of the Australian standard;[16]

• the Australian standard AS 4722:2018 for ‘Passenger Ropeways and Passenger Conveyors’ sets out requirements and guidelines within the scope of CSA standard CSA Z98-14;[17]

• the Australian standard AS/NZS 60079.30.2:2016 for ‘Explosive atmospheres Electrical resistance trace heating - Application guide for design, installation and maintenance’ references the CSA standard CSA C22.1;[18] and

• the Australian standard AS/NZS 3130:1995 for ‘Approval and test specification - Beauty therapy equipment’ includes CSA Electrical Bulletins 750B AND 750C. [19]

  [16] Abi-Najem [22], Annexure 13.

  [17] Abi-Najem [22], Annexure 14.

  [18] Abi-Najem [22], Annexure 15.

  [19] Abi-Najem [22], Annexure 16.

1. Abi-Najem states that the Australian government often relies on the Opponent’s standards and services. Annexure 19 to Abi-Najem comprises a comparative analysis of Australian standard AS 4708(Int)-20003 and CSA standard CAN/CSA Z809-02 by the Forest and Wood Products Research and Development Corporation dated 2004.

2. Yung states that the Opponent offers a suite of standards and while it does in some cases resell standards published by third party standards organisations including the International Organisation for Standardisation and the International Electrotechnical Commission, it publishes its own standards for example standards relating to cybersecurity, IoT, programming languages, software and systems engineering, data management, privacy and cloud computing,[20] and in the energy, renewable energy and power generation areas.[21]  

   [20] Yung, Annexures 4 to 8.  

   [21] Yung [21], Annexures 9 to11.

3. Yung declares that the Opponent provides both testing and certification in the specialised fields of cybersecurity and IoT connected products and services.[22] Yung states that in addition to these specialised fields the Opponent offers testing and certification for a range of information technology products and solutions,[23] and for power generation and energy storage.[24]

   [22] Yung [6] to [8], Annexure 1.

   [23] Yung [16] to [17], Annexure 6.

   [24] Yung [25] to [26], Annexure 11.

4. Yung declares that owners of products and services that have been tested and certified by the Opponent are authorised to use the CSA certification mark of conformity (i.e. Logo Mark) for importation into Canada, the United States and other markets. Yung attests that the Logo Mark ‘is printed on billions of products worldwide, both consumer and industrial products’. For example, the Logo Mark is printed on the packaging of Apple AirPods devices.[25]

   [25] Yung [35], Annexure 16.

5. Yung avers that the Opponent operates 34 offices worldwide in 13 countries in particular Canada, the United States, Italy, Germany, the Netherlands, the United Kingdom, India, Japan, China, Korea, Singapore and Taiwan. Yung claims that because of the high incidence of Australians travelling to these jurisdictions, many Australian consumers would have come across the Opponent’s Marks and would recognise them. To support this claim Yung annexes[26] a national visitor survey report dated September 2023 and published by Austrade. The report shows the number of outbound overseas visitors from Australia to the jurisdictions described above.  

   [26] Yung, Annexure 18.

6. The Holder submits the Opponent’s evidence does not support the claimed reputation in any of the Opponent’s Marks. To illustrate, the Holder argues that many of the instances of “use” relied upon by the Opponent do not disclose use as a trade mark. For example: CSA is often used interchangeably with “Canadian Standards Association”, or descriptively such as CSA standards; and CSA is predominately used in the context of a specific standard, therefore is used in a descriptive sense.

7. The Holder argues that based on the Opponent’s evidence, it is clear that whatever reputation there is, is limited to Canada and not Australia. For example, the figures disclosed by the Opponent in relation to its active contacts and projects and the sale of its standards in Australia are not substantiated by its evidence. Moreover, the Opponent’s evidence establishes that its services are only relevant to an Australian business for the purposes of demonstrating overseas compliance and therefore may only be relevant to a business that has international operations. The Holder also submits that it is unclear how statistics relating to outbound overseas visitors from Australia correlates in any way to the statement that those consumers would have come across the Opponent’s Marks and would recognise them.

8. In my assessment of the evidence, I am satisfied that the Opponent has established a limited reputation in its CSA, CSA Group and Logo Marks in relation to the sale of CSA standards and testing and certification services. In regard to the CSA Mark, I agree with the Holder that the evidence shows that is it is used predominately in the context of a specific standard, however, whether a sign does in fact act as a trade mark will depend on the actual manner of use, including its prominence, its meaning in the context of the goods and services, and its presentation in the material surrounding it. In this case, the letters CSA appear at the beginning of all the Opponent’s standards and material surrounding references to CSA standards include references to the Opponent either by using the Opponent’s full name Canadian Standards Association or by using the CSA Group and/or Logo Marks. As such I believe that consumers would perceive the acronym CSA in the heading of a specific standard, as being a standard developed by the Opponent and demonstrates the Opponent’s CSA Mark has a reputation in relation to publications relating to standards in a variety of sectors and the sale thereof. Other than the Opponent’s CSA, CSA Group and Logo Marks, I have not found any use of the remainder of the Opponent’s Marks.

9. The evidence adduced by the Opponent indicates that the Opponent’s CSA, CSA Group and Logo Marks have been used in Australia for around four decades. The Opponent’s sales figures relating to the sale of CSA standards are limited and its stated new contracts and projects undertaken in Australia are not supported by evidence, nonetheless, the evidence of Australian products which have received certification demonstrates Australian manufacturers and individuals that wish to sell their products in Canada, the United States and other markets with the aim of facilitating trade by ensuring product interoperability and compliance, seek out the Opponent’s CSA standards and certification and testing services. However, I am not convinced that the Opponent’s reputation extends to the Australian population generally. There is no evidence that individuals or groups that actually purchase and utilise the goods and services that have been tested and certified by the Opponent and marked with any of the CSA, CSA Group or Logo Marks recognise the Opponent as the trade source.

10. It is not sufficient that the Opponent merely establishes that its CSA, CSA Group and Logo Marks have a limited reputation, I must also be satisfied that because of that reputation the use of the Trade Mark would be likely to deceive or cause confusion. There is no requirement that the CSA, CSA Group and Logo Marks are substantially identical or deceptively similar to the Trade Mark, nor that the goods and/or services of the parties are similar. Nonetheless, resemblance between the parties trade marks remain a relevant factor, as noted in Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd12F  wherein Hearing Officer Lyons said:

    Confusion cannot 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.

    What can be said then of section 60 as we now find it is that it comprehends that the trade marks under comparison might be quite dissimilar, and yet, taken in combination with the repute of the opponent’s trade mark (and possibly other factors), deception or confusion is still more likely than not. Put another way, section 60 now contemplates that an opponent may prevail because of the reputation in the mark on which it relies notwithstanding that the trade marks under comparison may even be quite dissimilar. ^[27]

    [27] [2010] ATMO 5, [39]-[40].

11. In this case the Opponent’s CSA, CSA Group and Logo Marks and the Trade Mark are similar in that they all share the letters CSA, however I consider the Opponent’s and the Holder’s consumer base - noting that the parties share some customers and/or members, for example Apple Inc has products certified by the Opponent and is a member of the Holder[28] - would be astute to the small visual differences in the trade marks as the Australian public generally are quite used to acronyms in the market place and are used to relying on small differences to distinguish between them.[29]  

    [28] Mandala Freeman, Tab 1.

    [29] Australian Meat Group Pty Ltd v JBS Australia Pty Limited [2018] FCAFC 207, [83] (Allsop CJ, Besanko and Yates JJ).

12. In respect of the comparison of services, I have found that the Opponent has established a limited reputation in relation to its standards publications, the retail sale of standards and certification and testing services, however I do not consider these goods and services are similar to or the same kind of thing as the Holder’s Services. The Holder’s Services are promotional services whereas the goods and services in which the Opponent has a reputation are published goods, retail services directly supporting the sale of those published goods and technical services i.e. testing and certification services. The Opponent’s services do not have the same natures, uses or trade channels as the Holder’s Services.

13. In the circumstances considering the limited reputation in the CSA, CSA Group and Logo Marks in Australia and the differences between the Holder’s Services and those in which the Opponent has shown a limited reputation, I am not satisfied that use of the Trade Mark would be likely to deceive or cause confusion.

14. The ground of opposition under s 60 has not been established.

Section 42(b)

1. Section 42(b) provides:

   42  Trade mark scandalous or its use contrary to law

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

   …

   (b) its use would be contrary to law.

1. The case law on s 42(b) requires the Opponent to show that use of the Trade Mark would be, rather than could or might be, contrary to law.[30] As observed by Rangiah J in Primary Health Care Limited v Commonwealth of Australia:

   It is not enough for a party opposing registration to show that s 18 of the ACL [Australian Consumer Law 2010] or s 52 of the TPA [Trade Practices Act 1974] might be contravened. The opponent must prove, on the balance of probabilities, that the provision would be contravened by use of the trade mark.[31]

   [30] Advantage Rent a Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).

   [31] [2017] FCAFC 174, [411].

2. The Opponent submits that registration of the Trade Mark should be refused under s 42 as the use by the Holder in relation to the Holder’s Services would be likely to mislead or deceive contrary to ss 18 and s 29 of the Australian Consumer Law (2010) (Cth) (‘ACL’).

3. The Opponent argues that were the Holder to use the Trade Mark in respect of the Holder’s Services and to apply or otherwise to use or to authorise the use of the Trade Mark on or in relation to the goods or services of others, the Trade Mark in that context, would convey at least the following:  

• the Holder’s use of the Trade Mark essentially as a certification mark is likely to mislead or deceive consumers or to make a false representation to such consumers – and especially those familiar with the certification process and the Opponent and its certification process – that the goods or services to which they are applied meet specific standards (e.g., safety, quality) verified by the Opponent or its subsidiaries;

• the Holder’s use of the Trade Mark could deceive these consumers into thinking the relevant goods or services meet the Opponent’s standards; and

• the Holders use of the Trade Mark would be likely to mislead or deceive consumers, not only by suggesting that the Holder’s Services are those of the Opponent or are otherwise endorsed by it, contrary to fact, but also by falsely suggesting that the services in respect of which the Holder might notionally use the Trade Mark, and indeed the goods or services of third parties which they might be applied, comply with longstanding and rigorous testing and certification procedure undertaken by the Opponent.

1. To support the Opponent’s submissions Annexures 12 to 15 in Yung comprise extracts from the Holder’s Facebook, X, Linkedin, and YouTube accounts captured in May 2024 and dated between 2022 to 2024. The pages feature use of the Trade Mark in relation to the promotion of its ‘Product Security Certification Program’ webinar, its Annual Report highlighting the impacts of certification and marketing, its IoT Device Security Specification and its Zigbee and Matter protocols.

2. The Opponent also submits that whereas s 60 relies on an opponent’s reputation in its prior trade mark and the capacity for confusion in light of that reputation, ss 18 an 29 of the ACL focus on the Applicant’s trade mark and its effect upon consumers in Australia.

3. In response the Holder argues that the Trade Mark is not being used as a certification trade mark nor is the IRDA for a certification trade mark. The Holder also notes that the Opponent’s pending Australian trade mark applications for the CSA Mark (trade mark number 2419172) and for the Logo Mark (trade mark number 2418173) are not filed as certification trade marks. The Holder states that the Opponent’s submissions on this point are therefore without merit, nor are they supported by evidence. The Holder’s Trade Mark is very clearly used in relation to the Holder’s Services which are highly specialised and consumers would not be likely to be mislead or deceived as between the origin of the Holder’s Services.

4. Under s 18 of the ACL there would be misleading or deceptive conduct if, in offering the Holder’s Services the Holder were to present either overtly or indirectly[32] an association between itself and the Opponent as by way of approval, endorsement or recommendation.[33] In reviewing the total of the Opponent’s evidence before me I have not found the Holder has engaged in any such conduct. While the evidence shows that the Holder promotes its certification programs and protocols under the Trade Mark, there is no evidence that these promotions suggest an association with the Opponent’s certification services, nor is there any evidence the Holder directly applies the Trade Mark to products as a certification mark. Furthermore, the Opponent has not provided any evidence of consumers being misled.

   [32] Seven Network Ltd v News Interactive Pty Ltd (2004) 63 IPR 28 [32] (Tamberlin J).

   [33] As noted in Twentieth Century Fox Film Corp v South Australian Brewing Co Ltd (1996) 34 IPR 225 [242], (Tamberlin J). , the precise nature and content of the association may be difficult to define. See also Subafilms Ltd v Tenancy Management Pty Ltd [2006] ATMO 11 [25] to [27], (Hearing Officer O’Brien).

5. Regarding the Opponent’s submissions that ss 18 and 29 of the ACL focus on the Applicant’s trade mark and its effect upon consumers in Australia, I agree that a prior reputation is unnecessary to find a contravention of s 42(b), I also add that any reputation of the Opponent’s Marks will form part of the context in which the assessment of the likelihood of persons being deceived or misled will be made.[34] As I have found under the s 60 ground that the Opponent only had a limited reputation in the CSA, CSA Group and Logo Marks, taken together with the lack of evidence from the Holder referred to above, I am not satisfied that the Opponent has discharged its onus to establish that use of the Trade Mark would be likely to mislead or deceive within the meaning of s 18 of the ACL.

   [34] Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd [2007] FCAFC 70, [99] (Black CJ, Emmett and Middleton JJ).

6. In relation to s 29 of the ACL it has been held that where a trade mark does not offend s 18 of the ACL, neither will it offend s 29 of the ACL.[35]  Section 29 of the ACL prohibits a corporation from making false representations in the course of trade. This is a narrower test than that contained in s 18 and there is nothing in the Trade Mark, nor in the way the evidence shows the Holder promoting the Holder’s Services, to satisfy me any such misrepresentation has been made.  

   [35] In Pacific Publications Pty Ltd v IPC Media Pty Ltd [2003] FCA 104, Beaumont J considered – in connection with the superseded TPA that ‘the Court’s conclusion on section 52 would necessarily carry with it a conclusion on section 53 (c) and (d).’ Sections 53(c)-(d) of the TPA are the equivalent provisions to ss 29(1)(g)-(h) of the ACL.

7. For completeness relief pursuant to the tort of passing off is only possible if there has been some sort of misrepresentation which is likely to damage the Opponent’s association.[36]  The opponent has established neither.

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

8. Therefore, the Opponent has failed to establish its ground of opposition under s 42(b).

Decision

1. Regulation 17A.34N provides:

   17A.34N  Decision on opposition

   (1) Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

   (a)to refuse protection in respect of all of the goods or services listed in the IRDA;

   or

   (b) to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations); having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.

   (2) The Registrar must notify the International Bureau of the Registrar’s decision.

2. The Opponent has not established the grounds on which the IRDA was opposed and it is appropriate that the Registrar extends protection to the IRDA.

3. The IRDA may proceed to protection 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 protection shall not occur until the appeal has been decided or discontinued and the protection of the IRDA be subject to any orders of the Court.

4. The International Bureau will be notified of the Registrar’s decision.

Costs

1. Both parties sought an award of costs. 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 s 221 in line with Schedule 8 of the Regulations.

Louise Tuohy

Hearing Officer

Delegate of the Registrar of Trade Marks

3 June 2025

[14] Abi-Najem, Confidential Exhibit 3.