Comet S.p.A. v Comet Cleaning Group Pty Ltd

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Oppositions by Comet S.p.A. to registration of trade mark application numbers 2422225 – COMET CLEANING and 2422226 - COMET CLEANING (stylised) both in class 37 and both in the name of Comet Cleaning Group Pty Ltd

Delegate:

Anne Makrigiorgos

Representation:

Opponent: Spruson & Ferguson

Applicant: HWL Ebsworth Lawyers

Decision:

2025 ATMO 162

Trade Marks Act 1995 (Cth) – oppositions under s 52 – ss 42(b), 44, 58A, 60 and 62A pursued – no ground of opposition established – trade marks to proceed to registration.

Background
1. This is a decision in respect of oppositions under s 52 of the Trade Marks Act 1995 (Cth)[1] by Comet S.p.A. (‘Opponent’) to registration of the following trade mark applications (‘Applications’) filed on 22 January 2024 (‘Relevant Date’) in the name of Comet Cleaning Group Pty Ltd (‘Applicant’):
[1] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth) and each reference to a regulation is a reference to a regulation in the Trade Marks Regulations 1995 (Cth).

Number

Trade mark[2]

Specification[3]

2422225

COMET CLEANING

(‘Word Mark’)

Class 37: Building cleaning; Window cleaning; Office cleaning services; Industrial cleaning services; House cleaning services; Cleaning services; Cleaning of property; Cleaning of commercial premises; Cleaning of domestic premises; Cleaning of factories; Cleaning of hospitals; Domestic cleaning; Mechanical and chemical cleaning services

2422226

(‘Stylised Mark’)

Class 36: Building cleaning; Window cleaning; Office cleaning services; Industrial cleaning services; House cleaning services; Cleaning services; Cleaning of property; Cleaning of commercial premises; Cleaning of domestic premises; Cleaning of factories; Cleaning of hospitals; Mechanical and chemical cleaning services; Domestic cleaning services

[2] The Word Mark and Stylised Mark will be collectively referred to as the Applicant’s Marks.
[3] The specifications are virtually identical differing only in the use of ‘domestic cleaning services’ in the Stylised Mark and ‘domestic cleaning’ in the Word Mark. I shall therefore refer to the services of both marks as the Applicant’s Services.

The Applications were examined and advertised as accepted for possible registration on 23 June 2024.
On 5 August 2024, the Opponent filed Notices of Intention to Oppose. On 3 September 2024, the Opponent filed identical Statements of Grounds and Particulars (‘SGP’). The Applicant filed Notices of Intention to Defend on 20 September 2024.
The Opponent filed Evidence in Support (‘EIS’) on both Applications on 20 December 2024, being identical declarations of Paolo Bucchi, Commercial Executive Officer of the Opponent dated 19 December 2024 with Annexures 1 to 13 including Confidential Annexures 8 and 13 (‘Bucchi’). The Applicant did not file Evidence in Answer.
The parties were given the opportunity to either request an oral hearing or to file written submissions. While neither party elected to be heard, the Opponent requested a decision without a hearing. I am a delegate of the Registrar of Trade Marks and this matter has been allocated to me to determine. I have decided this matter based on the particulars set out in the SGP and the evidence of the Opponent.
Grounds and onus
6. The SGP nominates grounds of opposition under ss. 42(b), 44/reg 4.15A, 58A, 60 and 62A. The Opponent carries the burden of establishing one or more of the grounds of opposition[4] on the balance of probabilities.[5] The date at which the rights of the parties are to be determined is the Relevant Date.[6]
[4] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[5] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
[6] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J) (‘Southern Cross’).
Summary of EIS
Bucchi provides the following details of the Opponent’s registration and International Registration Designating Australia (‘IRDA’):

Number

Trade mark[7]

Class and Goods

Priority date

Registration 823612[8]

(‘612 Mark’)

Class 7: High pressure water cleaner machines; parts and fittings for all the aforesaid goods

14 February 2000

IRDA 2392390[9]

(International number 1752638)

(‘390 Mark’)

Class 7: see Annexure A

2 May 2023

[7] The trade marks of the registration and IRDA are virtually identical so they will be hereinafter referred to as the Comet Mark.
[8] Endorsements: Provisions of paragraph 44(3)(a) applied.: Provisions of subsection 44(4) applied.
[9] Endorsements: Provisions of paragraph 44(3)(a) and/or Reg 4.15A(3)(a) applied.; Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.: The applicant has advised that the words in the Mark have no meaning in English. This IRDA is under opposition by a third party.
History of the Opponent

According to Bucchi, the Opponent is a specialised machinery manufacturing company based in Italy with a global presence in 130 countries. The Opponent manufactures components in the agricultural and industry sectors and finished products in the cleaning sector. The range of goods in the agricultural and industry sectors are pumps which are used as components of spraying and weeding machines, carwash systems, road washing machines and industrial and urban cleaning applications. The range of goods in the cleaning sector are high pressure cleaners, vacuum cleaners and scrubber-driers (‘Opponent’s Goods’).
Bucchi states that the Opponent’s Goods have a vast array of uses and applications including home and professional cleaning using high-pressure cleaners, vacuums and scrubber-driers and as components of spraying and weeding machines, carwash systems, road washing machines and industrial and urban cleaning machines for pumps. Bucchi annexes undated printouts from the Opponent’s website at which provides information about the Opponent and the Opponent’s Goods. I note the following appears on the website:
·     The Comet Mark.
·     Reference to ‘a wide range of hot and cold high-pressure washers[10] dedicated to both home and professional use, and vacuum cleaners, floor scrubbers?, sweepers and hot steam generators’.
[10] In this decision the words washers and cleaners will be used interchangeably.
·     The statement ‘this range has recently been extended with the introduction of two new lines, vacuum cleaners and scrubber driers …’.
·     Reference to pressure washers and floor care under the heading ‘Professional Cleaning Equipment’.
Use of the Comet Marks in Australia
Bucchi claims the Opponent first used its Comet Mark in Australia in 1974 when it began collaborating with Silvan Australia (‘Silvan’), a rural and farming manufacturer and distributor of sprayers and atomisers, amongst other goods. Bucchi states that since 1974, the Opponent has provided Silvan with pumps branded with the Comet Mark, which Silvan uses as a part of other products such as sprayers and washing and industrial appliances. Bucchi annexes a copy of Silvan’s product catalogue dated November 1974 where I note some pumps display the trade mark shown below:
.
Bucchi states that the Opponent has been selling the Opponent’s Goods under the Comet Mark in Australia through three authorised distributors (‘Distributors’) since 2001:
·Engineered Products Group Pty Ltd (2001 to 2007);
·B.A.R. Group Pty Ltd (‘BAR Group’); and
·Silvan.
Bucchi annexes:
·     undated printouts and Wayback Machine printouts dated 20 March 2017 and 22 October 2023 from the BAR Group website where I note use of the Comet Mark on pumps and parts before the Relevant Date and use of the Comet Mark on pressure washers, pumps and parts on the undated printouts.
·     BAR Group promotional materials:
Ø 2008 price list where the Comet Mark is used in respect of the Opponent’s pumps including as parts of BAR Group’s pressure washers and also in respect of a wall mounted pressure washer, motor pump sets and parts.
Ø 2012 user manual for the Opponent’s pumps where I note use of the Comet Mark.
Ø 2023 specials price list featuring pressure washers which contain the Opponent’s pumps and a pressure washer which display the Comet Mark.
Ø Undated wholesale price list claimed to be from 2023 which states ‘special pricing to 15/2/2024’ featuring pressure washers which contain the Opponent’s pumps and a pressure washer which display the Comet Mark.
Ø Undated specials price list featuring pressure washers which contain the Opponent’s pumps where I note use of the word mark COMET (‘Word Mark’).
Ø Undated flyer featuring a Honda pressure washer which contains the Opponent’s pumps where I note use of the Comet Mark and the Word Mark.
·     Undated printouts and Wayback Machine printouts dated 18 September 2017 and 4 November 2022 from the Silvan website where I note use of the Word Mark to describe the pumps which drive Silvan’s spraying equipment. The spraying equipment itself does not display the Comet Mark or the Word Mark.
·     A late 2024 Silvan catalogue which displays the trade mark below pictures of Silvan pumps and adjacent to Silvan branded pump service kits.
12.    Bucchi attests that the Opponent’s Goods under the Comet Mark are sold to the Distributors who on-sell the goods to Australian consumers and third-party retailers naming five online retailers. Bucchi annexes:
a collection of fourteen invoices from the Opponent to Silvan dated between 21 January 2008 and 29 September 2020 and sixteen invoices to BAR Group dated between 10 June 2010 to 3 March 2023 which itemise products sold by the Opponent (‘Invoices’). I note that until around 2014/2015, the Invoices have a general description of the products as one or more of ‘agricultural products, agricultural pumps, industrial pumps, h p (high pressure) cleaners, spare parts and accessories’. After 2014/2015 the Invoices no longer provided a general description of the products. All the Invoices are in a format where each itemised product has a reference number followed by a description which generally consists of mixtures of words, letters and/or numbers (‘Codes’).
·     undated printouts from the websites of the five online retailers showing the Opponent’s Goods offered for sale to Australian consumers under the Comet Mark as follows:
Ø - a BAR branded pressure washer with a Comet pump and no reference to the Comet Mark.
Ø – a Comet pressure washer and use of the Comet Mark.
Ø - three Comet pressure washers which display the Comet Mark.
Ø - a Comet pressure washer which displays the Comet Mark.
Ø - a Comet pressure washer which displays the Comet Mark.
13.    Bucchi claims that the Opponent has advertised the Opponent’s Goods under the Comet Mark on social media, namely Facebook since 2013, LinkedIn since 2014 and YouTube since 28 January 2012. As of 16 December 2024, all these social media sites have low follower or subscriber numbers.
14.    Bucchi annexes a confidential table of the Opponent’s annual sales figures in Australia in euro for the Opponent’s Goods for the period of 2001 to 2023 which are substantial.
Discussion and Reasons
Section 44
Section 44 relevantly provides (some notes omitted):
Identical etc. trade marks
(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a) it is substantially identical with, or deceptively similar to:
(i)a trade mark registered by another person in respect of similar services or closely related goods; or
(ii)a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
Note 1:For deceptively similar see section 10.
Note 2:For similar services see subsection 14(2).
Note 3:For priority date see section 12.
The SGP nominates the 612 and 390 Marks.[11]
[11] As the 390 Mark is an IRDA, the technical ground for rejection is under reg 4.15A rather than s 44. However, as the terms are substantively identical for all relevant purposes and for ease of reading, I have retained the reference to s 44 in this decision. References to s 44 as considered in the present decision should also be taken to read reg 4.15A.
To successfully oppose the Applications pursuant to s 44, the Opponent must establish each of the following requirements:
·the 612 and 390 Marks have a priority date which is earlier than the Relevant Date and are held in a name other than that of the Applicant (‘first requirement’);
·the Applicant’s Services are closely related to the goods of the 612 or 390 Marks (‘second requirement’); and
·one of the Applicant’s Marks is substantially identical with or deceptively similar to the Comet Mark (‘third requirement’).
I am satisfied that the priority dates of the 612 and 390 Marks are earlier than the Relevant Date and that the 612 and 390 Marks are in a name other than the Applicant. Therefore, the first requirement is satisfied.
The Applicant’s Services cover a broad range of cleaning services. The 612 Mark covers cleaning machines and their parts and accessories and the 390 Mark can be categorised as covering a broad range of machines and parts and accessories of machines including pumps; cleaning, scrubbing, washing, sand-blasting, spray painting and polishing machines, apparatus and appliances; compressed air machines, compressors and engines for compressors; suction machines; nebulizers not for medical use and spraying machines and boilers.
The Act does not define the words ‘closely related’. In Registrar of Trade Marks v Woolworths Ltd, French J stated that the relationship between goods and services, ‘may, and perhaps in most cases will, be defined by the function of the service with respect to the goods’.[12] His Honour went on to cite Lockhart J in Caterpillar Loader Hire (Holdings) v Caterpillar Tractor Co:[13]
[12] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [38].
[13] [1983] FCA 143, 150.
Confusion is more likely to arise where services protected by service marks necessarily involve the use or sale of goods or where services (for example, consultancy services) involve goods but can be provided either with or without the sale or promotion of goods.
The nature, function and circumstances of the trade, such as trade channels, are also relevant as is the likelihood of consumer association of the services with the goods, because they are generally offered by the same people.[14]
[14] Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods [2023] FCA 487, [40] (Kennett J). See also Enagic Co Ltd v Horizons (Asia) Pty Ltd (No 3) [2021] FCA 1512, [33] (Charlesworth J).
A detailed list of questions relevant to whether goods or services are closely related was set out in Re Aussat Pty Ltd[15] namely:
[15] [1993] ATMO 55 (Hearing Officer Thompson).
·are the goods and services of matching technical complexity?
·is the technical training of the people who make the goods or provide the services the same?
·do the people who make the goods or provide the services belong to the same unions or associations?
·are there personnel who are implicit in the provision of the service, or a necessary ancillary to the provision of it, who are viewed by the ordinary person as having the essential expertise in common to the provision of either the goods or services?
·do the goods usually have this service as a related service agreement or package?
·is the nature of the goods or the service such that they would cease to exist without each other, thus creating an expectation of a common source?
·does the service consist of altering, matching and/or installing the goods to a customer's or client's requirements?
·are the goods and services commonly offered by the one company or organisation?
·are the goods a necessary adjunct to a particular service or the only tangible result of it?
It can also be relevant as to whether the services are performed directly upon or by the means of the goods and whether the goods and services are generally regarded by the ordinary consumer as originating in, or as being part of, the one industry or trade, or a closely related industry or trade.[16]
[16] Re Aussat Pty Ltd [1993] ATMO 55 (Hearing Officer Thompson).
In considering the Applicant’s Services and the goods of the 612 and 390 Marks, I should look to the ordinary meaning of the words and their notional normal and fair use, not restricting myself to how or in what goods or services the Opponent or Applicant actually trade. I should consider the context in deciding whether ordinary consumers of the goods and services would see the goods and services as having the same trade origin[17] and judge the goods and services on the basis of business realities and common sense.[18]
[17] Southern Cross (n 6), 606; E & J Gallo Winery v Lion Nathan Australia Pty Limited [2009] FCAFC 27, [73] (Moore, Edmonds and Gilmour JJ).
[18] Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd (1993) 26 IPR 246, 259 (Burchett J).
The question here is whether the cleaning services are ‘closely related’ to the goods of the 612 or 390 Marks. The question turns on the relationship between the categories of goods and services. The Opponent has not provided any evidence to allow any informed conclusion about how commonly cleaning services and the goods of the 612 or 390 Marks are provided through the same channels or outlets. Nor does it support any finding of an expectation or understanding among consumers that the goods and services under comparison come from the same source.
I consider the determination as to whether the Applicant’s Services are closely related to the following goods of the 390 Mark to be very straightforward. The natures, uses and trade channels of the respective goods and services differ markedly. On the basis of business realities and common sense, the Applicant’s Services are obviously not closely related to these goods and nor would the public expect the same business to supply cleaning services and to manufacture or supply these goods:
Pumps for agriculture, industry and do-it-yourself; motor pumps for agriculture, industry and do-it-yourself; electric pumps for agriculture, industry and do-it-yourself; pumps [parts of machines, engines or motors]; motor pumps; centrifugal motor pumps; high pressure piston pumps; motors for pumps; compressed air machines; spray paint machines; sputter coating guns; grease guns operated by compressed air; guns for compressed air spraying machines; compressed air guns for the extrusion of mastics; spray lances being agricultural implements; thermic lances [machines]; head attachments for power tools; water swivels [hydraulic couplings]; fuel nozzles; tubes being fitted parts of machines; reels, mechanical, for flexible hoses; power-operated garden hose reels; joints for pipes (metal -) [parts of machines]; clamp connectors for piping [parts of machines]; joints for tubes [parts of machines]; hoses (non-metallic -) for use in hydraulic systems in machines; hoses (metal -) for use in hydraulic systems in machines; joints for tubes (metal -) [parts of engines]; filters being parts of machines or engines; ejectors; hydro-pneumatic accumulators; hydraulic accumulators; valves; valves [parts of machines]; valves for pumps; control valves for regulating the flow of gases and liquids (parts of machines); pump impellers; pump diaphragms; engines for compressors; pressure regulators [parts of machines]; regulators [parts of machines]; pressure reducers [parts of machines]; pressure controllers [valves] being parts of machines; compressors; hydraulic controls for machines; pneumatic controls for machines; couplings for machines; nebulizers [machines], not for medical use; sprays [parts of machines], other than for medical use; reduction gears and speed increasers; spraying machines; boilers, machine parts (‘Unrelated Goods’).
27.    The Unrelated Goods are unlikely to be considered closely related to cleaning services. I do not believe that consumers would normally expect a provider of cleaning services to be a manufacturer and provider of these Unrelated Goods. Additionally, I am satisfied that the nature and uses of cleaning services differ from the Unrelated Goods.
28.    This leaves the following goods in the 390 Mark and the 612 Mark (the goods of the latter displayed in italics) which I have classified into the following two groups:
·     Cleaning machines, equipment and apparatus: High pressure water cleaner machines; hydrocleaners; high-pressure water jet machines; washing apparatus; cleaning appliances utilizing steam; sand-blasting apparatus; pressure cleaning machines; pressure washing machines; machines and apparatus for cleaning, electric; electric polishers and electric cleaning installations; pistols for washing and sanding; air jet cleaners (electric -); steam cleaning machines; electric vacuum cleaners and their components; suction machines for scavenging purposes; suction machines for industrial purposes; electric vacuum cleaners; washing machines incorporating drying facilities; floor scrubbers; sweeping machines; floor washing machines; floor cleaning machines; commercial and industrial vacuum cleaners; wet vacuum cleaners; high pressure washers; electric carpet vacuum cleaners and steam cleaning equipment with or without suction, with foaming system (‘Cleaning Machines’)
·     Parts and accessories for cleaning machines, equipment and apparatus: Parts and fittings for high pressure water cleaner machines; high-pressure pumps for washing apparatus and installations; spray lances for attachment to pressure washing machines for cleaning purposes; sanding nozzles; spray nozzles being parts of machines; holders for nozzles; rotary nozzles for use with high pressure water washing machines; aspirators for powders, solids and liquids; hoses for vacuums; nozzles for aspirators; jets being parts of machines; taps [parts of machines, engines or motors]; electric fan units for vacuum cleaners; vacuum cleaner hoses; brushes for vacuum cleaners; suction nozzles for vacuum cleaners; vacuum cleaner attachments for disseminating perfumes and disinfectants; brushes, electrically operated [parts of machines] (‘Parts and Accessories’).

In my view, cleaning services of all types from residential to commercial to industrial are generally performed by means of a combination of some or all of cleaning machines (vacuum cleaners, pressure cleaners, polishers etc), cleaning tools (brooms, mops, buckets, cloths, sponges etc) and cleaning products (detergents and the like). The Opponent’s Cleaning Machines are clearly used to perform cleaning services however I am not aware of any normal or ordinary nexus or link between Cleaning Machines, their Parts and Accessories, and cleaning services and certainly, nothing in the Opponent’s evidence suggests that those that provide cleaning services are connected or involved with the manufacture of cleaning machines such as the Opponent’s Cleaning Machines or their Parts and Accessories or vice versa. The Opponent provides nothing more than cleaning machinery and their parts and accessories which can be used by, or in the performance of, those providing cleaning services.
While cleaning services can obviously be performed by means of Cleaning Machines, I consider the likelihood of consumer association of cleaning services and Cleaning Machines and Parts and Accessories is low as these products and services are not generally offered by the same people or generally regarded by the ordinary consumer as originating in, or as being part of, the one industry or trade, or, a closely related industry or trade. I believe the ultimate customer of cleaning services would always retain a clear view that the person cleaning is utilising tools of the trade such as machines, tools and products which are manufactured by others.
Accordingly, the Applicant’s Services are not closely related to any of the goods in the 390 Mark or the 612 Mark and therefore, the second requirement is not satisfied and the s 44 ground of opposition is not established.
Section 60
Section 60 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.
Note:    For priority date see section 12.
To establish this ground, the Opponent must demonstrate the existence of another trade mark which had acquired a reputation in Australia before the Relevant Date. The Opponent must then establish that because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.
The SGP identifies the Comet Mark as the trade mark supporting this ground of opposition.
Reputation
The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick as referring to ‘the recognition of the [trade mark] by the public generally’ and includes the credit, image and values projected by the trade mark.[19] Kenny J stated 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.[20]
[19] [2000] FCA 1335, [81].
[20] Ibid [86].
On the subject of reputation, Kenny J quoted with approval the following observations of Hearing Officer Thompson in Hugo Boss AG v Jackson International Trading Company Kurt D Bruhl Gesellschaft mbH & Co KG:[21]
As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark. The quantum of sales, 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 sponsorships, 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 sales 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 associative force in the minds of the public as the association of the trade marks with the goods or services themselves.
[21] (1999) 47 IPR 423, 436; [1999] ATMO 23.
In Rodney Jane Racing Pty Ltd v Monster Energy Company, it was observed that:
The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[22]
[22] [2019] FCA 923, [83] (O’Bryan J).
Section 60 does not require the reputation in the other mark to exist in respect of the Applicant’s Services,[23] nor that the parties operate in the same industry or field of business.[24] Even so, as stated by Yates J in Qantas Airways Limited v Edwards:
However, I accept that if such a reputation does exist at the relevant time, it is likely to be a most material consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark.[25]
[23] Qantas Airways Limited v Edwards [2016] FCA 729, [143] (Yates J) (‘Qantas’).
[24] Big Screen Video Pty Ltd v Pyramid Circle Holdings Pty Ltd t/a LED Sign Supply [2016] ATMO 16, [27] (Hearing Officer Lyons).
[25] Qantas (n 23) [143].
The reputation in the other trade mark must be amongst a ‘significant or substantial’ number of Australian consumers but this is tempered by the nature of the relevant market.[26] Here the relevant market spans consumers in the agricultural, industrial and cleaning industries. Meanwhile, the ‘existence and extent of reputation’ must be established as a matter of fact by the Opponent.[27]
[26] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).
[27] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [57].
The Opponent has provided printouts from the websites of Silvan and BAR Group dated before the Relevant Date, promotional materials of Silvan and Bar Group dated before the Relevant Date, undated printouts from the Opponent’s website and undated printouts from websites of five online retailers (‘Materials’). Evidence which is undated or dated after the Relevant Date is of limited value in establishing a reputation within Australia at the Relevant Date. I note there is no evidence concerning the distribution of any of the Silvan or BAR Group promotional materials to Australian consumers or retailers. While the Opponent claims sales to Engineered Products Group Pty Ltd, there is no evidence to support this claim. Further, although the Materials show some use of the Comet Mark on pressure washers, the Materials show that the Comet Mark has been used predominately in connection with pumps. Additionally, the Materials do not show any use of the Comet Mark in respect of vacuum cleaners or scrubber-driers.
Here, the quantitative dimensions are only evidenced by the Invoices and the annual sales figures from 2001 to 2023 as the Opponent has not provided any advertising and promotional expenditure. I have referred to the Codes of the Invoices at [12] of this decision. The Opponent has not provided a guide to the Codes and while some descriptions of parts and accessories in the Invoices are obvious, e.g. gasket kit, wing nut etc, others are not e.g. Body, K Corp Po Rub etc. Further while some general descriptions may be obvious, in many cases, what is not obvious is whether they are parts and accessories for pressure washers or pumps.
There is reference to some of the Codes in the Materials but these are predominately for the Opponent’s pumps. In respect of the Opponent’s pressure washers, there is only reference to eight Codes in the Materials. Using the Codes in the Materials, I have ascertained that over the thirteen year period between 2010 and 2023, the Opponent sold approximately 4385 pumps and approximately 658 pressure washers to Silvan and BAR Group. Per annum over this thirteen year period, the numbers are 337 pumps and 50 pressure cleaners. As to the parts and accessories, the onus in on the Opponent to provide evidence that contains sufficient detail to enable consideration of the Opponent’s claimed reputation. Overall, the Invoices and Materials fall short of the necessary standard to ascertain both the exact number of pumps and pressure cleaners sold by the Opponent between 2010 and 2023 and which parts and accessories are for pumps and which are for pressure washers.
Further, the annual sales figures from 2001 to 2023, while substantial, are not broken down into separate sales figure for pumps, pressure washers and part and accessories for pumps and pressure washers. Based on the Materials and Invoices, it appears that the majority of sales to Silvan and BAR Group relate to the Opponent’s pumps and parts and accessories for pumps.
While the Opponent’s evidence of quantitative dimensions is lacking, I consider the Opponent’s evidence relating to the qualitative dimensions is also lacking. There is little evidence which concerns the image and values projected by the Comet Mark and therefore the esteem or favour in which the Comet Mark is held by the public generally. The evidence does not show market penetration in Australia of the Opponent’s pumps other than to Silvan and BAR Group or market penetration in Australia of the Opponent pressure washers.
In light of the significant weaknesses of the evidence which I have detailed in this decision, the breadth of the public here is likely to be small and certainly not significant or substantial. Therefore, I am not satisfied that the reputation of the Opponent in the Comet Mark is one sufficient to trigger s 60.
Whilst I acknowledge that the evidence demonstrates that the Opponent has used the Comet Mark in respect of pumps, pressure washers and their parts and accessories, mere use of a trade mark does not demonstrate that a trade mark has garnered a reputation that may result in deception or confusion. As I am not satisfied there is a reputation in the Comet Mark in relation to the Opponent’s Goods amongst a ‘significant or substantial’ number of Australian consumers, the Opponent has accordingly not established its ground of opposition under s 60.
I add that had I been satisfied that the Opponent had a reputation in the Comet Mark sufficient to enliven s 60, for the same reasons detailed above under the s 44 ground of opposition, I would not be satisfied that because of that reputation, use of the Trade Mark would be likely to deceive or cause confusion. There is a lack of nexus between the Opponent’s pumps, pressure washers and their parts and accessories and the Applicant’s Services. Further, consumers would not regard the Applicant’s Services as a natural or logical extension of the Opponent’s pumps, pressure washers and their parts and accessories.[28] I do not consider there are sufficient trade connections between pumps, pressure washers and their parts and accessories and the Applicant’s Services. While it is possible that a trade mark’s reputation might be so strong that confusion or deception would be likely even where little nexus exists between the respective trade marks or the relevant goods or services[29] I am not satisfied that is the case here.
[28] Aussie Home Loans Ltd v Aussie Loans Pty Ltd [2006] ATMO 75, [34] (Hearing Officer Thompson).
[29] Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd [2010] ATMO 5, [39]-[40] (Hearing Officer Lyons); Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124, [40] (Hearing Officer Thompson).
Section 42(b)
Section 42(b) provides that a trade mark must be rejected if its use would be contrary to law. The SGP merely states ‘Competition and Consumer Act 2010’ (‘CCA’). The Opponent has not indicated how the Applicant’s use of the Trade Mark would contravene any section of the CCA. If the Opponent intended the s 42(b) ground to relate to misleading and deceptive conduct or representations under ss 18 and/or 29 of the Australian Consumer Law (contained in Schedule 2 of the CCA) (‘ACL’), I consider that the s 42(b) ground would not be established. Sections 18 and 29 of the ACL have stricter requirements than s 60 which can be established if use is likely to cause confusion or wonderment.[30] I have already held that the reputation in the Comet Mark was insufficient to trigger s 60. Where a ground of opposition under s 60 is unsuccessful, reputation-based claims under ss 18 and/or 29 of the ACL will also fail.[31] Therefore, the Opponent has not established the ground of opposition under s 42(b).
[30] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [33] (Stewart J).
[31] Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506 (Hill J); Riding for the Disabled Association of Australia Limited v Pony Club Australia Pty Ltd [2019] ATMO 63, [63]-[64] (Hearing Officer Richards).
Section 58A
Section 58A is only applicable where a prima facie ground of opposition has been established under s 44, and the Applicant has successfully overcome the ground of opposition by reliance on evidence of prior and continuous use under s 44(4).
The Opponent has failed to establish the ground under s 44. As such the ground under s 58A cannot be established.
Section 62A
Section 62A provides:
Application made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
As stated by Dodds-Streeton J in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (‘Fry Consulting’):
The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.[32]
[32] [2012] FCA 81, [167].
53.    In DC Comics v Cheqout Pty Ltd,[33] Bennett J noted that
[33] [2013] FCA 478, [62].
Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards
54.    In summary, the SGP states that the Opponent has been using its COMET Mark extensively in Australia in relation to goods which are closely related to the Applicant’s Services. As a result, the Applicant would have been aware of the COMET Mark at the time of filing the Applications and has therefore acted in bad faith by applying to register a trade mark which is substantially identical or deceptively similar to the Comet Mark.
55.    The Opponent has not provided any compelling evidence to demonstrate that the Applicant’s filing of the Applications falls below acceptable commercial standards. In particular, the Opponent has not provided any evidence that the Applicant was aware of the Opponent’s use of the Comet Mark. In this instance, even if I were to accept that the Applicant was aware of the Opponent’s use of the Comet Mark, this alone does not provide a sufficient basis to conclude that the Applications were made in bad faith. Awareness or mere knowledge before the Relevant Date of another person’s trade mark, without more, does not in itself constitute a basis for a finding of bad faith’.[34]
[34] 1872 Holdings VOF v Havana Club Holding SA [2017] ATMO 12, [64] (Hearing Officer Thompson).
56.    The Opponent has not provided any persuasive evidence that the Applicant’s filing of the Applicant’s Marks in connection with the Applicant’s Services was ‘unscrupulous, underhand or unconscientious’.[35] As a consequence, the Opponent has not established the ground of opposition under s 62A.
[35] Fry Consulting (n 32), [166].
Decision
I find that the Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Accordingly, the Applicant’s Marks may proceed to registration not less than one month from the date of this decision.
If the Registrar is served with a notice of appeal, I direct that registration of the Applicant’s Marks shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the Applications should be in accordance with the Court’s order or direction.
Costs
59. The Opponent has sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. Accordingly, with respect to the opposition to trade mark 2422225, I award costs against the Opponent in accordance with the amounts in Schedule 8 of the Regulations and for the opposition to trade mark 2422226, I award reduced costs against the Opponent under s 221 in the same manner as Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd.[36]
[36] [2001] ATMO 78 (Hearing Officer Williams).
Anne Makrigiorgos
Hearing Officer
Delegate of the Registrar of Trade Marks
25 August 2025
Annexure A

Goods of IRDA 239290

Pumps for agriculture, industry and do-it-yourself; motor pumps for agriculture, industry and do-it-yourself; electric pumps for agriculture, industry and do-it-yourself; pumps [parts of machines, engines or motors]; motor pumps; centrifugal motor pumps; high pressure piston pumps; hydrocleaners; high-pressure water jet machines; high-pressure pumps for washing apparatus and installations; motors for pumps; washing apparatus; cleaning appliances utilizing steam; sand-blasting apparatus; compressed air machines; pressure cleaning machines; pressure washing machines; machines and apparatus for cleaning, electric; electric polishers and electric cleaning installations; pistols for washing and sanding; spray lances for attachment to pressure washing machines for cleaning purposes; sanding nozzles; spray nozzles being parts of machines; holders for nozzles; rotary nozzles for use with high pressure water washing machines; aspirators for powders, solids and liquids; hoses for vacuums; nozzles for aspirators; jets being parts of machines; spray paint machines; sputter coating guns; grease guns operated by compressed air; guns for compressed air spraying machines; compressed air guns for the extrusion of mastics; spray lances being agricultural implements; thermic lances [machines]; head attachments for power tools; water swivels [hydraulic couplings]; fuel nozzles; tubes being fitted parts of machines; reels, mechanical, for flexible hoses; power-operated garden hose reels; joints for pipes (metal -) [parts of machines]; clamp connectors for piping [parts of machines]; joints for tubes [parts of machines]; hoses (non-metallic -) for use in hydraulic systems in machines; hoses (metal -) for use in hydraulic systems in machines; joints for tubes (metal -) [parts of engines]; filters being parts of machines or engines; ejectors; hydro-pneumatic accumulators; hydraulic accumulators; valves; valves [parts of machines]; valves for pumps; control valves for regulating the flow of gases and liquids (parts of machines); pump impellers; pump diaphragms; engines for compressors; pressure regulators [parts of machines]; regulators [parts of machines]; pressure reducers [parts of machines]; pressure controllers [valves] being parts of machines; compressors; hydraulic controls for machines; pneumatic controls for machines; couplings for machines; air jet cleaners (electric -); steam cleaning machines; taps [parts of machines, engines or motors]; electric vacuum cleaners and their components; electric fan units for vacuum cleaners; suction machines for scavenging purposes; suction machines for industrial purposes; electric vacuum cleaners; nebulizers [machines], not for medical use; sprays [parts of machines], other than for medical use; reduction gears and speed increasers; washing machines incorporating drying facilities; floor scrubbers; sweeping machines; floor washing machines; floor cleaning machines; vacuum cleaner hoses; brushes for vacuum cleaners; commercial and industrial vacuum cleaners; suction nozzles for vacuum cleaners; vacuum cleaner attachments for disseminating perfumes and disinfectants; wet vacuum cleaners; brushes, electrically operated [parts of machines]; high pressure washers; electric carpet vacuum cleaners; steam cleaning equipment with or without suction, with foaming system; spraying machines; boilers, machine parts.

[2025] ATMO 162

25 August 2025