Ellume Limited v OurMania IP Pty Ltd

[2024] ATMO 135

TRADE MARKS ACT 1995

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

Re:Opposition by Ellume Limited to registration of trade mark applications 2104502 (5, 31, 35) – ILUME and 2118582 (9, 44) – ILUME – in the name of OurMania IP Pty Ltd

Delegate:

Nicholas Smith

Representation:

Opponent: FB Rice Pty Ltd

Applicant: Actuate IP

Decision:

2024 ATMO 135

Trade Marks Act 1995 (Cth) - section 52 opposition: ss 42(b), 44, 58, 60 and 62A considered – s 44 established in respect of a subset of the goods – amendment made deleting the goods for which the s 44 ground has been established – no other grounds established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Ellume Limited (‘Opponent’) to the registration of the trade marks which are the subject of the applications detailed below in the name of OurMania IP Pty Ltd (‘Applicant’): 

Application Number:	2104502
Filing Date[1]:	17 July 2020
Goods and Services:	Class 5: Antibiotic food supplements for animals; Dietary supplements for animals; Food supplements for animals (minerals); Food supplements for animals (vitamins); Medicinal food supplements for animals; Nutritional supplements for animals; Protein supplements for animals; Pharmaceutical preparations for animals; Bacterial preparations for medical and veterinary use; Cultures of microorganisms for veterinary use; Enzyme preparations for veterinary purposes; Dietetic substances for veterinary use; Probiotic bacterial formulations for veterinary use; Veterinary preparations; Dog food additives Class 31: Animal feed; Flavourings for animal feed; Bones for dogs; Canned foods for dogs; Chewing bones for dogs; Dog biscuits; Dog food; Dry processed food for dogs; Food for dogs; Fresh meat for dogs; Processed meat for dogs; Pelleted pet food; Pet food; Beverages for pets; Canned foods for cats; Cat food; Dry processed food for cats; Food for cats; Fresh meat for cats; Processed meat for cats Class 35: Retail services including provision of an on-line marketplace for buyers and sellers of goods and services; Wholesaling of goods (by any means); Distribution of goods (not being transport services) and wholesale of goods; Advertising services including sales promotion (for others); Marketing; Administration of consumer loyalty programs; Organisation and management of customer loyalty programmes; Compilation of information into computer databases; Business administration; Compilation and provision of online directories
Trade Mark:	ILUME

[1] The filing date for both the applications known in this decision as the ‘relevant date’ or ‘relevant dates’ as appropriate.  Nothing in the decision turns on the difference between the filing date of the respective applications.

Application Number:	2118582
Filing Date:	9 September 2020
Goods and Services:	Class 9: Personal electronic device for monitoring health, performance and activity; wearable health and activity tracking device; electronic monitoring apparatus, other than for medical use; portable global positioning system (GPS) navigation device; portable global positioning system (GPS) tracking device; downloadable software applications (apps) including in relation to pet health, pet behaviour, pet information and pet ownership Class 44: Provision of health and nutrition information; provision of animal behaviour information; advisory services relating to the care of animals; care of animals; providing health, behaviour and activity data for the purpose of health monitoring for individuals and animals by way of a mobile portal or website; health assessment surveys; veterinary services; provision of veterinary information.
Trade Mark:	ILUME

1. For the purpose of this decision, whenever appropriate, I shall refer to the respective applications in the singular, as a single ‘Trade Mark’ and the Goods and Services for which the applications are made as the ‘Applicant’s Goods and Services’.  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.

2. Following the advertisement of the applications’ acceptance for possible registration, the Opponent filed Notices of Intention to Oppose the registration followed by Statements of Grounds and Particulars (‘SGPs’).  The SGPs raised essentially identical grounds of opposition under ss 42(b), 44, 58, 60 and 62A.  The Applicant filed Notices of Intention to Defend within the timeframe allowed. 

   Evidence

3. The parties filed the following evidence in this matter:

Declarant and Position	Date	Annexures or Exhibits
Evidence in support
Sean Parsons, Founder and CEO of the Opponent (‘Parsons declaration’)	24 November 2021	SP-1 to SP-8
Joanne Christine Martin, Solicitor and Registered Trade Marks Attorney with FB Rice Pty Ltd, the Opponent’s representatives (‘Martin 1’).	25 August 2021	JCM-1 to JCM-3
Joanne Christine Martin (‘Martin 2’).	13 September 2021	JCM-1 to JCM-4
Evidence in answer
None filed
Evidence in reply
None filed

1. Martin 1 and 2 are essentially identical; the difference being that Martin 1 is filed in connection with trade mark application number 2104502 and Martin 2 is filed in connection with trade mark application number 2118582.  The Parsons declaration is filed in respect of both oppositions.  It also contains a large number of hyperlinks and invites me to visit these hyperlinks.  I note that all evidence filed with this office must be in the form of declarations with annexures or exhibits.  Hyperlinks can change or become dead and I have not clicked on or had regard to any of the hyperlinks save the ones where the result is annexed or exhibited as part of the Parsons declaration.

2. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without a hearing.  On 16 December 2022 the Opponent requested an oral hearing.  Following an extensive cooling-off period the matter was set down for a hearing in Canberra on 4 June 2024 and the matter was allocated to me.  In line with usual practice, a notice was sent to the parties on 4 April 2024 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  Neither party chose to file any submissions or attend the oral hearing.

3. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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. 

   In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.

   The Opponent

4. The Opponent is an Australian medical technology company.  

5. The Opponent is the owner of the trade mark listed below (‘Opponent’s Trade Mark’).  The goods for which the Opponent’s Trade Mark is registered are collectively referred to as the ‘Opponent’s Goods’.  The Opponent provides evidence of ownership of additional trade mark applications however these applications, not being particularised in the SGP (and postdating the relevant date), have no relevance to the present proceeding.

Number	Trade Mark	Priority Date	Goods
1545573	ELLUME	11 Mar 2013	Class 5: Pharmaceutical preparations; medicinal preparations; diagnostic preparations for medical purposes; diagnostic reagents for medical use; excluding for medical and aesthetic skin treatments, and cellulite treatment, reduction and elimination Class 10: Medical apparatus excluding for medical and aesthetic skin treatments, and cellulite treatment, reduction and elimination

1. The relevant claims/statements in the Parsons declaration can be summarised as follows:

   ·     The Opponent develops, manufactures and sells digital diagnostic products for health care professionals and for consumers.  It has filed over 140 patents in relation to its products and maintains manufacturing and research facilities in Queensland.  The Opponent was incorporated in 2010 and has continuously used the Opponent’s Trade Mark, and various stylised versions thereof, since 2013.

   ·     The Opponent’s first product was an over-the-counter test for influenza which underwent a clinical trial in 2016 in Queensland with 1500 participants (with packaging bearing the Opponent’s Trade Mark) but the product did not go to market.  The Opponent’s second product underwent a clinical trial with 132 participants in Australia in 2018 and was subject to some media coverage.   The Opponent has also developed a Covid-19 home test which was launched in the United States in December 2020.

   ·     The Opponent has been the subject of media coverage and has won awards for being an innovative company.  

2. The annexures to the Parsons declaration display various examples of the use of the Opponent’s Trade Mark, much of which postdates the relevant date.  In my review of the evidence what is unusual is, while the Opponent provides some evidence of a growing turnover from FY18 onwards, it is not clear prior to the relevant date what, if any, goods and services are sold under the Opponent’s Trade Mark in Australia. Rather it appears that prior to the relevant date the Opponent was involved in developing and testing two products that did not proceed to market.   

3. The Martin declarations exhibit ASIC and Trade Marks Register documents confirming the status of the Opponent, the Opponent’s Trade Mark and applications.  They note that the Opponent’s Covid-19 Home test for consumers is not available in Australia.  The declarations also contain three extracts from the Opponent’s website at which purport to indicate that the Opponent provides diagnostic health care solutions.

4. The Martin declarations also exhibit articles from 2018 and 2019 said to show use of the Opponent’s Trade Mark in Australia.  The 2018 articles refer to a deal struck between the Opponent and pharmaceutical giant GSK for digital consumer products but provides no detail about what consumer products the Opponent will be supplying, nor when or if they will be launched in the Australian market or if they will be provided under the Trade Mark.  At its highest the article states that ‘the strategic partnership is with GSK’s consumer arm and is believed to be focused on respiratory care’. The 2019 article refers to a strategic partnership the Opponent entered into with QIAGEN to develop a proprietary version of a tuberculosis test, but to the extent any test was developed (it appears one was but there is no information about whether it was every trialled or offered to the public) there is no evidence of use of the Opponent’s Trade Mark as a badge of origin in connection with that test prior to the relevant date.  

   The Applicant

5. The Applicant has not filed any evidence and as such I have no information about it other than what is set out on the Register. 

   Grounds of Opposition, Onus and Standard of Proof

6. As indicated above, in the SGPs the Opponent nominated grounds of opposition under ss 42(b), 44, 58, 60 and 62A.  To successfully oppose the application the Opponent needs to establish one of the nominated grounds.  

7. The onus of proof in an opposition rests upon the Opponent.[2]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is the relevant date, which is also the priority date for the purposes of ss 44 and 60.[4]

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

   [3] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J), see also s 29(1) Trade Marks Act 1995 (Cth).

   Discussion

   Section 44

8. The relevant provisions of s 44 are reproduced below:

   Section 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)it 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.

   Note 1: For deceptively similar see section 10.

   Note 2: For similar goods see subsection 14(1).

   (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.

   Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A. …

   (3)If the Registrar in either case is satisfied:

   (a)that there has been honest concurrent use of the 2 trade marks; or

   (b)that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

   Note:  For limitations see section 6.

   (4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

   (a)beginning before the priority date for the registration of the other trade mark in respect of:

   (i)             the similar goods or closely related services; or

   (ii)            the similar services or closely related goods; and

   (b)ending on the priority date for the registration of the applicant's trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

   Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

   Note 2: For predecessor in title see section 6.

   Note 3: For priority date see section 12.

   Section 10 - Definition of deceptively similar

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

9. To successfully oppose the application pursuant to s 44 the Opponent must establish the requirements of s 44(1) or (2), i.e. that at least one of the trade marks upon which it relies, being a trade mark registered or sought to be registered by a person other than the Applicant:

   ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

   ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

   ·     is in respect of similar goods/services, and/or goods/services which are closely related to, the Applicant’s Goods and Services (‘the third requirement’).

10. In the event that each of these requirements is satisfied by the Opponent it may still be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4), that there has been honest concurrent use of the Trade Mark, other circumstances which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark. In the present case as the Applicant has provided no evidence of use prior to the relevant date or other circumstances that would make registration of the Trade Mark proper, it is not necessary to consider these provisions.

11. The Opponent has particularised the ground of opposition in the SGPs by reference to the Opponent’s Trade Mark which has a priority date that is earlier than the priority date of the Trade Mark.  The first requirement is satisfied.

    Similar goods

12. Section 14 relevantly provides:

    14Definition of similar goods and similar services

    (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.

13. McCormick & Company Inc v McCormick summarises the legal principles applicable when determining if the goods for which the Opponent’s Trade Mark is registered are goods of the same description as the Applicant’s Goods:

    Whether the relevant goods are of the same description is essentially a question of fact.

    The authorities establish that there are three principal factors to be considered in this regard.  They are: (1) the nature of the goods, including their origin and characteristics; (2) the uses made of them, including their purpose; and (3) the trade channels through which the goods are bought and sold.  As to the last-mentioned matter, it may be relevant to consider whether the goods being compared are produced by the same manufacturer or distributed through the same channels; whether they are sold in the same shops; whether they are sold to the same sort of customers; and whether those engaged in the manufacture and distribution of the goods are considered as belonging to the same trade:  see In Re Jellinek’s Application (1946) 63 RPC 59 at 70-72; In Re John Crowther & Sons (Milnsbridge) Ltd’s Application (1948) 65 RPC 369 (“Crowther’s Application”) at 372; In Re Frank George Whiting’s Application (1952) 69 RPC 219 at 221; and Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 at 94. As the High Court stated in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (“Southern Cross”) at 606-607:

    The fact that examination of the nature of the applicant’s goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive.  Nor is the fact that the applicant’s goods are not specified by the regulations as being within the same class of goods:  see In re The Australian Wine Importers Ltd (1889) 41 Ch D 278, at p 291 and Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84, at p 90 per Latham CJ. There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J in In re Jellinek’s Application (1946) 63 RPC 59. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek’s Case … the Assistant-Comptroller elaborated on the observations of Romer J in the following manner:  ‘In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade.  In the case of Jellinek’s Application …, Romer J classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold.  No single consideration is conclusive in itself, and it has further been emphasized that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are “of the same description”’:  Inre an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369, at p 372. Much the same considerations are evident in the observation of Dixon J (as he then was) in Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 when he said: ‘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. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments’ (1945) 70 CLR, at p 94.

    On the one hand, goods are not necessarily of the same description simply because they are sold for human consumption and in common trade channels: see, for example, In Re J & J Colman Ltd’s Application (1929) 46 RPC 126, where mustard and semolina were held not to be goods of the same description. See also G Wood, Son & Co Ltd v McVitty & Co Pty Ltd (1964) 34 AOJP 2601 and In Re Chan Li Chai Medical Factory (HK) Ltd’s Application (1990) 19 IPR 140 at 144. On the other hand, the expression “goods of the same description” is not construed restrictively and regard is paid to the commercial context in which the goods in question are bought and sold: see Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539 at 546 and Dinning v New Balance Athletic Shoe Inc (1992) AIPC 38,719 at 38,725. [5] 

    Closely related services

    [5] [2000] FCA 1335, [17] (Kenny J).

1. The case of Paypal, Inc v Braintree Communications Pty Ltd[6] summarises the legal principles applicable when determining if the goods for which the Opponent’s Trade Mark is registered are closely related to the Applicant’s Services:

   [6] [2017] ATMO 90.

   In Qantas Airways Ltd v Edwards[7] Yates J quoted from the judgment of French J in Registrar of Trade Marks v Woolworths Ltd[8]:

   [7] [2016] FCA 729, [111] (Yates J).

   [8] (1999) 93 FCR 365; [1999] FCA 1020, [37] (French J).

   ... 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 to each other. 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”. ...

   Yates J continued:

   His Honour also said in this connection that “closely related” was of wider import than “similar”.

   Woolworths was a case arising under s 44(2) of the Act. Thus, the question was whether, in the case of a mark for services, there was conflict with a previously registered mark for “closely related goods”. His Honour gave (at [38]) the following illustrations where goods and services might be “closely related”:

   Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them. Television repair services in this sense are closely related to television sets as a class of goods. A trade mark used by a television repair service which resembles (to use the language of s 10) the trade mark used on a prominent brand of television sets could be deceptively similar for suggesting an association between the provider of the service and the manufacturer of the sets. ...

   His Honour also made reference to Caterpillar Loader Hire (Holdings)Pty Ltd v Caterpillar Tractor Co (1983) 77 FLR 139; [1983] FCA 143 (Caterpillar) in which Lockhart J said (at 150):

   ... It is obvious that there is likely to be confusion if substantially the same or deceptively similar trade marks are used by different proprietors, one for goods and the other for services, where the goods and services are closely related. Examples that present practical difficulties are the sale of goods such as data processing equipment and the sale of programs for their operation; the sale of curtains and furnishing materials on the one hand, and the sewing of curtains on the other, as interior decorators often sell curtains and perform the service of sewing; the sale of clothes on the one hand and tailoring on the other because the service of custom tailoring is frequently provided in addition to the sale of ready-made clothes; and the sale of educational material on the one hand and educational services (language courses, home study programs) on the other.

   Significantly, in Woolworths, French J (at [38]) also said that the range of relationships between goods and services which may support the designation “closely related” will be “limited by the requirement in s 44(2) that there be a substantial identity or deceptive similarity between the potentially conflicting marks which attach to them”. This observation might suggest that his Honour had in mind that, in a case arising under s 44 of the Act, the determination of whether the goods and services are “closely related” will be informed by the determination of whether the competing marks are, in fact, deceptively similar.

   However, at [38] his Honour continued by stating that “[t]he relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods” (emphasis added). It was in this context that his Honour gave the examples quoted at [113] above and referred to the examples given by Lockhart J in Caterpillar. This part of his Honour’s reasoning suggests that the question of whether goods and services are “closely related” is a discrete question within the injunction against registration provided by s 44 of the Act.

   This understanding is supported by the following passage in [39] of his Honour’s reasons:

   ... Apposite to the present case is the question whether a retailer of various classes of goods provides a service to customers which warrants the description of the goods for sale as “closely related goods” in respect of that service. The characterisation of the relationship between services and goods in this way is evaluative. The logic of s 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods. Wilcox J at first instance in this case saw the questions as “conceptually distinct” but accepted that one could not be addressed in isolation from the second: “The closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive.” This approach is not greatly assisted by the language of s 10 which, like s 6(3) of the 1955 Act, defines deceptive similarity solely in terms of the degree of resemblance of the trade marks in question and whether that degree of resemblance is “likely” to deceive or cause confusion. But that definition must, in the context of s 44, be applied to the case of “closely related” goods and services.

   His Honour concluded at [40]:

   In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question. It will not always be necessary to dissect that judgment into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services. Consistently with that proposition, the Registrar or a judge on appeal from the Registrar could determine in a particular case that, given the limited degree of resemblance between the relevant marks he or she could not be satisfied, no matter how closely related the goods and services concerned, that the use of the applicant’s marks would be likely to deceive or to cause confusion.

   The practical judgment to which his Honour referred in the last passage is, quite clearly, the judgment involved in determining whether the two marks are deceptively [similar]. The passage marks his Honour’s acceptance that the question of deceptive similarity between allegedly conflicting marks will be informed, in part, by the closeness of the relationship between the goods and services in respect of which the marks severally are, or are sought to be, registered. I do not accept that his Honour was there directing attention to the judgment involved in determining whether given goods and services are “closely related” as such. [9] 

   [9] [2017] ATMO 90, [28]-[29] (Hearing Officer Thompson).

   24.  A detailed list of questions relevant to whether goods or services are closely related was set out in Re Aussat Pty Ltd[10] namely:

   [10] [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?

2. The Opponent’s Trade Mark is registered for pharmaceutical preparations in Class 5.  This is similar to the Applicant’s Class 5 Goods which can be broadly categorised as veterinary preparations as both preparations are commonly used for treatment and are often produced by the same manufacturer and sold through the same trade channels.[11]  

   [11] See Univer Trade Mark, (1993) RPC 239.

3. I do not consider the Applicant’s Class 31 Goods are similar or closely related to the Applicant’s Goods’s and Services.  The Applicant’s Class 31 Goods are pet products.  The nature, use and trade channels for the Applicant’s Class 31 goods being pet products are entirely dissimilar to the Opponent’s Goods, being pharmaceutical preparations and medical apparatus.  The former is commonly available through a pet store or supermarket, while the latter is generally prescribed by a doctor and/or is available from a pharmacist.   

4. The Applicant’s Class 9 Goods are wearable health and activity tracking devices other than for medical use.  The Opponent’s Class 10 Goods are medical apparatus.  While both electronic products that relate to health services, they are fundamentally different in nature.  The Applicant’s Class 9 Goods are consumer goods such as a Fitbit, which provide a limited amount of medical information, purchased from a consumer retailer, and not subject to any regulation.  The Opponent’s Class 10 Goods are specialist medical apparatus purchased through a pharmacist or specialist supplier on the recommendation of a doctor, and would be regulated as such.  I consider the Opponent’s Class 10 goods to be goods of a different purpose, nature and sold in a different channel then the Applicant’s Class 9 Goods.

5. The Applicant’s Services are a mixture of general business services including retail services and services relating to veterinary care, neither of which are in any way closely related to the Opponent’s Goods.  In particular, while in certain cases general retail services can be closely related to specific goods if the nature of those goods is such that they are often sold directly from the manufacturers to consumers, such that a member of the public would likely to treat a similarity of name as being an indication of a link between the origin of the goods and that of a service, in the present case, I do not consider it likely that the Opponent’s Goods, being pharmaceutical preparations and diagnostic medical technology fall within the category of goods above.  Rather consumers would not expect that a supplier of general retail and distribution services (part of the Applicant’s Class 35 Services) would have the capacity to develop and manufacture the Opponent’s Goods.  Nor would they expect the Opponent’s Goods to be retailed and distributed directly to the public; rather such goods are generally purchased from pharmacists or provided by hospitals/doctors or specialist medical retailers.  I accept that were the marks substantially identical (or a deceptively similar trade mark approaching the level of substantial identity) there may be a real, tangible danger of confusion, in the present case however (for the reasons set out later in this decision) I am not satisfied that the marks are that similar and as such I do not find a real tangible danger of confusion arising with respect to the general retail services for which the Trade Mark is sought to be registered.

6. There are certain more general services, such as provision of health and nutrition information and health assessment surveys which are in the same healthcare field as the Opponent’s Goods but on balance, I am not satisfied that these are closely related.  The Opponent’s Goods are pharmaceutical products and medical apparatus.  These goods are of considerably greater technical complexity than the general health services for which the Trade Mark is sought to be registered.  There is not an expectation that a sophisticated pharmaceutical and medical device company providing the Opponent’s Goods would also provide the general health services; which are provided by a community health centre, community health nurse, dietitian or nutritionist.  I am not satisfied that any of the Applicant’s Services are closely related to the Opponent’s Goods. 

7. I consider the third requirement has been satisfied in respect of the Applicant’s Class 5 Goods (‘Similar Goods’) but not in respect of the remaining Applicant’s Goods and Services sought to be registered.  It is therefore necessary to consider the second requirement with respect to the Similar Goods. 

   Substantially identical and/or deceptively similar

8. I will now consider whether the Trade Mark is substantially identical to the Opponent’s Trade Mark.  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:

   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.[12]

   [12] [1963] HCA 66, [12].

9. The Trade Mark and the Opponent’s Trade Mark are set out below:

   ILUME     ELLUME

10. On a side-by-side comparison there are clear differences which mean that a total impression of dissimilarity emerges from a comparison of the Opponent’s Trade Mark and the Applicant’s Trade Mark.  While they each share the ‘LUME’ element, the presence of the different first element ‘I’ and ‘EL’ provides a significantly different visual impression.  I move then to consider whether the Trade Mark and Opponent’s Trade Mark are deceptively similar.

11. The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

    On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[13]

    [13] Ibid [13].

12. The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[14] conveniently stated the relevant principles, which may be summarised as follows:

    [14] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

    (a)the resemblance between the two marks must be the cause of the likely deception or confusion;[15]

    [15] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69] (Yates, Abraham and Rofe JJ).

    (b)in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[16]

    [16] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).

    (c)the marks should not be compared side by side;[17]

    (d)the effect of spoken description must be considered; if a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods (or services), then similarities both of sound and of meaning may play an important part;[18]

    (e)the focus is upon the effect or impression produced on the mind of potential customers of the goods (or services) in relation to which the two marks are used and in the case of the registered mark, allowing for ‘imperfect recollection’;[19]

    (f)the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the marks prior to filing, or any reputation associated with the registered mark;[20]

    (g)the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods or services covered by the registration), with the impression that the notional buyer would have of notional and normal fair use of the opposed mark;[21]

    (h)“deceived” implies the creation of an incorrect belief or mental impression; “causing confusion” may merely involve “perplexing or mixing up the minds” of potential customers; [22]

    (i)the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected, having regard to the character of the customers who would be likely to buy the goods in issue;[23]

    (j)it is not necessary to establish actual probability of deception or confusion, but a mere possibility of confusion is not enough. There must a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be “a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source”;[24]

    (k)evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[25] and

    (l)any intention to deceive or cause confusion may be a relevant consideration but is not required.[26]

    [17] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).

    [18] Ibid.

    [19] Ibid.

    [20] C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, 62 [43] (Ryan, Branson and Lehane JJ).

    [21] Shell (n 12), 415.

    [22] Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, 122 [39] (Black CJ, Sundberg and Finkelstein JJ) quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62 (Richardson J).

    [23] Campomar Sociedad Limited v Nike International Limited (2000) 202 CLR 45, 79 [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).

    [24] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50(ii)] (‘Woolworths’) (French J) restating principles from Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-595 (Kitto J).

    [25] Australian Woollen Mills Ltd (n 17).

    [26] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) citing Australian Woollen Mills (n 17), 657.

13. Furthermore the Court, in the same case, noted the following[27]:

    In considering the likelihood of confusion or deception, "the court is not looking to the totality of the conduct of the defendant in the same way as in a passing off suit"[28]. In addition to the degree of similarity between the marks, the assessment takes account of the effect of that similarity considered in relation to the alleged infringer's actual use of the mark[29], as well as the circumstances of the goods, the character of the likely customers, and the market covered by the monopoly attached to the registered trade mark[30]. Consideration of the context of those surrounding circumstances does not "open the door" for examination of the actual use of the registered mark, or, as will be explained, any consideration of the reputation associated with the mark.[31]

    [27] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [33] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

    [28] New South Wales Dairy Corporation v Murray-Goulburn Co‑operative Co Ltd [1989] FCA 124; (1989) 86 ALR 549 at 589 (emphasis added), approved in Henschke (2000) 52 IPR 42 at 62 [44], Hashtag Burgers [2020] FCAFC 235; (2020) 385 ALR 514 at 532 [64], Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel [2021] FCAFC 8; (2021) 157 IPR 230 at 238 [27], PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (2021) 285 FCR 598 at 622 [97] (see also 626 [111]) and Swancom (2022) 168 IPR 42 at 56 [73].

    [29] Act, s 68.

    [30] New South Wales Dairy [1989] FCA 124; (1989) 86 ALR 549 at 589.

    [31] Swancom (2022) 168 IPR 42 at 59 [89]. See also Henschke (2000) 52 IPR 42 at 62 [44].

1. As stated above, for the purposes of considering deceptive similarity, the reputation of the Opponent’s Trade Mark is not a relevant factor.[32]

   [32] See Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [93] (Yates, Abraham and Rofe JJ) and, albeit in the s120(1) context Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [49] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

2. Justice French (as he then was) expressed the view in Registrar of Trade Marks v Woolworths Ltd[33] (‘Woolworths’) that the determination of whether, and to what degree, an applicant’s goods or services are similar to, or closely related to, the relevant goods or services of the earlier trade mark owner is “logically antecedent to” assessing the similarity of the parties’ trade marks. In particular, French J explicitly approved the observation in Wilcox J’s first instance decision in the Woolworths matter that, ‘[t] he closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive’.[34]

   [33] Woolworths (n 24), [39].

   [34] Ibid. See also Enagic Co Ltd v Horizons (Asia) Pty Ltd (No 3) [2021] FCA 1512, [33] (Charlesworth J).

3. In the present case, even though the respective goods (veterinary preparations and pharmaceutical preparations) are not identical and are indeed are better categorised as in the less similar range of goods that fall within the range of goods categorised as similar, and even though the character of the likely purchasers of the common goods (pharmaceutical and veterinary preparations) is likely to be more sophisticated than the general consumer (in many cases having the assistance of a pharmacist, vet or doctor to ensure the purchase) the similarities of the marks, being very similar aurally, not having any identifiable conceptual differences, and having some visual similarity given the shared use of the ‘LUME’ element, is such that I consider that there is a real likelihood that some people, upon seeing the Similar Goods branded with the Trade Mark will wonder or be left in doubt about whether those goods come from the same source as the Opponent’s Class 5 Goods branded with the Opponent’s Trade Mark.

4. I find that the Opponent has established the ground of opposition under s 44 with respect to the Similar Goods. I will consider the remaining grounds with respect to the Applicant’s Goods and Services other than the Similar Goods (‘Remaining Goods and Services’)

   Section 58 – Applicant not owner of trade mark

5. Section 58 is reproduced below:

   Section 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.

   Note:For applicant see section 6.

6. The owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier.  It is now well established at law that in order to succeed under this ground of opposition 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’);[35]

   · that the Remaining Goods and Services are the ‘same kind of thing’ as the goods for which the trade mark(s) relied upon by the Opponent was used or registered (‘the second factor’);[36] and

   ·     that a person other than the Applicant 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 Applicant (‘the third factor’).[37]

   [35] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375 (Gummow J)..

   [36] Re Hicks’ Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).

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

7. The ground based on s 58 was particularised in the SGPs as follows:

   The Opposed Mark is substantially identical with or deceptively similar to the trade mark ELLUME (called the Opponent's Mark) which has been used continuously in Australia before the priority date of 9 September 2020 for the Opposed Mark. The Opponent's mark has been used prior to 9 September 2020 in Australia in relation to the same or similar goods for which the Opposed Mark is sought to be registered:

   The Opponent's Mark has been used in Australia at least as early as 2018 when the Opponent's mark was used on during clinical trials of the ELLUME Home influenza test product[38]. The products branded with the Opponent's trade mark have been distributed and used continuously since as early as 2018.

   The Opponent's Mark has been used in relation to an influenza home test diagnostic product and use of the mark has commence in the USA for a covid home test product.

   [38] The SGP for 2104502 replaces the words ‘Home influenza test product’ with ‘diagnostic home test product’

8. In respect of the second factor the delegate in Sola Tube Australia Pty Ltd v Gabriel Andrews[39] stated as follows:

   The “same kind of thing” in respect of the goods or services of the parties does not equate to goods or services which may be “of the same description” (the latter being a term of art for goods or services which are not the same but which consumers are likely to believe come from the same source). It is a narrower test that applies in the context of a claim to ownership[40].

   [39] Sola Tube Australia Pty Ltd v Gabriel Andrews [2014] ATMO 103, [14]-[18] (Hearing Officer Worth).

   [40] Colorado Group Limited v Strandbags Group Pty Ltd (‘Colorado’) [2007] FCAFC 184; (2007) 74 IPR 246; Krone AG v Brook (t/as Cannon Watch Co) (1996) 34 IPR 340.

9. Given that I have found that the Remaining Goods and Services are not ‘of the same description’ or ‘closely related’ as the Applicant’s Goods and Services, nor have I been able to identify any other use of the Opponent’s Trade Mark in Australia for any good or service other than the Opponent’s Goods, I must necessarily reach a similar conclusion with respect to the s 58 ground of opposition, namely that the Remaining Goods and Services are not the ‘same kind of thing’ as the goods for which Opponent has established ownership of the Opponent's Trade Mark. 

10. As the Opponent has failed to establish the second factor (and must establish all three factors to succeed in the s 58 ground of opposition), I find that the Opponent has failed to establish the ground of opposition pursuant to s 58.

    Section 60

11. Section 60 is reproduced below:

    Section 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.

12. To establish a ground of opposition under s 60, an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.

13. Some of the relevant principles of s 60 are summarised in the recent case of Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods as follows:

    The first of these elements calls for a factual inquiry into the extent and nature of the reputation that had been acquired by the existing trade mark – here, the Aachi mark – in Australia. The second element calls for an assessment of the likelihood of deception or confusion arising from use of the new trade mark as a consequence of that reputation.

    The existing trade mark need not even be registered for s 60 to be engaged (Fry Consulting Pty Ltd v Sports Warehouse Inc [2012] FCA 81; 201 FCR 565 (Fry Consulting) at [121] (Dodds-Streeton J); Qantas Airways Ltd v Edwards [2016] FCA 729 (Qantas Airways) at [144] (Yates J)). The classes of goods and/or services in respect of which the existing trade mark has been used, and those in which the new trade mark is intended to be used, may be very relevant to the likelihood of confusion (see Qantas Airways at [143] and GAIN Capital UK Limited v Citigroup Inc (No 4) [2017] FCA 519 at [148] (Markovic J)), but the fact that the classes are not the same cannot be determinative. The reputation of the existing trade mark need not relate specifically to the goods or services that are the subject of the proposed application (Qantas Airways at [143]; Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923 (Rodney Jane Racing) at [87] (O’Bryan J)). The question is simply whether the reputation of the existing trade mark in Australia is such that the use of the new trade mark is “likely” to be deceptive or cause confusion.[41]

    [41] [2023] FCA 487, [20]-[21] (Kennett J)

14. In McCormick & Co Inc v McCormick[42], Kenny J considered what is intended by the word ‘reputation’ as used 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’.[43]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

    [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[44]

    [42] [2000] FCA 1335.

    [43] Ibid, [81].

    [44] (1992) 33 FCR 302, 343.

15. On the subject of reputation, Kenny J also referred to Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & 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 sales or turnover of goods sold under that 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 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.[45]

    [45] (1999) 47 IPR 423, 436.

16. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[46] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955 (Cth). That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’. Nevertheless the words of Heerey J provide 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 … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[47]

    [46] [2000] FCA 1587.

    [47] Ibid [91] (emphasis in original). Justice Heerey’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

17. The Opponent has particularised the ground of opposition in the SGPs in the manner set out below: 

    The Opponent's Mark has been used in Australia since as early as 2018 in relation to clinical trials for a influenza[48] home test diagnostic product.

    The Opponent's Mark has acquired significant reputation in the Australian marketplace and more recently in the USA for a covid home test product sold since February 2021.

    Use of the Opposed Mark by the Applicant (or any other person) in relation to the same or similar goods and services in relation to which the Opposed Mark is sought to be registered would be likely to deceive or cause confusion contrary to section 60.

    [48] The SGP for 2104502 deletes the words ‘to clinical trials for a influenza’.

18. At the relevant date it is unclear, on the basis of the evidence before me, that the Opponent’s had ever offered any commercial products for sale in Australia under the Opponent’s Trade Mark or conducted any advertising featuring the Opponent’s Trade Mark. The entirety of the Opponent’s reputation in the Opponent’s Trade Mark at the relevant date appears to arise from some moderate-scale trials of medical devices in 2016, a small number of laudatory articles and the presence of the Opponent’s company website (noting no evidence of the number of visitors has been provided, and given that the Opponent had not offered any products under the Opponent’s Trade Mark, not many visitors would be expected). This is manifestly insufficient to establish a reputation in the Opponent’s Trade Mark sufficient for the requirements of under s 60(a).

19. I find that the Opponent has failed to establish the ground of opposition pursuant to s 60.

    Section 42

20. 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.

21. 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 on the balance of probabilities.[49]  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’.[50]

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

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

22. The Opponent has particularised the ground of opposition in the SGPs as follows: 

    Because of use and reputation in the Opponent's Mark in Australia since as early as 2018 in clinical trials, use of the Opposed Mark in relation to the same or similar goods and services would be likely to mislead or deceive consumers contrary to sections 18 and 29 of the Australian Consumer Law (Schedule 2 to the Australian Competition and Consumer Act 2010 (Cth)) or alternatively, constitute the common law tort of passing off.

23. 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,[51] 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.

    [51] 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).

24. Paraphrasing the statement of the Registrar’s Delegate in A G Professional Hair Care Products Ltd v Geagroup Invest SRL[52], 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, Justice Beaumont considered—in connection with the superseded Trade Practices Act1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[53] Sections 52 and 53 of the TPA were, respectively, the equivalent provisions to ss 18 and 29 of the ACL. Justice Hill in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:

    The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[54]

    [52] [2014] ATMO 65, [50] (Hearing Officer Wilson).

    [53] [2003] FCA 104, [107] (Beaumont J).

    [54] [1989] FCA 506, [40] (citations omitted).

25. 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 62A

26. Section 62A is reproduced below:

    62A 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.

27. The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith:

    ·persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;

    ·persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;

    ·persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.

28. The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a current leading Australian authority on s 62A.  In that case, Dodds-Streeton J made the following comments, quoting from Harrison’s Trade Mark Application[55]:

    Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.

    … The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[56]

    [55] [2004] EWCA Civ 1028; [2005] FSR 10 (Lord Justice Pill, Lady Justice Arden, Sir William Aldous).

    [56] [2012] FCA 81, [147].

1. Her Honour continued later in the same decision:

   The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.

   Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[57]

   [57] Ibid [165]-[166].

2. The Opponent has particularised this ground of opposition in the SGPs as follows:

   By reason of reputation in the Opponent's Mark of which the Applicant could have or should have been aware, the filing of the Opposed Mark is a filing in bad faith being an application that is substantially identical with or deceptively similar to the Opponent's Mark, in relation to the same or similar goods/services as covered by the Opposed mark.

3. The onus is on the Opponent to establish bad faith and it will not be found easily given the serious nature of the allegation.[58] 

   [58] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12] (Hearing Officer Nancarrow).

4. In asserting that the Trade Mark was applied for in bad faith, the Opponent has again particularised that there was a reputation in the Opponent’s Trade Mark at the time the application was filed.  While I have already found that there was no reputation in the Opponent’s Trade Mark at the relevant date, it also bears repeating here that ‘mere knowledge before the relevant date of another person’s trade marks, without more, does not in itself constitute the basis for a finding of bad faith.’[59] The Opponent’s allegation of bad faith here does not rise above an assertion of prior knowledge of its mark by the Applicant.  Even if I were to find the Applicant applied for the Trade Mark with knowledge of the Opponent (and this is doubtful, given the Opponent is a medical devices start-up of limited reputation and the Applicant has sought to register the Trade Mark for products primarily connected to pets) without more I would not find the application was in bad faith. This ground of opposition is not established.

   Resolution of Opposition

   [59] 1872 Holdings VOF v Havana Club Holding SA [2017] ATMO 12, [64] (Hearing Officer Thompson).

5. In Apple Inc. v Registrar of Trade Marks Yates J stated that:

   My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[60]

   [60] [2014] FCA 1304, [232].

6. In circumstances where an opposition has been established in respect of some, but not all of an applicant’s goods or services the Registrar may proceed to reject the application in its entirety, under the principles outlined above, but also has a discretion to offer an amendment to an applicant, allowing it to amend the application to remove goods and services for which a ground of opposition has been established.

7. The Opposition has been entirely unsuccessful with respect to Trade Mark No. 2118582 and this mark shall proceed to registration. With respect to Trade Mark No. 2104502 I consider it reasonable to offer an amendment to the Applicant’s Goods and Services to allow the Trade Mark to proceed to registration for the subset of Applicant’s Goods and services for which the s 44 ground was not established, namely the goods and services other than the Similar Goods.

8. On 10 July 2024 I provided the Applicant with an opportunity to amend its application for Trade Mark No. 2104502 to remove the similar goods which it did on 24 July 2024. The amendment has now been made. On that basis I find that the Opposition under s 44 has not been established for the revised set of goods for which the Trade Mark is sought to be registered.

   Decision and Costs

9. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application numbers 2104502 and 2118582 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 before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

10. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs in respect of trade mark number 2118582 against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations. In respect of trade mark number 2104502 I consider each party has had some degree of success so each party shall pay its own costs.

    Nicholas Smith

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    25 July 2024