Forbo Management SA v Yuxuan Yang

[2025] ATMO 27

TRADE MARKS ACT 1995

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

Re:Opposition by Forbo Management SA to registration of trade mark application number 2385526 (27) – LuxStep – in the name of Yuxuan Yang

Delegate:

Louise Tuohy

Representation:

Opponent: Pizzeys Patent and Trade Mark Attorneys

Applicant: PUOU IP

Decision:

2025 ATMO 27

Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 42(b), 44, 58 and 60 considered – none established – trade mark to proceed to registration

Background

1. This matter concerns an opposition by Forbo Management SA (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth)[1] to the registration of the following trade mark application (‘Application’) in the name of Yuxuan Yang (‘Applicant’):

   Trade mark number:              2385526

   Trade mark:  LuxStep (‘Trade Mark’)

   Filing date:  1 September 2023

   Specification:  Class 27: Non-slip underlays; Bath mats; Rubber-backed mats; Mats; Mats for bathroom use; Padded coverings for existing floors; External bath mats; Door mats; Carpets; Rugs; Non-slip mats for baths; Non-slip mats for showers; Non-slip mats (‘Applicant’s Goods’)

   [1]  Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.  

1. The Application was examined as required by s 31 and advertised for possible registration on 2 February 2024.

2. The Opponent filed its Notice of Intention to Oppose the possible registration on 22 March 2024, followed on 22 April 2024 by its Statement of Grounds and Particulars (‘SGP’), later rectified. The Applicant filed its Notice of Intention to Defend the opposition on 18 May 2024.

3. Thereafter the Opponent filed the following evidence in support (‘EIS’) in accordance with the Regulations:

• Declaration of Julie Maree Simpson, Trade Mark Attorney for the Opponent, made on 22 August 2024, with Exhibits JMS-1 to JMS-3 (‘Simpson’).  

1. The Applicant did not file any evidence in answer.

2. Once time for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing. The Opponent requested a decision without hearing and paid the appropriate fee. The matter has been allocated to me to determine as a delegate of the Registrar of Trade Marks for a decision based on the written record. I make my decision based on the particulars set out in the SGP and EIS.

Grounds of Opposition, Relevant Date and Onus

1. In the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 58 and 60.

2. The date at which the rights of the parties are to be determined is the filing date of 1 September 2023 (‘Relevant Date’) which is also the priority date for the purposes of ss 44 and 60.

3. The Opponent bears the onus of establishing at least one of the grounds of opposition.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3]

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

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

Discussion

1. Both parties are involved in the business of floor covering products.

Section 58

1. Section 58 provides:

   58  Applicant not owner of trade mark

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

1. In the SGP the Opponent particularises the s 58 ground of opposition as follows:

   The relied upon trade marks were all used before the priority date of the Opposed application.

   The Opponent has a family of STEP trade marks.

   The Opponent is relying on the trade mark rights of its Registration nos. 916858 SureSTEP in Class 27 filed on 2 May 2002 for "Coverings for floors and hard floors, mats, carpets and rugs, linoleum; non-textile wall hangings and wall coverings" and 917652 SafeSTEP in Class 27 filed on 2 May 2002 for "Coverings for floors and hard floors, mats, carpets and rugs, linoleum; non-textile wall hangings and wall coverings".

   The Opponent is also relying on its common law rights in relation to the mark STEP which covers "Coverings for floors". Common law use of the mark STEP extends back to at least 2002.

1. To establish this ground, the Opponent must establish the following requirements:

   I.      that the Trade Mark is identical, or substantially identical, to the trade marks relied upon by the Opponent;[4]

1. that the Applicant’s Goods are the ‘same kind of thing’ as the goods for which the trade marks relied upon by the Opponent was used;[5] and

2. that a person other than the Applicant has the earlier claim to ownership based on use in Australia of the trade marks relied upon by the Opponent prior to whichever is earlier of: (a) the application to register or (b) any actual use of the Trade Mark in Australia by the Applicant.[6]

   [4] Carnival Cruise Lines Inc. v Sitmar Cruises Limited [1994] FCA 68, [62] (Gummow J).

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

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

1. I will now consider whether the Trade Mark is identical or substantially identical to the Opponent’s trade marks, The Opponent relies on the following trade mark registrations (‘collectively ‘Opponent’s Marks’):

   Trade mark number:              916858

   IR number:  781037

   Trade mark:  SureSTEP (‘858 Mark’)

   Filing date:  2 May 2002

   Priority date:  3 June 2002

   Specification:  Class 27: Coverings for floors and hard floors, mats, carpets and rugs, linoleum; non-textile wall hangings and wall coverings (‘858 Goods’)

And

Trade mark number:              917652

IR Number:   781134

Trade mark:  SafeSTEP (‘652 Mark’)

Filing date:  2 May 2002

Priority date:  6 March 2002

Specification:  Class 27: Coverings for floors and hard floors, mats, carpets and rugs, linoleum; non-textile wall hangings and wall coverings (‘652 Goods’)

And

Common law trade mark:      STEP (‘STEP Mark’)

Goods:  Covering for floors (‘STEP Goods’)

  

1. The test for substantial identity requires that the trade marks are considered side by side while having regard to the essential features of the trade marks.[7] Where a total impression of resemblance emerges from the comparison, the trade marks will be considered substantially identical. For the purposes of comparison, I have reproduced the respective trade marks below:

   [7] The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407, 414 (Windeyer J) (‘Shell’).  

Trade Mark

Opponent’s Marks

LuxStep

858 Mark

SureSTEP

652 Mark

SafeSTEP

STEP Mark

STEP

1. On a side by side comparison I find the trade marks are not substantially identical. While all trade marks share the word STEP, the Trade Mark is a compound word which starts with the word LUX. In comparison, the 858 and 652 Marks are also compound words which start with the words SURE and SAFE respectively, and the STEP Mark is for the word STEP solus. These differences in the trade marks are unlikely to go unnoticed. The total impression emerging from a side by side comparison is not one of similarity.  

2. Therefore, the s 58 ground of opposition has not been established.

Section 44

1. Section 44 relevantly provides:

   44  Identical etc. trade marks

   (1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

   (a) the applicant’s trade mark is substantially identical with, or deceptively similar to:

   (i) a trade mark registered by another person in respect of similar goods or closely    related services; or

   (ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

   (b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

1. To satisfy the s 44 ground of opposition the Opponent must establish that the Trade Mark is substantially identical, or deceptively similar to, another trade mark/s with an earlier priority date, in the name of a person other than the Applicant, and in respect of similar goods or closely related services.

2. In the SGP the Opponent relies on its 858 and 652 trade mark registrations.[8] I have already found that the respective trade marks are not substantially identical therefore I must decide if the trade marks are deceptively similar.

   [8] As the Opponent is arguing that the 858 and 625 Marks are deceptively similar to the Trade Mark, reg. 4.15A applies. Reg 4.15A is effectively identical to s 44 but applies when the basis for the ground of opposition is a Protected International Trade Mark which is the case with the 858 and 625 Marks.

3. Each of the 858 and 652 Marks are in the name of a person other than the Applicant and have a priority date that is earlier than the Relevant Date of the Trade Mark. The comparison of goods is straight forward. The Trade Mark claims  Non-slip underlays; Bath mats; Rubber-backed mats; Mats; Mats for bathroom use; Padded coverings for existing floors; External bath mats; Door mats; Carpets; Rugs; Non-slip mats for baths; Non-slip mats for showers; Non-slip mats in class 27 which are the same or similar to the Coverings for floors and hard floors, mats, carpets and rugs, linoleum goods covered by 858 and 652 Marks.

4. The expression ‘deceptively similar’ is defined by s 10:

   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.

5. 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].[9]

   [9] Ibid [13].

6. The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[10] conveniently stated the relevant principles, which was summarised in The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd[11] as follows:

   [10] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

   [11] [2023] FCA 482, [55] (Jackman J).

(a)the resemblance between the two marks must be the cause of the likely deception or confusion;[12]

[12] 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;[13]

[13] 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;[14]

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

(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;[15]

[15] Ibid.

(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’;[16]

[16] Ibid.

(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;[17]

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

(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;[18]

[18] Shell (n 7), 415.

(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; [19]

[19] 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).

1. 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;[20]

(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”;[21]

(k)evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[22] and

(l)any intention to deceive or cause confusion may be a relevant consideration but is not required.[23]

858 Mark

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

[21] 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).

[22] Australian Woollen Mills Ltd (n 23).

[23] 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 23), 657.

1. The Opponent’s 858 Mark is comprised of the word combination SURE and STEP and the Trade Mark is for the words LUX and STEP. The trade marks are visually and aurally dissimilar. In addition, I consider the different prefix in the 858 Mark is sufficient to create an overall conceptual meaning that is sufficiently different from the Trade Mark such that consumer confusion is unlikely. The likely impression of the words SURE and STEP in relation to the 858 Goods is that the consumer can be confident they will not slip when they step on the Opponent’s floor coverings, in contrast the Trade Mark evokes the concept of the goods being a luxury to step on.

2. In determining whether there is a likelihood of deception or confusion I must consider all the surrounding circumstances including the circumstances in which the goods are offered and the probable acquirer of those goods. These goods are floor covering directed at the public at large. I consider that consumers would be typically engaged with a high degree of care and attention when purchasing these goods as they would expect the goods to fit with their interior design expectations. In this regard, I find it more probable than not that consumers of these goods would not be contextually confused by the offerings of the Opponent and the Applicant.   

3. In assessing the trade marks in their entirety, and the likely impression on the mind of the relevant consumer, I do not consider that the Trade Mark is deceptively similar to the 858 Mark.

625 Mark

1. The Opponent’s 625 Mark is comprised of the word combination SAFE and STEP and the Trade Mark is for the words LUX and STEP. The trade marks are visually and aurally dissimilar. In addition, I consider the different prefix in the 625 Mark is sufficient to create an overall conceptual meaning that is sufficiently different from the Trade Mark such that consumer confusion is unlikely. The likely impression of the words SAFE and STEP in relation to the 858 Goods is that of floor covering that are safe to step on, in contrast the Trade Mark evokes the concept of the goods being a luxury to step on.

2. As noted at paragraph [26], consumers of floor coverings would usually take a high degree of care and attention in purchasing such goods and hence it is more probable than not that consumers of these goods would not be confused by the respective trade marks.

3. In assessing the trade marks in their entirety, and the likely impression on the mind of the relevant consumer, I do not consider that the Trade Mark is deceptively similar to the 858 Mark.

4. For completeness, I do not consider the Opponent’s 858 and 625 Marks form a ‘family’ of trade marks following the aforementioned structure, as the trade marks must be considered in their entirety,[24] and in any event the Opponent is not the only proprietor of -STEP suffix trade marks in class 27.[25] As such I consider that the Trade Mark in its entirety has meaningful and memorable variation as neither of the 858 and 625 Marks contain the word LUX. It is this difference which satisfies me that the 858 and 625 Marks are not deceptively similar to the Trade Mark.

   [24] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [92] (Keane CJ, Stone and Jagot JJ).

   [25] Verified on the Register of Trade Marks.

5. The ground of opposition under s 44 has not been established.

Section 60

1. Section 60 provides:

   60  Trade mark similar to trade mark that has acquired a reputation in Australia

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)  another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (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.

1. In the SGP the Opponent particularises the s 60 ground of opposition as follows:

   The Opponent (which term hereinafter includes its predecessors in business, interest, rights and title, subsidiaries, affiliates and joint ventures) is an internationally reputed and leading manufacturer of flooring systems and floor coverings including mats, rugs, linoleum under the Opponent’s Marks;  

   The Opponent’s flooring systems and floor coverings under the Opponent’s Marks are available in numerous countries throughout the world, including Australia;   

   As a result of the use and recognition of the Opponent’s Marks, the Opponent has acquired a reputation before the priority date of the Opposed Trade Mark;

   The Opposed Trade Mark is one which is likely to be confused with the Opponent’s Marks;

   Because of the aforementioned reputation and the similarity between the respective marks, use of the Opposed Trade Mark in respect of the goods claimed would be likely to deceive or cause confusion.

   The Opponent is relying on the trade mark rights of its Registration nos. 916858 SureSTEP in Class 27 filed on 2 May 2002 for "Coverings for floors and hard floors, mats, carpets and rugs, linoleum; non-textile wall hangings and wall coverings" and 917652 SafeSTEP in Class 27 for "Coverings for floors and hard floors, mats, carpets and rugs, linoleum; non-textile wall hangings and wall coverings" filed on 2 May 2002.

   The Opponent is also relying on its common law rights in relation to the mark STEP which covers "Coverings for floors". The use of this mark pre-dates the use of the Opposed Mark.

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

2. In McCormick & Co Inc v McCormick, Kenny J asked what is intended by the word ‘reputation’ in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’12F9F[26] and 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…[27]

   [26] [2000] FCA 1335, [81].

   [27] [1992] FCA 159, [118].

3. Justice Kenny also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

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

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

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sale may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an association of the trade marks with the goods or services themselves.14F11F[28]

   [28] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 436.

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

   What is “significant” or “substantial” will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.F12F[29]

   [29] [2000] FCA 1587, [91], (albeit in relation to paragraph 28(a) of the now superseded Trade Marks Act 1955 (Cth)), (emphasis in original).

5. In Simpson, Ms Simpson states that the Opponent has an office in Australia to service its Australian Customers. In addition, the Opponent has a website at < which has been registered since 16 February 1996.[30] Ms Simpson attests that the Opponent also has a registered Australian website < which re-directs to < (‘Australian Website’).

   [30] Simpson [5], Exhibit JMS-2.

6. In this matter each trade mark is separate when considering the operation of s 60 and it is appropriate to consider the use of which they have been put.

858 Mark

1. Exhibit JMS-3 to Simpson comprises screenshots from the Wayback Machine Internet Archive for the Opponent’s Australian Website dated between October 2017 to March 2024.  The pages display slip resistant floor coverings under the 858 Mark.  

652 Mark

1. Exhibit JMS-3 to Simpson comprises screenshots from the Wayback Machine Internet Archive for the Opponent’s Australian Website dated between October 2017 to March 2024.  The pages display slip resistant floor coverings under the 652 Mark. 

STEP Mark

1. Exhibit JMS-3 to Simpson comprises screenshots from the Wayback Machine Internet Archive for the Opponent’s Australian Website dated between October 2017 to March 2024.  The pages discuss the Opponent’s STEP collection of slip resistant flooring. 

2. In my assessment of the evidence I consider that the Opponent has failed to sufficiently evidence the breadth of the Australian public in Australia that are likely to be aware of the Opponent’s Marks by quantitative or qualitative dimensions. Whilst I acknowledge the Opponent has been producing and offering slip resistant floor covering to Australian consumers since October 2017 under the Opponent’s Marks, mere use of a trade mark does not demonstrate that a trade mark has garnered a reputation that may result in deception or confusion. The Opponent has not provided any sales or advertising figures or examples, nor has it provided any metrics regarding Australian visitors to its Australian Website. As such the evidence is insufficient to establish, as a matter of fact, that the Opponent’s Marks had acquired a reputation in Australia amongst a significant or substantial number of consumers at the Relevant Date in respect of the 858, 652 and STEP Goods.

3. As I have found that the Opponent’s Marks have not acquired a reputation in Australia before the Relevant Date, there is no need for me to consider the second limb of s 60 and the ground of opposition under s 60 has not been established.

Section 42(b)

1. Section 42(b) provides:

   42 Trade Mark scandalous or its use contrary to law

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

   [ …]

   (b)  its use would be contrary to law.

1. In the SGP the Opponent particularises the s 42(b) ground of opposition as follows:

   Use would be contrary to the Competition and Consumer Act 2010 (Cth).

   Use would be contrary to the tort of passing off.

1. As with all the grounds of opposition, the onus of proof rests with the Opponent and in that regard the case law on s 42(b) requires the Opponent to show that use of the Trade Mark would be, rather than could or might be contrary to law.[31]

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

2. Section 18 of the Australian Consumer Law[32] (‘ACL’) is concerned with misleading or deceptive conduct, while s 29 of the ACL is concerned with false and misleading representations. Case law has made it plain that s 18 of the ACL imposes a more stringent test than that for deception or confusion under s 60.[33] I have found that the Opponent has failed to establish a ground of opposition under s 60. Consequently, I find that the Opponent has also failed to establish that use of the Trade Mark would be contrary to s 18 of the ACL.

   [32] Competition and Consumer Act 2010 (Cth), sch 2.

   [33] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198. This case was decided under the superseded s 52 Trade Practices Act 1974 (Cth) (‘TPA’) the equivalent provision to the current s 18 of the ACL.

3. In relation to s 29 of the ACL it has been held that where a trade mark does not offend s 18 of the ACL, neither will it offend s 29 of the ACL[34] and nor will it constitutepassing off.[35]

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

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

4. The Opponent has not established the ground of opposition under s 42(b).

Decision

1. Section 55 provides:

   55  Decision

   (1)  Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

   (a)  to refuse to register the trade mark; or

   (b)  to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

2. The Opponent has not established any grounds of opposition. Therefore, trade mark application number 2385526 may proceed to registration one month from the date of this decision. If the Registrar is served with a notice of appeal, I direct that the disposition of the Application should be in accordance with the Court’s order or direction.

Costs

1. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Opponent under s 221 in line with Schedule 8 of the Regulations.

Louise Tuohy

Hearing Officer

Delegate of the Registrar of Trade Marks

7 February 2025