FWRD,LLC v Corezero Pty Ltd

[2025] ATMO 11

TRADE MARKS ACT 1995

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

Re:Opposition by FWRD, LLC to registration of trade mark application number 2272881 (classes 9 & 42) - FFWD - in the name of Corezero Pty Ltd

Delegate:

Timothy Brown

Representation:

Opponent: Angela McDonald of Counsel, instructed by Ashurst Australia.

Applicant: Yee Soon

Decision:

2025 ATMO 11

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 44, 58, 58A and 60 considered – no grounds established – trade mark to proceed to registration.

Background

1. This decision concerns an opposition brought by FWRD, LLC (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth)[1] to the registration of the following trade mark:

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

Trade Mark Number

2272881

Trade Mark

FFWD (‘Trade Mark’)

Filing Date

26 May 2022

Owner

Corezero Pty Ltd (‘Applicant’)

Goods and Services

Class 9: Data processing software

Class 42: Software as a service (SaaS)

(‘Applicant’s Goods and Services’)

1. The Trade Mark was examined and advertised for possible acceptance on 27 October 2022.

2. On 24 December 2022, the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark, followed by a Statement of Grounds and Particulars on 24 January 2023. The Applicant filed a Notice of Intention to Defend the opposition on 17 March 2023.

3. On 20 June 2023, the Opponent filed evidence in support of the opposition. The Applicant filed evidence in answer on 6 September 2023. The Opponent filed evidence in reply on 13 November 2023.

4. Following the end of the evidence stages, the Opponent requested to be heard. The matter was heard before me on 16 October 2024. The Opponent was represented by Angela McDonald of Counsel, instructed by Melissa Preston of Ashurst Australia. The Opponent’s oral submissions were supported by its written submissions filed on 2 October 2024. The Applicant relied on written submissions filed on 7 October 2024.

Grounds, Onus and Relevant Date

1. The nominated grounds of opposition are ss 42(b), 43, 44, 58, 58A, 60, and 62A. At the hearing the Opponent indicated that it no longer pressed ss 43 and 62A.

2. The Opponent bears the onus of establishing one or more of the grounds of opposition.[2] The required standard of proof is on the balance of probabilities.[3] The date at which the rights of the parties will be determined is 26 May 2022 (‘Relevant Date’), being the filing date of the Trade Mark and the priority date of the Trade Mark for the purposes of ss 44 and 60.

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

   [3] Pfizer Products Inc v Karam (2006) FCA 1663, [6]-[26] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

Preliminary Matter

1. The Applicant’s written submissions were filed in the form of a declaration and included material not originally filed as part of the Applicant’s evidence in answer, namely:

• An extract from the Applicant’s website, dated 24 December 2021 and sourced from Wayback Machine Archive; and

• A press release dated 26 May 2022 from SoftBank Corp.

1. The Registrar has discretion to consider whether information available is relevant and whether it should be considered in making a decision.[4] However, evidence filed after the period for filing evidence has concluded is not considered as a matter of routine, and a party seeking admission of new evidence must make a compelling case for its conclusion.

   [4] Trade Mark Regulations 1995 (Cth) reg 21.19.

2. In the present matter, I note that the press article was referenced in the Applicant’s evidence in answer, but that otherwise the new material was not accompanied by any request for its inclusion in the matter, nor were any compelling reasons provided by the Applicant. In the absence of such reasons, I have not exercised my discretion to allow the material into the hearing.

Evidence

1. The following evidence was filed:

Evidence in Support

Declaration of Melissa Louise Preston, consultant at Ashurst Australia, representative for the Opponent, dated 20 June 2023 (‘Preston’) with Annexures MP-1 to MP-8.

Evidence in Answer

Declaration of Yee Soon, Chief Executive Officer and Director of the Applicant, dated 31 August 2023 (‘Soon’) with Exhibits A to D.

Evidence in Reply

Declaration of Sara Mirtorabi, Associate General Counsel of Opponent, dated 10 November 2023 (‘Mirtorabi’) with Annexures A to J, including Confidential Annexures H and I.

Opponent

1. The Opponent is a retail e-commerce platform for a variety of clothing, footwear, beauty products and fashion products. According to Mirtorabi, the Opponent first used the trade mark FWRD (‘FWRD Mark’) internationally and in Australia in 2014. In support of this contention, Mirtorabi includes extracts from the website, (‘Opponent’s Website’) sourced from the Wayback Machine Archive,[5] which includes extracts from various dates between 11 November 2014 and 1 May 2022.

   [5] Mirtorabi Annexure A.

2. In addition to its online retail platform, the Opponent also uses the FWRD Mark in connection with software. Mirtorabi declares that in 2013 the Opponent released a software application (‘FWRD app’) bearing the FWRD Mark designed to provide users with access to its retail platform. Annexed to Mirtorabi are extracts from the FWRD app, the Google Play store and the Apple App store demonstrating use of the FWRD Mark in relation to software applications.[6] Mirtorabi also includes the number of Australian users on the FWRD app from 2016 to 2020.

   [6] Ibid Annexure B.

3. The Opponent is the owner of the following registered trade marks in Australia:

Trade Mark No.	Trade Mark	Priority Date	Class(es)
2021136	FWRD	4 July 2019	25
2021138	FWRD	24 July 2019	35[7]
2305681	FWRD	11 April 2022[8]	9, 35, 41 and 42[9]

[7] See Schedule A for full specification.

[8] Convention details: Number 86251, Jamaica.

[9] See Schedule B for full specification.

1. Ms Mirtorabi asserts that the FWRD Mark has acquired a substantive reputation in Australia. In support, Mirtorabi includes the number of website users who visited the Opponent’s Website from Australia between 2014 to October 2023, the sales of goods and services globally and in the Australian market from 2014 to 2020, and the Opponent’s advertising expenditure from between 2016 to 2023.

2. The FWRD Mark is promoted primarily via digital and social media. Annexed to Mirtorabi are extracts from the Opponent’s YouTube, Instagram, Pinterest, Twitter and Facebook accounts.[10] A spreadsheet containing a list of social media posts tagging the Opponent’s social media accounts and the estimated impressions from those posts are also included in Mirtorabi.[11]

   [10] Mirtorabi Annexures C to G.

   [11] Ibid Confidential Annexure H.

Applicant

1. The Applicant operates in the data processing software industry, providing its goods and services directly to businesses. According to Soon, the Trade Mark was first used in Australia in June 2021 in connection with data processing, data pipelining, data analytics and data visualization systems.

2. Soon asserts that the Applicant has continuously been using the Trade Mark since July 2020. I note that this is inconsistent with the statement that the Trade Mark was first used in June 2021. Soon includes details of the Applicant’s annual turnover from 2021 to 2023.

3. The Applicant owns the domain (‘Applicant’s Website’). Exhibited to Soon is an extract from the Applicant’s Website displaying use of the Trade Mark in connection with data processing and analytics software,[12] and several extracts from the Applicant’s Website dated from 2021 and 2022 sourced from the Wayback Machine Archive.

   [12] Soon Exhibit B.

4. Soon refers to a joint press release with SoftBank Corp, Japan dated 26 May 2022, which references the Trade Mark as the Applicant’s flagship product.

Discussion and Reasons

Section 44

1. Section 44 relevantly provides:

   (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.

   (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.

2. To succeed under this ground of opposition the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, in the name of person other than the Applicant, in respect of goods or services that are similar, or closely related to the Applicant’s Goods or Services.

3. The Opponent relies on trade mark registrations 2021138 (‘138 Mark’) and 2305681 (‘681 Mark’) (collectively, ‘Opponent’s Marks’) as the basis for this ground of opposition. The Opponent’s Marks have an earlier priority date than the Trade Mark and are made in the name of someone other than the Applicant.

Comparison of Goods and Services

1. Section 14 provides:

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

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

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

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

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

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

2. Whether goods are of the same description depends on ‘whether the goods belong to the same or different trades’[13]. This is determined through consideration of a number of factors, including the nature of the goods,[14] the purpose for which the goods will be used,[15] and the trade channels through which the goods are bought and sold.[16] In Reckitt and Colman (Australia) Limited v Boden, Dixon J stated:

   What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put.  Another is whether they are commonly dealt with in the same course of trade or business.[17]

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

   [14] Ibid.

   [15] Ibid.

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

   [17] (1954) 70 CLR 84, 94.

3. The Act does not define ‘closely related’ goods and services. In Registrar of Trade Marks v Woolworths Ltd[18] French J recognised that goods and services are fundamentally different things,[19] but observed:

   There will be classes of goods which are similar to each other. There will also be classes of services which are similar. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related” … it is a term of wider import than “similar” and can apply to the relationships between competing services as well as between goods and services.[20]

   [18] [1999] FCA 1020 (‘Woolworths’).

   [19] Ibid [37].

   [20] Ibid [37].

4. I am satisfied that the Applicant Goods and Services are the same and closely related to some of the goods and services of the 681 Mark. The services specified by the 681 Mark in Classes 9 and 42 include, amongst other goods and services, a wide variety of computer software goods and services for providing online non-downloadable software and software as a service. These goods and services are the same or similar to the Applicant’s claims for ‘data processing software’ in Class 9 and ‘software as a service’ in Class 42.

5. The services of the 138 Mark are comprised of retail and online retail store services featuring a variety of goods, including clothing, jewelry, sporting goods, electronic accessories, décor and bags, and services for the ‘presentation of goods on communication media, for retail purposes’. I do not consider these services to be closely related to the Applicant’s ‘data processing software goods’ in Class 9, nor do I consider the services to be similar to the Applicant’s software as a service claim in Class 42. The nature and purpose of the Applicant’s Goods and Services are distinct from retail services, and consumers would not expect providers of retail services to provide software as a service or make data processing software programs.

6. I will now turn to the question of whether the Trade Mark is substantially identical with or deceptively similar to the 681 Mark. 

Comparison of Trade Marks

1. The trade marks under comparison are reproduced below:

Trade Mark	681 Mark
FFWD	FWRD

1. Whether two trade marks are substantially identical is determined by a side by side comparison having regard to the essential features of the trade marks and the total impression of resemblance or dissimilarity that emergers from the comparison.[21] The Opponent submits that the trade marks are substantially identical for the following reasons:

• both trade marks are represented in plain text, and could be represented in similar styles;

• both trade marks consist of four letters, three of which are identical, including the first and last letters;

• both trade marks are likely to be pronounced as ‘forward’; and

• the trade marks share a very similar meaning, being ‘forward’ or ‘fast forward’. The Addition of ‘F’ in the Trade Mark could also indicate ‘Fashion’, and the Trade Mark could be construed as an abbreviation for ‘Fashion Forward’.

  [21] Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [12] (Windeyer J).

1. In my view, when compared side by side the differences between the trade marks are readily apparent. Although the trade marks are both comprised of four letters beginning in the letter ‘F’ and ending in the letter ‘D’, the remaining different letters are sufficient to differentiate the trade marks when compared side by side. I am satisfied that there is not a total impression of resemblance between the trade marks.

2. The approach for assessing whether trade marks are deceptively similar was outlined by Windeyer J in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd:

   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 [mark].[22]

   [22] [1963] HCA 66, [13].

3. The basis for any deception or confusion is the impression or recollection of the trade marks that is carried away and retained by the ordinary consumer.[23] Accordingly, an allowance is made for imperfect recollection of the trade marks.[24] The impression comes from the trade marks in their entirety,[25] and is informed by the look, sound and ideas conveyed by the trade marks.[26]

   [23] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ).

   [24] Crazy Ron's Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [77] (Moore, Sackville, and Emmett JJ).

   [25] Clarke v Sharp (1898) 15 RPC 141, 146 (Byrne J).

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

4. For trade marks to be considered deceptively similar there must be a real and tangible danger of deception or confusion occurring.[27] This will be the case where there is a real likelihood that an ordinary person would be caused to wonder whether the goods or services come from the same trade source.[28]

   [27] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J); Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French J).

   [28] Ibid.

5. To the question of deceptive similarity, the Opponent repeated its submissions, noting that an imperfect recollection of the trade marks would make confusion all the more likely. In response, the Applicant advanced the following submissions:

• although both trade marks consist of four letters, the differences in the letters render the trade marks visually distinct;

• the pronunciation of the trade marks differs: ‘FFWD’ is likely to be pronounced as ‘Fast Forward’ or ‘Filter Forward’ or by its individual letters. ‘FWRD’ is likely to be pronounced as ‘Forward”; and

• the trade marks differ in meaning and connotation: ‘FFWD’ being an abbreviation of ‘Fast Forward’ while ‘FWRD’ is an abbreviation of ‘Forward’.

1. The trade marks are each comprised of four letters, ‘FFWD’ and ‘FWRD’ respectively, rendered in plain text. As an initial observation, I note that these trade marks can be construed as both acronyms and abbreviations. It is not uncommon for an initialism or acronym to become part of the vernacular, or to possess various meanings. Several examples were cited by the Full Court in Australian Meat Group Pty Ltd v JBS Australia Pty Ltd (‘Australian Meat Group’)[29] such as ‘radar’ (radio detection and ranging), or APRA, meaning the Australian Prudential Regulation Authority, the Australian Performing Right Association, or the Australian Professional Rodeo Association.[30] In this matter, both parties nominated a number of potential meanings for the two trade marks, most notably, ‘FWRD’ as an abbreviation of ‘Forward’ and ‘FFWD’ as an abbreviation of ‘Fast Forward’. I accept that these trade marks could bear those meanings, but this would be largely dependent on the context in which the respective trade marks would be used. For example, the Opponent’s use of the FWRD Mark demonstrated in its evidence clearly indicates that it intended the FWRD Mark to be construed as an abbreviation for the word ‘Forward’. However, there is no evidence provided by either party to support the likelihood that consumers would characterise and understand the trade marks in the context of software or software as a service as either ‘Fast Forward’ or ‘Forward’.

   [29] [2018] FCAFC 207 (Allsop CJ, Besanko and Yates JJ).

   [30] Ibid [81].

2. Turning to the visual and aural aspects of the marks, despite both marks beginning with the letter ‘F’ and ending with the letter ‘D’, in my view, it is unlikely that consumers would discount the significance of the different letters, ‘WR’ and ‘FW’, present in the trade marks. This difference is particularly discernable both visually and aurally when the marks are considered as acronyms or initialisms. Furthermore, the different order and arrangement of the letters in the respective marks mitigates the any degree of visual similarity that may be derived from the trade marks sharing the letters ‘F’, ‘W’ and ‘D’. Although I accept the potential of some degree of conceptual similarity derived from the meanings of both trade marks may have in certain contexts, and for the trade marks to be pronounced not as acronyms or initialisms, but as the words ‘Forward’ and ‘Fast Forward’, I am not convinced that this would result in any real tangible danger of confusion. The impression of trade marks in their totality is of two different acronyms.

1. When considered as a whole, and even allowing for imperfect recollection, I am not satisfied that there would be a real or tangible danger of confusion between the Trade Marks and the Opponent’s Marks. Accordingly, the ground of opposition under s 44 has not been established.

Section 58A

1. Section 44(4) allows a trade mark to be accepted because it has been continuously used since before the priority date of the trade mark with which it is substantially identical or deceptively similar. For s 58A to apply, the trade mark must have been accepted by the examiner under s 44(4), or a hearing officer finds during opposition that it is appropriate to apply those provisions. In this matter the Trade Mark was not accepted by the examiner under the provisions of s 44(4). Furthermore, given my finding that the Trade Mark is not substantially identical with, or deceptively similar to, any of the Opponent’s Marks, the provisions of section 44(4) are not available to be applied in this opposition proceedings.  Accordingly, the ground of opposition under s 58A has not been established.

Section 58

1. Section 58 provides:

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

2. Ownership of a trade mark can be established through authorship and first use of a trade mark,[31] or, in the absence of use, a combination of authorship, the filing of an application and an intention to use the trade mark.[32] To succeed in this ground of opposition, the Opponent must establish the following:

   ·     the Trade Mark is identical, or substantially identical, to an earlier trade mark;

   ·     the trade mark upon which the Opponent relies has been used in respect of goods and services that are ‘the same kind of thing’ as the Applicant’s Goods and Services; and

   ·     a person other than the Applicant has an earlier claim of ownership based on prior use of the earlier trade mark before the Relevant Date.[33]

   [31] Moorgate Tobacco Co Ltd v Philip Morris Ltd (no 2) 156 CLR 414 (Deane J); Food Channel Network Pty Ltd. v Television Food Network GP [2010] FCAFC 58, [49], [55] (Keane CJ, Stone and Jagot JJ).

   [32] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [50] (Greenwood, Jagot and Beach JJ) (‘Pham’); Shell Co of Australia Ltd v Rohm and Haas Co (1948) 78 CLR 601, 627 (Dixon J).

   [33] Pham (n 32) [50].

3. The Opponent relies on its use of the FWRD Mark in Australia since 2014 as demonstrated in Mirtorabi.

4. In my discussion on the s 44 ground of opposition, I indicated that I do not consider the Trade Mark to be substantially identical to the Opponent’s Marks, which are the same trade mark as the FWRD Mark. Accordingly, I am satisfied that that the ground of opposition under s 58 has not been established.

Section 60

1. Section 60 provides:

   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.

2. To establish this ground of opposition, the Opponent must establish:

   • A reputation was acquired by another trade mark in Australia before the Relevant Date; and
   • That because of the reputation of the other trade mark, use of the Trade Mark would be likely to deceive or cause confusion.

3. The Opponent relies on its use of the FWRD Mark and contends that as of the Relevant Date, the FWRD Mark had acquired a reputation both globally and in Australia.

Reputation

1. Reputation, in the context of s 60, refers to the ‘recognition of [the mark] by the public generally’.[34] It is not a factor that is assumed and must be established by the Opponent as a matter of fact.[35]

   [34] McCormick & Co Inc v McCormick [2000] FCA 1335, [81] (Kenny J) (‘McCormick’).

   [35] Conagra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J) (‘Conagra’).

2. There are a variety of ways the reputation of a trade mark may be established, including by demonstrating a significant number of people have been exposed to the trade mark,[36] or providing evidence of high volume of sales,[37] advertising expenditure or other promotion of goods or services to which the trade mark applies.[38] There are also qualitative aspects to the reputation of a trade mark, which concern the value or esteem that the public hold for the trade mark.[39]

   [36] Ibid [118].

   [37] McCormick (n 34) [86].

   [38] Ibid.

   [39] Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [83] (O’Bryan J).

3. Generally, the relevant reputation must be amongst a significant or substantial number of persons.[40] What amounts to a significant or substantial number of people is informed by the relevant market and the nature of the goods or services in question.[41]

   [40] Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin, Goldberg JJ).

   [41] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).

4. Mirtorabi demonstrates that the Opponent first used FWRD as a trade mark in Australia in 2014 in relation to an online retail platform. Mirtorabi includes various examples of use of the FWRD Mark in relation to its online retail services, particular via the Opponent’s Website and through promotions on a variety of social media platforms, such as YouTube, Instagram, Pinterest, Twitter and Facebook. I note that the examples primarily demonstrate use of the FWRD Mark in connection with online retail services rather than clothing goods. The examples provided from the Opponent’s Website are dated from between 11 November 2014 and the Relevant Date. A small number of dated examples from the Opponent’s social media accounts are provided from before the Relevant Date. These examples are supplemented by details of the number of Australian users of the Opponent’s Website between 2014 and 2020, the gross sales and units sold by reference to the FWRD Mark between 2014 and 2020, and the Opponent’s advertising expenditure from between 2016 to 2023. The figures disclosed in these details are substantial and demonstrate that the Opponent has not only invested significant expenditure in the promotion of the FWRD Mark, but was also successful in selling a significant amount of goods under the FWRD Mark both globally and in Australia. Notably, the revenue and expenditure has grown significantly since the FWRD Mark was first used in 2014. This is also reflected by the traffic and user data from the Opponent’s Website. These details indicate that the FWRD Mark has received substantial exposure to Australian consumers. For these reasons I am satisfied that the Opponent’s evidence demonstrates a reputation acquired by the FWRD Mark as of the Relevant Date in connection with the online retail of fashion products.

5. The Applicant acknowledges the reputation of the FWRD Mark but contends that it is limited to the fashion retail market. Conversely, the Opponent submits that the Opponent has demonstrated significant use of the FWRD Mark in connection with its software application. Annexed to Mirtorabi are example of the FWRD Mark used on software application via the Apple App Store and Google Play Store. This use is supplemented with data detailing the number of Australian users of the FWRD app since 2016. However, in this respect I agree with the Applicant. In my view, the reputation accrued by the FWRD Marks lies not in the software or means by which the Opponent’s services are accessed but in the fashion retail services the Opponent provides. Although the Opponent’s evidence demonstrates use of the FWRD Mark on software and a significant number of users of the FWRD app, the app appears to be only used for the purposes of accessing the Opponent’s retail services. Accordingly, despite the Opponent’s use of the FWRD Mark on software application, I am not satisfied the reputation of the FWRD Mark extends to software or software as a service.

Likelihood of deception or confusion

1. The existence of a reputation does not necessarily mean use of the Trade Mark would be likely to deceive or cause confusion. The Opponent needs to establish a causal connection between the reputation of the FWRD Mark and the likelihood that use of the Trade Mark will deceive or cause confusion.

2. The concept of ‘deceive’ and ‘cause confusion’ was explained by Richardson J in the New Zealand decision of Pioneer Hi-Bred Corn Co v Hy-line Chicks Pty Ltd:[42]

   ‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.[43]

   [42] [1979] 19 RPC 410.

   [43] Ibid 423.

3. The test for deception or confusion turns on whether use of the Trade Mark would result in a reasonable number of people being caused to wonder whether the remainder of the Applicant’s Goods and Services derive from the same trade source as another trade mark.[44] Factors relevant to this determination include the strength of the reputation of the other trade mark, the similarity between the Applicant’s Goods and Services and the goods or services associated with the reputation of the other trade mark, and the degree of similarity between the relevant trade marks.[45] As a delegate of the Registrar of Trade Marks explained in Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd:

   Confusion can not arise solely from the reputation of one trade mark.  There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be.  The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.[46]

   [44] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50] (French J).

   [45] Qantas Airways Limited v Edwards [2016] FCA 729, [142] (Yates J).

   [46] [2010] ATMO 5 (Hearing Officer Lyons).

4. As discussed in regard to the section 44 ground of opposition, I do not consider the FWRD Mark and the Trade Mark to be deceptively similar. Although deceptive similarity is not a requirement of s 60, the similarity of the trade marks remains a relevant consideration,[47] and the differences between the trade marks discussed earlier in this decision are applicable here.

   [47] Qantas Airways Ltd v Edwards [2016] FCA 729, [142]-[143] (Yates J).

5. Section 60 also does not require the goods and services to be similar or closely related, but the differences between the goods and services remain relevant to the assessment. The reputation of the FWRD Mark is limited to online retail of fashion products. The Applicant’s Goods and Services are ‘data processing software’ and ‘software as a service’. Although software as a service may be used to provide the services associated with the FWRD Mark, there is otherwise no association between the Applicant’s Goods and Services and the services for which the FWRD Mark has acquired a reputation. While the differences between the goods and services is not decisive, it is generally more difficult to demonstrate that use of a trade mark in a different field of activity would be likely to deceive or cause confusion. These challenges were explained by Davies J in Singtel Optus Pty Limited v Optum Inc:

   Although the language of s 60 does not, in express terms, require that it be shown that the reputation applies to the goods and services the subject of the trade mark application, s 60(b) is unlikely to be satisfied unless such a reputation is established because the use of the mark in respect of such goods or services is not likely to deceive or cause confusion.[48]

   [48] Singtel Optus Pty Limited v Optum Inc [2018] FCA 575, [203].

6. When viewed alongside the differences between the trade marks canvassed in the discussion under the s 44 ground of opposition, in my view, a consumer encountering data processing software or, more broadly software as a services bearing the Trade Mark would not likely be confused or deceived as to the origin of those goods and services due to the reputation of the FWRD Mark. Accordingly, I am satisfied that there would not be a real tangible danger of consumers being caused to wonder whether a connection exists between the Trade Mark and the FWRD Mark. The ground of opposition under s 60 is not established.

Section 42(b)

1. Section 42(b) of the Act relevantly provides:

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

   …

   (b)    its use would be contrary to law.

2. The Opponent relies on ss 18 and 29 of the Australian Consumer Law (‘ACL’) of Schedule 2 of the Competition and Consumer Act 2010 (Cth) and the tort of passing off as the basis for the ground of opposition under s 42(b).

3. To succeed in an opposition under s 42(b), the Opponent must demonstrate on the balance of probabilities that use of the Trade Mark would contravene ss 18 or 29 of the ACL or constitute passing off. [49]

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

Australian Consumer Law

1. The requirement that the relevant consumer be misled or deceived is one of the main differences between ss 18 and 29 of the ACL and s 60. There is no material difference between the expression ‘mislead or deceive’ in s 18 of the ACL and ‘false or misleading’ in s 29 of the ACL.[50]  The requirement to mislead or deceive the relevant consumer imports a stricter requirement than s 60.[51]

   [50] Australian Competition and Consumer Commission v Coles Supermarkets Australia Pty Ltd [2014] FCA 634, [40] (Allsop CJ).

   [51] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44, [8] (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [32]-[33] (Stewart J).

2. For the reasons outlined in relation to the s 60 ground of opposition, in my view it is not likely that use of the Trade Mark would be likely to mislead or deceive an ordinary or reasonable consumer of the relevant goods or services into believing that the Trade Mark, and the Opponent’s FWRD Mark, are related.

Passing Off

1. Where a trade mark does not contravene s 18 of the ACL, it is unlikely to amount to passing off.[52] Justice Hill noted in Re Equity Access Pty Ltd v WestpacBanking Corporation 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.[53]

   [52] Monster Energy v USA Nutraceuticals Inc [2017] ATMO 22, [58] (Hearing Officer Robert Wilson).

   [53] Re Equity Access Pty Ltd v WestpacBanking Corporation [1989] FCA 771, [40].

1. Ss 52 and 53 of the Trade Practice Act 1974 (Cth) were the antecedents of ss 18 and 29 of the ACL. Given my findings in relation to ss 18 and 29 of the ACL, I am also satisfied that use of the Trade Mark would not constitute passing off.

2. In consideration of the above reasons, the ground of opposition under s 42(b) has not been established.

Decision

1. Section 55(1) relevantly provides:

   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 of the nominated grounds of opposition. Accordingly, trade mark 2272881 may proceed to registration one month from the date of this decision.

3. Should the Registrar be served with a notice of appeal before the registration of the Trade Mark, I direct that the registration of the Trade Mark not occur until the appeal has been decided or discontinued, and that any disposition of the application be in accordance with the Court’s orders or direction.

Costs

1. The Opponent sought an award of costs. As the Opponent was not successful in the opposition, I award costs against the Opponent under s 221 in accordance with the amounts detailed in Schedule 8 of the Regulations.

Timothy Brown

Hearing Officer

Delegate of the Registrar of Trade Marks

15 January 2025

Schedule A

Class 35: Retail store and on-line retail store services featuring clothing and clothing accessories, headwear, hats, and footwear for men and women, socks, shoes, scarves, belts, ties, bow ties, bags, totes, watches, parts for watches, jewelry, fine jewelry, bangles, bracelets, charms, costume jewelry, ear clips, earrings, lockets, necklace, rings, wedding bands, as well as other designer lifestyle and culture goods, namely, home decor, pillows, candles, towels, coasters, blankets, bedding, umbrellas, cosmetics, luggage, bags, purses, wallets, computer cases, mobile phone cases, backpacks, cosmetic bags, travel items, sunglasses, eyeglasses, eyeglass cases, key chains of precious metal, keyrings, cigarette holders, lighters, sporting goods, skateboards, wallpaper, eye masks, canes, snow globes, shoetree hooks, and champagne ice buckets, sound and electronic accessories; Presentation of goods on communication media, for retail purposes

Schedule B

Class 9: Downloadable virtual goods in the field of fashion; downloadable virtual goods in the field of fashion for use in virtual environments and worlds; downloadable virtual goods in the nature of clothing, jewelry, watches, bags, headwear, footwear, cosmetics, personal care goods, dietary supplements, accessories, home goods, and eyewear; downloadable virtual goods, namely, computer programs featuring clothing, jewelry, watches, bags, headwear, footwear, cosmetics, personal care goods, dietary supplements, accessories, home goods, eyewear, and other retail items; software; downloadable video game programs; downloadable computer game software; downloadable multimedia file containing artwork, text, audio, and video; downloadable multimedia file containing artwork, text, audio, and video relating to fashion authenticated by non-fungible tokens; downloadable digital files authenticated by non-fungible tokens; blockchain tokens; downloadable computer software for managing, displaying, monetizing, buying, selling, trading, transferring, clearing, confirming, and authenticating virtual goods, blockchain tokens, digital tokens, non-fungible tokens, digital media, digital files, and digital assets; downloadable computer software for use as a digital token wallet; cryptocurrency hardware wallets; downloadable software for enabling users to electronically create, store, send, receive, accept, exchange, and transmit digital assets; downloadable computer programs for data storage; downloadable computer programs for blockchain data storage; downloadable computer software for facilitating transactions with others; downloadable computer software for facilitating blockchain-based financial transactions; downloadable computer programs for data authentication; downloadable computer programs for data authentication via blockchain; downloadable computer software featuring the purchase and sale of rights to digital goods; downloadable computer software for managing digital collectibles; downloadable digital files; downloadable digital file sharing software; downloadable computer software and downloadable mobile application software for viewing images, videos, and content relating to fashion; downloadable computer software and downloadable mobile application software for use in accessing online retail store services featuring a wide variety of consumer goods; downloadable computer software and downloadable mobile application software for searching, viewing, and purchasing clothing, jewelry, watches, bags, headwear, footwear, cosmetics, supplements, accessories, home décor, eyewear, and other retail items; downloadable computer software and downloadable mobile application software for enabling users to find, view, evaluate, and purchase goods and services; downloadable computer software and downloadable mobile application software for use in retail transactions and ordering a wide variety of general merchandise and consumer goods; downloadable computer software and downloadable mobile application software for use in providing online reviews and recommendations about general merchandise and consumer goods, and for accessing user-posted ratings, reviews, and recommendations on products; downloadable computer and downloadable mobile application software that analyzes consumer buying behavior and patterns and assists in matching consumers with products; downloadable chatbot software for replying to questions from online retail store customers related to consumer goods

Class 35: Retail store services and online retail store services; retail store and online retail store services featuring virtual goods, blockchain tokens, digital tokens, non-fungible tokens, digital media, digital files, and digital assets; retail store and online retail store services featuring virtual goods, blockchain tokens, digital tokens, non-fungible tokens, digital media, digital files, and digital assets in the field of fashion; retail store and online retail store services featuring virtual goods, blockchain tokens, digital tokens, non-fungible tokens, digital media, digital files, and digital assets as part of a computer program; retail store and online retail store services featuring virtual goods, namely, clothing, jewelry, watches, bags, headwear, footwear, cosmetics, supplements, accessories, home décor, eyewear, and other retail items; provision of an online marketplace for buyers and sellers of artwork, text, audio, and video relating to fashion authenticated by non-fungible tokens (NFTs); provision of an online marketplace for buyers and sellers of virtual goods, blockchain tokens, digital tokens, non-fungible tokens, digital media, digital files, and digital assets; advertising, marketing, and promotional services

Class 41: Entertainment services; entertainment services, namely, providing virtual goods, blockchain tokens, digital tokens, non-fungible tokens, digital media, digital files, and digital assets; Entertainment services, namely, providing on-line, non-downloadable virtual clothing, jewelry, watches, bags, headwear, footwear, cosmetics, supplements, accessories, home décor, eyewear, and other retail items; entertainment services, namely, production, distribution, display, and storage of digital collectibles; entertainment services, namely, providing an on-line virtual environment for using, trading, and purchasing virtual goods, blockchain tokens, digital tokens, non-fungible tokens, digital media, digital files, and digital assets; providing online non-downloadable game software (games) for entertainment purposes

Class 42: Providing on-line non-downloadable software for managing, displaying, monetizing, buying, selling, trading, transferring, clearing, confirming, and authenticating virtual goods, blockchain tokens, digital tokens, non-fungible tokens, digital media, digital files, and digital assets; providing temporary use of on-line non-downloadable computer software; software as a service (SaaS); platform as a service (PaaS); providing temporary use of on-line non-downloadable computer software for use as a digital wallet; providing on-line non-downloadable computer software for enabling users to electronically create, store, send, receive, accept, exchange, and transmit digital assets based on the blockchain technology; platform as a service (PaaS) and software as a service (SaaS) featuring computer software platforms using blockchain and distributed ledger technology for authenticating and processing digital tokens; providing online non-downloadable software for entertainment purposes; providing online non-downloadable software for entertainment purposes, namely, for shopping