GEA Group Aktiengesellschaft v Griffiths Engineers Australia Pty. Ltd - [2025] ATMO 43

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by GEA Group Aktiengesellschaft to registration of trade mark application number 2280972 (classes 37 and 42) – GEA GRIFFITHS ENGINEERS AUSTRALIA CONSULTING ENGINEERS (Figurative) - in the name of Griffiths Engineers Australia Pty. Ltd.

Delegate:

Sheona Robertson

Representation:

Opponent: Shauna Ross of Counsel, instructed by Davis Intellectual Property Pty Ltd

Applicant: Tony Grujovski of Grip Legal

Decision:

2025 ATMO 43

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

This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) by GEA Group Aktiengesellschaft (‘Opponent’) to registration of the trade mark which is the subject of the application for registration detailed below (‘Application’) in the name of Griffiths Engineers Australia Pty. Ltd. (‘Applicant’):

Number:

2280972

Trade Mark:

(‘Trade Mark’)

Filing Date:

1 July 2022

Services:

Class 37: Advisory services relating to the repair of civil engineering structures; Civil engineering (construction and maintenance); Advisory services relating to the construction of civil engineering structures

Class 42: Civil engineering (design); Building and structural inspection services (engineering, quality assessment, and surveying services)

(together, ‘Applicant’s Services’)

The Application was examined as required under s 31 of the Act and was advertised as accepted for possible registration on 2 December 2022.
The Opponent filed a Notice of Intention to Oppose registration of the Trade Mark on 1 February 2023, followed by a Statement of Grounds and Particulars (‘SGP’) on 1 March 2023. The Applicant filed a Notice of Intention to Defend on 27 April 2023.
In support of their opposition the Opponent filed as evidence in support a declaration made on 27 July 2023 by Goran Erdevicki, Managing Director of GEA Australia Pty Ltd, together with Exhibits GEA-1 to GEA-19, including Confidential Exhibits GEA-08 to GEA-11 (‘Erdevicki’).
The Applicant filed as evidence in answer a declaration made on 2 November 2023 by Joshua Griffiths, Director of Griffiths Engineers Australia Pty. Ltd., together with Exhibits JG-1 to JG-4 (‘Griffiths’).
The Opponent filed as evidence in reply a declaration made on 9 January 2024 by Jacqui Symonds, a Registered Trade Marks Attorney with Davis IP Pty Ltd, Opponent’s representative, together with Exhibit GEA-20 (‘Symonds’).
Erdevicki contains a clause to the effect that paragraph 34 and Exhibits GEA-08 to GEA-11 of that declaration are confidential. Griffiths also contains a claim that information so marked, and other information relating to sales figures and advertising expenditure, is to be regarded as confidential. There are sensitive commercial matters in each declaration which I will not discuss in any detail in my reasoning. However, I will discuss the evidence to the degree necessary to provide sensible reasons for my decision.
Once the time allowed for filing evidence ended, the parties were…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2025] ATMO 43
Decision Date: 27 February 2025

CaseChat Overview and Summary

GEA Group Aktiengesellschaft (the applicant) sought to register a trade mark, and Griffiths Engineers Australia Pty. Ltd (the opponent) opposed this application. The dispute concerned the potential for the proposed trade mark to cause confusion with the opponent's existing trade marks and whether the application was otherwise valid under the *Trade Marks Act 1995* (Cth). The matter was heard by Robertson J in the Federal Court of Australia.

The primary legal issues before the Court were whether the applicant's proposed trade mark infringed the opponent's rights under sections 42(b), 44, 58, and 60 of the *Trade Marks Act 1995* (Cth). Specifically, the Court had to determine if the proposed mark was deceptively similar to the opponent's registered marks, if it was likely to deceive or cause confusion, and if the applicant was entitled to registration.

Robertson J found that the opponent had not established any of the grounds for opposition. The Court concluded that the proposed trade mark was not deceptively similar to the opponent's registered marks, nor was it likely to deceive or cause confusion in the marketplace. Consequently, the Court determined that the applicant was entitled to registration of its trade mark. The opposition was dismissed, and the trade mark was allowed to proceed to registration.

Orders