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

1. 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’)

1. The Application was examined as required under s 31 of the Act and was advertised as accepted for possible registration on 2 December 2022.

2. 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.

3. 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’).

4. 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’).

5. 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’).

6. 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.

7. Once the time allowed for filing evidence ended, the parties were given an opportunity to request a hearing. The Opponent filed a request for an oral hearing on 15 February 2024. The Applicant filed a request for an oral hearing on 17 October 2024. The Opponent filed written submissions on 20 November 2024 (‘Opponent’s Submissions’). The Applicant filed written submissions on 27 November 2024 (‘Applicant’s Submissions’).

8. The matter was scheduled to be heard by video conference on 4 December 2024. At the hearing Tony Grujovski of Grip Legal appeared for the Applicant and Shauna Ross of Counsel, instructed by Davis Intellectual Property Pty Ltd, appeared for the Opponent.

9. As a delegate of the Registrar of Trade Marks (‘Registrar’), I have decided this matter as required by s 55 of the Act. In doing so I take account of the materials referred to above and the parties’ oral submissions made at the hearing.

   Grounds of opposition, onus and standard of proof

10. The SGP nominated grounds of opposition under ss 42(b), 44, 58, 58A, 60 and 62A of the Act. The s 58A and s 62A grounds of opposition were not pressed at the hearing.

11. The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[1] The standard of proof is the ordinary civil standard on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 1 July 2022 (‘Relevant Date’), being both the filing date and priority date of the Trade Mark.

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

    [2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot

    and Edelman JJ).

    The Opponent

12. The Opponent is one of the world’s largest systems suppliers for the food, beverage and pharmaceutical sectors. The Opponent employs more than 18,000 people across 62 countries. Erdevicki contains a copy of a company presentation dated May 2023 and a company brochure (undated but which contains figures from the financial year 2022) containing further information about the Opponent.

13. The Opponent’s subsidiary Gesellschaft für Entstaubungs-Anlagen mbH first used a trade mark consisting of the letters ‘GEA’ when it was founded in Bochum, Germany in 1920. The Opponent acquired this company in 2000 and in 2005 changed its name to GEA Group Aktiengesellschaft.

14. The Opponent provides machinery and plants, advanced process technology and components as well as services including machine and equipment manufacture and installation, servicing and repair of machines and equipment, and engineering services in relation to plant design, production equipment and processes (together, ‘Opponent’s Goods and Services’). The company is divided into five divisions: Separation and Flow Technologies, Liquid and Powder Technologies, Food and Healthcare Technologies, Farm Technologies and Heating and Refrigeration Technologies. Erdevicki contains screenshots from the website < (‘Opponent’s Website’) providing a list of products, services and technologies and an overview of the ‘GEA Service’ provided by the Opponent under the GEA trade mark.

15. The Opponent claims use of ‘GEA’ simpliciter as a word mark, as well as in the form of various logos, including the following (together, ‘Opponent’s Trade Marks’):

16. Erdevicki contains a table extracted from the World Intellectual Property Organisation’s Global Brand Database listing more than 280 trade marks trade marks held by the Opponent which contain the term ‘GEA’. The Opponent’s machines and equipment are branded with a ‘GEA’ trade mark.

17. The Opponent’s presence in Australia is comprised of six related entities (together, ‘Opponent’s Australian Entities’) across three different locations. The ownership and control of each of these entities is not specified but it is declared in Erdevicki that they are part of the Opponent’s corporate group and that the Opponent has authorised use of the Opponent’s Trade Marks by the Opponent’s Australian Entities. Erdevicki contains company summaries issued by the Australian Securities and Investments Commission for each of the Opponent’s Australian Entities.

18. The first use of a ‘GEA’ trade mark in Australia in relation to the Opponent’s Goods and Services was in at least 2003. Erdevicki contains details of the Opponent’s 11 registered trade marks in Australia consisting of or containing the term ‘GEA’.

19. As evidence that the Opponent and its authorised users have provided the Opponent’s Goods and Services in Australia under the Opponent’s Trade Marks, Confidential Exhibits GEA-08 to GEA-11 contain, respectively:

    ·Tables of turnover figures for the Opponent’s Goods and Services provided by the Opponent’s Australian Entities under the Opponent’s Trade Marks in Australia between 2018 and 2023;

    ·A selection of over 30 invoices, issued between December 2019 and January 2023, for the sale of goods and provision of services under the Opponent’s Trade Marks by some of the Opponent’s Australian Entities;

    ·Lease documents relating to the Opponent’s premises in Australia in 2005 and between 2009 and 2014;

    ·Extracts from a tender to a large multinational company in Australia in 2003. The tender makes reference to installation services and test assistance performed by an engineer.

20. The Opponent’s Goods and Services provided under the Opponent’s Trade Marks have been advertised in Australia by way of brochures, catalogues, trade publications, product and service information sheets, trade shows and exhibitions, signage, social media and websites, as evidenced by the following exhibits to Erdevicki:

    ·Exhibit GEA-12 is a photograph of staff in front of a building that was the office of one of the Opponent’s Australian Entities between 2000 and 2019. The staff are wearing shirts branded with the letters ‘GEA’ and signage on the building bears a ‘GEA’ logo;

    ·Exhibit GEA-13 contains photographs of, respectively, a trade exhibition stall of one of the Opponent’s Australian Entities with posters bearing one of the Opponent’s Trade Marks, and installed equipment bearing one of the Opponent’s Trade Marks, purportedly taken in Australia in the early 2000s;

    ·Exhibit GEA-14 contains screenshots from the Facebook pages of three of the Opponent’s Australian Entities, namely GEA Farming Australia, GEA Australia Craft Beer and GEA Group, dated between 3 August 2020 and 26 July 2023;

    ·Exhibit GEA-15 contains screenshots from the Opponent’s Website and the website < (‘Opponent’s Australian Website’) obtained on 26 July 2023;

    ·Exhibit GEA-16 contains archived screenshots from the Opponent’s Website dated between July 2017 and June 2022;

    ·Exhibit GEA-17 contains archived screenshots from the Opponent’s Australian Website dated between November 2020 and September 2022;

    ·Exhibit GEA-18 contains copies of news articles referring to the Opponent and/or authorised users of the Opponent’s Trade Marks.

    The Applicant

21. Much of Griffiths is in the nature of submissions and it is not necessary at this stage to discuss Griffiths in detail. Little information is provided in Griffiths about the Applicant.  

22. The Applicant was registered on 15 March 2016. Griffiths contains a company extract from the website of the Australian Securities and Investments Commission.

23. The Applicant supplies civil engineering services and building and structural inspection services to customers in Australia, including industrial building designs, commercial and residential designs, and structural consulting.[3]

    [3] Griffiths, [6].

24. The Applicant’s name was chosen because Griffiths is the surname of the company’s director, and to indicate a connection between the Applicant and the civil and structural engineering business of the director’s father, James Griffiths, which operated under the name ‘Griffiths Engineers’ for several decades. The words ‘Engineers’, ‘Australia’ and ‘Consulting Engineers’ in the Trade Mark are used to indicate the services provided by the Applicant in Australia.

25. Griffiths contains a screenshot from the ‘About Us’ page on the Applicant’s website < (‘Applicant’s Website’), which states that the Applicant’s business was first established in 1973. Erdevicki contains screenshots from the Applicant’s Website showing various projects that the Applicant has completed, including services for the construction of warehouses, grain storage bulk cargo facilities, and cold storage facilities for the agricultural and food industries.

26. Symonds contains screenshots of the results of searches for the Applicant on Bing and Google, the Applicant’s Website, the Applicant’s LinkedIn page and the website of the Australian Steel Institute in which the Applicant is referred to as ‘GEA’.

    Discussion

    Section 44

27. Section 44 of the Act relevantly provides:

    (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…

28. In respect of the s 44 ground of opposition, the Opponent relies on the following trade marks registered to the Opponent in Australia (‘Opponent’s Registered Trade Marks’):

Number	Trade Mark	Class(es)	Priority Date
1.	406176	11	2 April 1984
2.	406177	30.	9	2 April 1984
3.	406178	31.	7	2 April 1984
4.	1152135	GEA GROUP	1, 4, 7, 9, 11, 35, 36, 37, 40, 41, 42	31 October 2005
5.	1303358	1, 4, 7, 9, 11, 35, 36, 37, 40, 41, 42, 45	28 April 2008
6.	1840654	GEA	32.     1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 17, 18, 19, 20, 21, 25, 27, 35, 36, 37, 39, 40, 41, 42, 44, 45	9 March 2015
7.	1986371	33.	7, 9, 11	6 December 2017
8.	2305560	34.	35.     1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 17, 18, 19, 20, 21, 25, 27, 35, 36, 37, 39, 40, 41, 42, 44, 45	28 July 2021

1. The Opponent’s Submissions in respect of the s 44 ground of opposition are made solely with respect to trade mark number 1840654 (‘GEA Solus Mark’). However, for completeness, and for reasons which will become apparent with respect to the remaining grounds of opposition, I will consider the s 44 ground of opposition as it pertains to each of the Opponent’s Registered Trade Marks.

2. To establish the ground of opposition under s 44 of the Act, the Opponent’s Registered Trade Marks must satisfy the following requirements:

   ·be in the name of a person other than the Applicant (‘first requirement’);

   ·have a priority date which is earlier than the Relevant Date (‘second requirement’);

   ·be substantially identical with, or deceptively similar to, the Trade Mark (‘third requirement’); and

   ·be in respect of goods and/or services which are either similar and/or closely related to the Applicant’s Services (‘fourth requirement’).

3. Each of the Opponent’s Registered Trade Marks is held in the name of a person other than the Applicant and their priority dates are earlier than the Relevant Date. The first and second requirements are satisfied.

   Comparison of goods and services

4. The first question is whether the goods and services covered by the Opponent’s Registered Trade Marks are similar or closely related to the Applicant’s Services.

5. The term ‘closely related’ is not defined in the Act. French J noted in Registrar of Trade Marks v Woolworths:

   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. 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.[4]

   [4] Registrar of Trade Marks v Woolworths Ltd (1999) FCR 365; [1999] FCA 1020, [37] (‘Woolworths’).

6. The Opponent has not made detailed submissions with respect to the similarity between the goods and services of the Opponent’s Registered Trade Marks and the Applicant’s Services. The Applicant submits that the goods in classes 7, 9 and 11 of trade marks 406176, 406177, 406178 and 1986371 are plainly different in nature, purpose and trade channels to the Applicant’s Services.

7. Having regard to the goods in classes 7, 9 and 11, I do not consider that they are closely related to the Applicant’s Services. To my knowledge, none of these goods are likely to be sold by the same or competing traders as those providing the Applicant’s Services, nor are the Applicant’s Services likely to be performed upon or directly by means of these goods. A consumer seeking engineering or structural inspection services would not associate them with providers of these goods. I note also that there is no evidence before me that establishes a link between these goods and the Applicant’s Services, and as the onus to establish a connection between the relevant goods and services lies with the Opponent, in the absence of evidence or submissions on this aspect of the s 44 ground of opposition I find that the Opponent’s goods in classes 7, 9 and 11 are not closely related to the Applicant’s Services. As a consequence, the fourth requirement is not satisfied with respect to trade marks 406176, 406177, 406178 and 1986371.

8. The next question is whether the Applicant’s Services are similar to the goods or services of the trade marks 1152135, 1303358, 1840654 and 2305560.

9. Section 14 of the Act provides that services are ‘similar’ to other services if they are the same, or of the same description, as the other services. The determination of whether services are similar involves the consideration of a number of factors including the nature, use and trade channels of the goods or services.[5]

   [5] Jellinek’s Application (1946) 63 RPC 59, 64 (Romer J); MID Sydney Pty Ltd v Australian Tourism Co Ltd & Ors [1998] FCA 1616 (Burchett, Sackville and Lehane JJ).

10. The Opponent submits that the GEA Solus Mark is registered with respect to building construction, steel structure construction works, building construction including civil engineering construction and including for the building of industrial and mechanical installations and of buildings and building construction supervision in class 37, and engineering services and consultancy in the field of science, engineering and information technology in class 42, which together encompass all the Applicant’s Services. The Applicant concedes that trade marks 1152135, 1303358, 1840654 and 2305560 claim similar services or closely related goods to the Applicant’s Services.

11. I accept that the above identified services of the GEA Solus Mark are similar to the Applicant’s Services in origin, nature and purpose. The GEA Solus Mark contains broad claims for “building construction” in class 37 and “engineering services” in class 42 which would notionally include the Applicant’s Services. It is foreseeable that if similar trade marks were to be used in relation to these services there would be a real and tangible danger of confusion. I accept that the fourth requirement is therefore satisfied with respect to the GEA Solus Mark.

12. As regards trade marks 1152135, 1303358, 1840654 and 2305560, having regard to the factors mentioned above I consider the following services to be similar to the Applicant’s Services:

Number	Trade Mark	Similar Services
1152135	GEA GROUP	Class 37: Building construction, including building of industrial and mechanical installations; repair services, installation services, maintenance; all services regarding industrial plants and machines Class 42: engineering; providing of expert opinion; technical consultancy and providing of expertise; technical planning and supervising services, including engineering services to control, lead and supervise technical processes in industrial installations
1303358	Class 37: Building construction, repair services, installation services, maintenance, all services regarding industrial plants and machines Class 42: engineering; civil engineering for the building of industrial and mechanical installations; providing of expert opinion; technical consultancy and providing of expertise; design, technical development and technical planning of industrial installations and machines; technical planning and supervising services, including engineering services to control, lead and supervise technical processes in industrial installations
2305560	Class 37: Building construction; steel structure construction works; building construction, including structural and civil engineering and including for the building of industrial and mechanical installations and of buildings; building construction supervision; construction information; consultancy relating to installation, maintenance and repair services; providing information relating to installation, maintenance and repair services Class 42: engineering services; construction drafting; architectural and construction drafting and consultancy; design, technical development and technical planning of industrial plants and machines; technical consultancy in the field of science, engineering and information technology; planning of commercially used facilities and industrial plants, in particular of the food industry, including of dairy facilities

1. Accordingly, the fourth requirement is satisfied with respect to trade marks 1152135, 1303358, 1840654 and 2305560. The next consideration is whether the Trade Mark is substantially identical with or deceptively similar to the Opponent’s Registered Trade Marks.

   Substantial Identity

2. The relevant test for determining whether trade marks are substantially identical is set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):

   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.[6] 

   [6] [1963] HCA 66, [12] (Windeyer J).

3. It is the Opponent’s assertion that the Trade Mark is essentially the acronym ‘GEA’ and is therefore substantially identical to the GEA Solus Mark. The Opponent submits that the Applicant’s company name emphasises the acronym ‘GEA’ in the Trade Mark, owing to the relative size and descriptiveness of the words ‘GRIFFITHS ENGINEERS AUSTRALIA’ and ‘CONSULTING ENGINEERS’ in the Trade Mark:

   Adopting the language of the Full Court in Accor[7] at [206], the first unmistakable component of the Opposed Mark is “GEA”. It is presented in large emphatic capital letters at the start of the Opposed Mark. As an element of the arrangement, it is the dominant cognitive cue. If the viewer is to take away a key feature in connection with the Applicant’s Services, it is the badge of origin “GEA” because that is the word, or mechanism by which, a person seeking out the Applicant’s Services will recognise a way of connecting with the person providing the Applicant’s Services in the course of trade.[8]

   [7] Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56; 345 ALR 205.

   [8] Opponent’s Submissions, [36].

4. The Opponent notes that the letters ‘GEA’ are also central and present in each of the Opponent’s Registered Trade Marks. The Opponent submits that, taking account of the similarities and dissimilarities between the Trade Mark and the GEA Solus Mark, “[t]he differences do not detract from the similarities between the [Trade Mark] and GEA. The result is not a total impression of dissimilarity”.[9]

   [9] Opponent’s Submissions, [39].

5. The Applicant submits that if, as asserted by the Opponent, the dominant cognitive cue of the Trade Mark is the acronym ‘GEA’, “a consumer would need to completely disregard a significant visual portion of the Trade Mark”.[10] The Applicant submits there are clear and obvious differences between the Trade Mark and trade marks 1152135, 1303358, 1840654 and 2305560 as follows:

   ·the Trade Mark includes the words “Griffiths Engineers Australia” and “Consulting Engineers” which together comprise roughly 75% of the overall space in the Trade Mark. The words “Griffiths Engineers” are visually prominent given the larger text size;

   ·the differences in the length, syllables and pronunciation of the respective trade marks, namely, “GEA” or “GEA Group” compared to “Griffiths Engineers Australia Consulting Engineers GEA”;

   ·the visual details of the Trade Mark, including the arrangement of the “GEA” acronym, the additional words which are stylised and in a stacked arrangement, and the broken line element surrounding the word “Australia”;

   ·the cubed arrangement of the letters ‘GEA’ in the Trade Mark differs from the linear arrangement of these letters in the Opponent’s Registered Trade Marks;

   ·many of the Opponent’s Registered Trade Marks include additional features, such as the word ‘GROUP’ in trade mark 1152135, the circular device in trade mark number 1303358 and the linear device in trade mark 2305560;

   ·given the placement of the words “Griffiths Engineers Australia”, consumers would recognise that the “GEA” in the Trade Mark is an acronym for the words “Griffiths Engineers Australia”, in contrast to the Opponent’s Trade Marks where the meaning of “GEA” is not apparent; and

   ·the cubed depiction of the letters “GEA” in the Trade Mark emphasises the Applicant’s civil and structural engineering services, being a conceptual point of difference between the respective trade marks.

   [10] Opponent’s Submissions, [38(b)].

6. I accept the Applicant’s submissions with regard to the differences between the Trade Mark and trade marks 1152135, 1303358, 1840654 and 2305560. I draw the same conclusion with respect to trade marks 406176, 406177, 406178 and 1986371 which are comprised predominantly of the minimally stylised letters ‘GEA’, and in the case of trade mark number 1986371, a ring device and the additional words ‘engineering for a better world’.  There are clear and obvious visual and aural differences between the respective marks. The only common element shared by the marks is the letters ‘GEA’. I am not satisfied that a total impression of resemblance emerges from a side-by-side comparison of the Trade Mark and any of the Opponent’s Registered Trade Marks.

7. I do not consider the Trade Mark to be substantially identical to any of the Opponent’s Registered Trade Marks. The next question is whether the Trade Mark is deceptively similar to any of the Opponent’s Registered Trade Marks.

   Deceptive Similarity

8. Section 10 of the Act defines “deceptively similar” as follows:

   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. In Shell, Windeyer J made the following comments with respect to deceptive similarity:

   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].[11]

   [11] Shell (n 6), [13].

10. It was stated in Clark v Sharp:

    One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance to all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective wholes.[12]

    [12] Clark v Sharp (1898) 15 RPC 141, 146 (Byrne J).

11. In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd, Kitto J noted the following regarding the risk of deception or confusion:

    While a mere possibility of confusion is not enough - for there must be a real, tangible danger of its occurring - it is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough if the ordinary person entertains a reasonable doubt.[13]

    [13] (1954) 91 CLR 592, 594.

12. The fact that one trade mark is entirely incorporated in another is not, in itself, sufficient to render the marks deceptively similar. The marks must be considered in their entirety. [14]

    [14] Clark v Sharp (n 12); Food Channel (n 1), [92].

13. What must be considered is the overall impression that the notional buyer, being a person of ordinary intelligence and memory, would likely have of the Trade Mark and each of the Opponent’s Registered Trade Marks, having regard to the look, sound, and ideas conveyed by the respective marks, and allowing for imperfect recollection.

14. The notional buyer does not possess any knowledge about the actual use of the prior marks, the business of the owner of the prior marks, the goods produced by the owner of the prior marks, or any reputation associated with the prior marks.[15]

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

15. The Opponent submits that as the Trade Mark contains the whole of the GEA Solus Mark, in light of the doctrine of imperfect recollection, there is a real tangible danger that consumers seeing the Trade Mark in relation to the Applicant’s Services would be caused to wonder whether the Trade Mark originated from the same trader or was in some way related to the Opponent.[16]

    [16] Opponent’s Submissions, [57].

16. The Applicant repeats the differences referred to in paragraph [52] of this decision in support of their contention that the trade marks are not deceptively similar. The Applicant submits that the incorporation of one trade mark in another is not, in itself, sufficient for a finding of deceptive similarity,[17] particularly in circumstances where the Trade Mark conveys a different idea or concept.[18]

    [17] Bumble Holding Limited v Geoff Hancock and Luke Anderson [2024] ATMO 167, [16].

    [18] Applicant’s Submissions, [43].

17. I do not consider the Trade Mark to be deceptively similar to any of the Opponent’s Registered Trade Marks. While some of the Opponent’s Registered Trade Marks contain some stylisation and/or additional features, the likely impression that the notional buyer would have of the Opponent’s Registered Trade Marks, and the GEA Solus Mark in particular, is the letters ‘GEA’.

18. Having regard to the Trade Mark as a whole, although the device forms a significant component of the Trade Mark, owing to their placement and size it is the words “Griffiths Engineers” that are most likely to be recalled by consumers. The likely impression the notional buyer would have of the Trade Mark is the words “Griffiths Engineers”.

19. The following additional features of the Opponent’s Registered Trade Marks are entirely absent from the Trade Mark:

    ·the bold stylised text of the letters ‘GEA’ and the line through the middle of the letters ‘GEA’ in trade marks 406176, 406177, 406178 and 2305560;

    ·the left slant of the letter ‘A’ in trade marks 406176, 406177, 406178;

    ·the circular device connecting the letters ‘GEA’ in trade mark numbers 1303358 and 1986371;

    ·the additional words ‘GROUP’ and ‘engineering for a better world’ in trade marks 1152135 and 1986371 respectively.

20. Likewise, as noted by the Applicant, the Trade Mark contains a number of visual and aural features that distinguish it from the Opponent’s Registered Trade Marks.

21. As regards the conceptual similarity between the trade marks, the words “Griffiths Engineers Australia” in the Trade Mark provide context and meaning to the acronym ‘GEA’, which meaning is absent from the Opponent’s Trade Marks. The notional buyer would likely associate the word ‘Griffiths’ with a person or place. With the exceptions of trade mark 1152135, which indicates that the letters ‘GEA’ relate to a company name, and trade mark 1986371 which suggests the Opponent’s business offers engineering services, the letters ‘GEA’ in the Opponent’s Registered Trade Marks are not contextualised. In my view, the notional buyer would understand the ‘GEA’ of the Opponent’s Registered Trade Marks to be an initialism.

22. In assessing the risk of confusion or deception, it is appropriate to consider the surrounding circumstances, including the prospective purchaser[19] and the normal and fair use of the respective goods and/or services. The Applicant submits that the risk of deception or confusion is low, having regard to all the surrounding circumstances, including the prospective purchaser:

    The Applicant’s Services and the services offered by the Opponent are unlikely to be impulsively sought given they traditionally involve a significant financial commitment. Such financial commitment is clear from the significant fees being paid for Opponent’s goods and services,[20] and likewise that financial commitment applies to the Applicant’s Services. Because of this, it is probable that consumers seeking the Applicant’s Services and Opponent’s services will be attentive and exercise reasonable care when selecting the services. Naturally, this increased discernment reduces the potential for deception or confusion occurring.

    [19] Woolworths (n 4), [50(iii)] (French J).

    [20] Erdevicki, GEA-09.

23. I agree with the Applicant’s assessment. I consider the prospective purchaser would pay a considerable degree of attention when making a purchasing decision in respect of the Applicant’s Services. Having regard to the significant value of the respective goods and services and the likely discernment of the prospective purchaser, I am not persuaded that the shared letters ‘GEA’ in the logo incorporated in the Trade Mark and each of the Opponent’s Registered Trade Marks are sufficient to give rise to a real and tangible danger of confusion.

24. Given the importance of the additional elements of the Trade Mark, I am not persuaded that consumers would be caused to wonder whether the Applicant’s Services and the Opponent’s goods and services share a common trade source. Accordingly, I am not satisfied that the Trade Mark is deceptively similar to any of the Opponent’s Registered Trade Marks.

25. The parties made submissions with respect to the Applicant’s ability to rely on s 44(3)(a) of the Act, which enables a trade mark which would otherwise be rejected under s 44(1) or 44(2), to be accepted on the basis of honest concurrent use or other circumstances. As I am not persuaded that the Trade Mark is deceptively similar to any of the Opponent’s Registered Trade Marks, it is not necessary for me to consider the availability of s 44(3)(a) to the Applicant.

26. The ground of opposition under s 44 of the Act has not been established.

    Section 58

27. Section 58 of the Act relevantly provides:

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

28. To succeed under this ground, the Opponent must establish:

    ·one or more of the trade marks relied upon by the Opponent is identical or substantially identical to the Trade Mark;[21] 

    ·the Applicant’s Services are the ‘same kind of thing’ as the goods and/or services for which the trade mark(s) relied upon by the Opponent have been used;[22] and

    ·a person other than the Applicant has the earlier claim to ownership based on use in Australia of the trade mark(s) relied upon by the Opponent prior to either (a) the application to register the Trade Mark or (b) any use of the Trade Mark in Australia by the Applicant, whichever is the earlier.[23]

    [21] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [62] (Gummow J).

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

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

29. Ownership of a trade mark may be established ‘either by reason of authorship and prior use or by reason of authorship, filing the application and an intention to use’.[24] ‘Authorship’ refers to the first party to adopt the trade mark with an intention of using it in Australia in respect of the Applicant’s Services, or goods or services of the same kind.[25]

    [24] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [29] (Greenwood, Jagot and Beach JJ).

    [25] Anchorage Capital Partners Pty Limited v ACPA Pty Ltd [2018] FCAFC 6, [48] (Nicholas, Yates and Beach JJ).

30. In Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2), Deane J made the following comments regarding the nature of use required to establish ownership:

    The prior use of a trade mark which may suffice, at least if combined with local authorship, to establish that a person has acquired in Australia the statutory status of “proprietor” of the mark, is public use in Australia of the mark as a trade mark, that is to say, a use of the mark in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods with respect to which the mark is used and that person.[26]

    [26] (1984) 156 CLR 415, 432.

31. In the SGP the Opponent relies on trade marks 1152135, 1303358, 1840654 and 2305560 for the purposes of the s 58 ground of opposition, however in the Opponent’s Submissions the s 58 ground of opposition is expanded to include all of the Opponent’s Trade Marks. The Applicant submits that as the additional marks sought to be relied upon were not identified in the SGP, and the Opponent did not seek to amend the SGP, they should not be considered as part of the s 58 ground of opposition, and that a consideration of the additional marks would be unfairly prejudicial to the Applicant. The Opponent submits that the mention in the Opponent’s Submissions of these additional marks is not prejudicial and that the Applicant was on notice of these marks for some time. For the reasons which follow, the expansion of the s 58 ground of opposition does not change the outcome of this matter and therefore I have not found it necessary to consider this issue any further.

32. The Opponent submits that the following of the Opponent’s Trade Marks (‘Opponent’s Box Mark’) is substantially identical to the Trade Mark because both marks are presented in a “box like form…with square shapes occupied by the various letters of the marks”[27] and the differences between the marks do not detract from their similarities:

    [27] Opponent’s Submissions, [67].

33. The Opponent submits that requirements (i) and (ii) are satisfied, for the reasons set out with respect to the s 44 ground of opposition in relation to the substantial identity between the Trade Mark and the GEA Solus Mark, and the similarity between the Applicant’s Services and the services of the Opponent.

34. The Applicant argues that the Opponent has not established requirement (i) of the s 58 ground of opposition. In respect of the trade mark represented above the Applicant repeats its submissions with respect to the substantial identity of the Trade Mark and the Opponent’s Trade Marks.

35. I have already concluded that none of the Opponent’s Registered Trade Marks are substantially identical to the Trade Mark. Having regard to the Opponent’s Box Mark and the rest of the Opponent’s Trade Marks, for the reasons discussed with respect to the substantial identity of the Trade Mark and the Opponent’s Registered Trade Marks, I do not consider any of the Opponent’s Trade Marks to be substantially identical to the Trade Mark. The only letters or words featured in the remainder of the Opponent’s Trade Marks are the letters ‘GEA’, presented in a linear format. Considering the additional words and visual features of the Trade Mark, I am not satisfied that a total impression of similarity emerges from a comparison between the Trade Mark and any of the Opponent’s Trade Marks. As regards the Opponent’s Submissions with respect to the Opponent’s Box Mark, I am not persuaded that the ‘box-like format’ of the Opponent’s Box Mark creates a total impression of similarity with the Trade Mark. In my view, there is little similarity between the representation of the letters ‘GEA’ in the Opponent’s Box Mark, in which the letters ‘GEA’ are arranged in individual boxes in the form of a cross and overlapping at the letter ‘E’, and the unboxed letters ‘GEA’ in the Trade Mark, which are angled so as to create the impression of a three-dimensional cube.

36. To succeed on this ground of opposition, the Opponent must firstly establish that at least one of the Opponent’s Marks is substantially identical to the Trade Mark. As I have found that the Opponent’s Marks are not substantially identical to the Trade Mark, the Opponent cannot succeed under s 58.

    Section 60

37. Section 60 of the Act relevantly 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.

1. To establish a ground of opposition under s 60 of the Act, the onus is on the Opponent to demonstrate that:

   i.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; and

   ii.because of that reputation use of the Trade Mark would be likely to deceive or cause confusion.

2. In McCormick & Co Inc v McCormick (‘McCormick’), Kenny J considered what is intended by the word ‘reputation’ as used in s 60 of the Act. Her Honour considered the definition provided in the Macquarie Dictionary and decided that reputation is ‘the recognition of the [trade mark] by the public generally’.[28] The existence and extent of a trade mark’s reputation must be established as a matter of fact by the Opponent.[29]

   [28] [2000] FCA 1335, [81] (‘McCormick’).

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

3. In Rodney Jane Racing Pty Ltd v Monster Energy Company, O’Bryan J observed that:

   The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[30] 

   [30] [2019] FCA 923, [83].

4. Further, Kenny J stated in McCormick that:

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product … public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.[31]

   [31] McCormick (n 28), [86].

5. A trade mark’s reputation must be amongst a ‘significant or substantial’ number of Australian consumers, having regard to the relevant market[32] and the nature of the goods or services in question.[33] The likelihood of deception or confusion between trade marks requires consideration of the notional use of the opposed trade mark in a normal and fair manner in respect of the goods the subject of the trade mark application.[34]

   [32] ConAgra (n 29), [15]; Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

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

   [34] Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43, [11] (Mason J).

6. Confusion may not arise solely from reputation; it must involve some degree of similarity between the trade marks in question.[35] Confusion or deception may be likely even where very little nexus exists between the relevant goods, depending on the strength of the reputation and the degree of similarity between the trade marks.[36]

   [35] Rogers Seller & Myhill v Reece Pty Ltd [2010] ATMO 5; (2010) 85 IPR 647.

   [36] Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124.

7. In respect of the s 60 ground of opposition, the Opponent relies on the Opponent’s Trade Marks. In particular, the SGP makes reference to the Opponent’s Registered Trade Marks, as well as the following trade mark registrations (‘Opponent’s Additional Word Marks’):

Number	Trade Mark	Class(es)	Priority Date
710409	GEA Flow Components	7, 9	12 December 1995
2166578	gea-farm-technologies	38	26 March 2021
2166579	geafiltration	38	26 March 2021

1. The Opponent submits that the duration and extent of the Opponent’s use of the Opponent’s Trade Marks is significant, and there is reputation in Australia in the Opponent’s Trade Marks, including ‘GEA’ simpliciter. In assessing the s 60 ground of opposition, I will focus on the Opponent’s reputation with respect to the ‘GEA’ simpliciter trade mark, as were I to find that the s 60 ground has not been established with respect to this mark, I would reach the same conclusion with respect to the rest of the Opponent’s Trade Marks.

2. In the SGP the Opponent claims a reputation in respect of the goods and services of all of the Opponent’s Trade Marks. The Opponent submits that the evidence demonstrates a high volume of sales, direct advertising, use and promotion in respect of, at least, the ‘GEA’ simpliciter trade mark. The Opponent submits that its reputation is in respect of the same services for which registration of the Trade Mark is sought, including engineering services. Where the delivery of the Opponent’s goods and services has required construction or modification of a building or part of a building, in accordance with its full-service approach the Opponent has occasionally engaged civil engineers or itself used civil engineering principles.[37]

   [37] Opponent’s Submissions, [10](b)(iii).

3. It is the Applicant’s belief that the Opponent has not established a sufficient reputation in Australia for the Applicant’s Services, or engineering services in general. The Applicant submits that there is not a close commercial relationship between the Applicant’s Services and the services in respect of which the Opponent can claim a reputation, given the parties do not operate in the same market or compete directly with one another.

4. The Applicant further submits that the Opponent does not provide any civil or structural engineering services, and that the Opponent’s engineering services are limited to machines, industrial plant construction and mechanical construction installations.[38] The Applicant contends the following statement in Erdevicki indicates that the Opponent and the Opponent’s Australian Entities do not perform civil or structural engineering services themselves:

   Whilst the Opponent’s engineering services are largely focused on machines, industrial plant construction and mechanical installations, the Opponent or its customers often engage civil and structural engineering consulting companies to assist with building design and construction. By way of example, when commencing a new project, a customer would often engage a civil and structural engineering company to plan and build a warehouse or factory and engage the Opponent or its Authorised Users to provide equipment, process expertise and plant design for installation inside the warehouse or factory.[39]

   [38] Applicant’s Submissions, 18(c).

   [39] Erdevicki, [45].

5. I am satisfied that the Opponent has provided engineering services in the form of, at least, the design and construction of industrial machinery. I summarise the relevant evidence as follows:

   ·     Confidential Exhibit GEA-08 to Erdevicki contains revenue figures for the Opponent’s Australian Entities between 2018 and 2023. These figures include revenue earned after the Relevant Date, which I have disregarded. The figures provided are undoubtedly substantial, including the separate figures provided for the Opponent’s engineering services which are described as design services, engineering of process plant, and installation within a customer's new or existing building. However, I note from Exhibit GEA-06 to Erdevicki that each of the Opponent’s Australian Entities has undergone at least one name change and it is not clear how long each entity has been providing goods and services under and by reference to the name and trade mark ‘GEA’.

   ·     Confidential Exhibit GEA-09 to Erdevicki contains several invoices dated between 2019 and 2023, including some invoices dated after the Relevant Date, or which do not bear any clear connection with the Opponent, which invoices I have not considered. The relevant invoices are made out to dairy companies, food production companies, refrigeration companies, an environmental management joint venture and vineyards or distilleries in Australia. Several of these are marked (presumably for the purposes of this opposition) as being for engineering services, although this is generally not apparent from the product or service description on the invoice itself.

   ·     As evidence of its provision of engineering services the Opponent relies on an article dated 10 November 2008 in Exhibit GEA-18 to Erdevicki which describes how one of the Opponent’s Australian Entities worked alongside a building construction company and their consulting engineers to design and supply a processing plant for a dairy company. It is not clear whether these services were delivered in Australia as there is mention of compliance with New Zealand food safety regulations. Details of the readership of the article’s publisher < are not provided. Another article in Exhibit GEA-18 dated 9 February 2021 mentions the Opponent’s involvement in the engineering, design, manufacture and installation of a bioreactor in the beverage sector. The article does not confirm whether the Opponent’s services were provided in Australia but I note the article was published on the website of the Australian industry magazine ‘Food Processing’.

6. The Applicant submits the Opponent’s evidence is deficient in several ways, which are addressed in turn below.

7. Firstly, much of the Opponent’s evidence is undated or dated after the Relevant Date. There is also a large gap in the Opponent’s evidence dated between 2003 and 2019. The evidence of the Opponent’s activities in Australia between 2005 and 2019 is sparse. I agree that overall the evidence is deficient in these respects.

8. Secondly, Exhibit GEA-14 does not confirm the number of the Opponent’s social media followers based in Australia, or the number of followers as at the Relevant Date. The exhibit contains Facebook posts from the Facebook pages of the Opponent and two of the Opponent’s Australian Entities. Several posts feature photographs of equipment or signage bearing one of the Opponent’s Trade Marks. The posts from the ‘GEA Farming – Australia’ Facebook page date back to August 2020, being just two years before the Relevant Date. This page had 165,000 likes as at the time of capture.  It is reasonable to assume that a substantial proportion of these followers are based in Australia. The GEA Australia Craft Beer Facebook page appears to date back to January 2021 and had, at the time of capture, fewer than 1,000 followers. The captured posts from the Opponent’s Facebook page relate to the Opponent’s activities in the United States of America and Europe. Exhibit GEA-14 indicates that the Opponent has undertaken several projects with respect to the supply, installation and servicing of machinery and equipment to the farming industry.

100.Thirdly, the evidence containing website screenshots is not accompanied by information as to the number of hits or unique visitors those websites received from Australian consumers before the Relevant Date. Exhibit GEA-16 contains a limited number of archived screenshots of the global Opponent’s Website; only one per year between July 2017 and June 2022. Featured in the header of the website is the Opponent’s trade mark 1986371. Exhibit GEA-17 contains only three archived screenshots of the ‘GEA Australia’ webpage on the Opponent’s Website, the earliest of which is dated November 2020 and the latest of which post-dates the Relevant Date. These screenshots feature, respectively, the Opponent’s trade marks 1303358 and 2305560.

101.Fourthly, there is no information provided about the readership or exposure to Australian consumers of the articles provided in Exhibit GEA-18 to Erdevicki. The articles showcase the Opponent’s innovations and technologies but make little mention of the Opponent’s services, although there is mention of the Opponent working with other service providers to deliver its technologies, components and solutions. Some articles show that the Opponent, or its related entities, performed design, construction and commissioning services in the dairy industry from May 2007, in the refrigeration and heating industries in 2014, and in food processing since at least 2019, although it is not always clear that these services were provided in Australia.

102.Lastly, the evidence is lacking in detail as to how the Opponent’s GEA Trade Mark has been advertised and promoted to Australian consumers. The Applicant submits that it is not sufficient for the Opponent to rely on sales data and advertising expenditure. I agree with the Opponent’s submission that reputation may be inferred by way of a number of indicia. However, I note there are deficiencies in the Opponent’s evidence of promotion or advertising in relation to the ‘GEA’ trade mark as discussed above in relation to the Opponent’s social media, websites and published articles. I note also that no details are provided of the date or location of the Opponent’s attendance at trade exhibitions, or the number of attendees.

103.Having regard to the totality of the evidence, it is clear that the ‘GEA’ simpliciter trade mark has a reputation in at least the farming, food, beverage and pharmaceutical industries in relation to machinery and equipment, plants, process technology and components, and associated installation and maintenance services. I am satisfied that at the Relevant Date the ‘GEA’ simpliciter trade mark had acquired a reputation amongst a significant number of consumers within at least the food and beverage industries. However, having regard to the deficiencies discussed above I am not satisfied that the evidence establishes that the Opponent had acquired a reputation in respect of the Applicant’s Services, or engineering services more broadly, amongst a significant or substantial number of Australian consumers before the Relevant Date.  

104.Pursuant to s 60(b) of the Act I must now consider whether, because of the Opponent’s reputation, use of the Trade Mark would be likely to deceive or cause confusion.

Likelihood of deception or confusion

105.In order for the Opponent’s s 60 ground of opposition to be successful, I must be satisfied that because of the Opponent’s reputation, use of the Trade Mark in respect of the Applicant’s Services would be likely to deceive or cause confusion.

1. The meaning of the terms ‘deceive’ and ‘confuse’ was discussed in Pioneer Hi-Bred Corn Co v Hyline Chicks Pty Ltd, where Richardson J said:

   ‘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. ^[40]

   [40] [1979] RPC 410, 423 (citations omitted).

107.While s 60 of the Act does not require substantial identity or deceptive similarity between the respective marks, the degree of similarity between them is a relevant consideration when assessing the likelihood of confusion.[41] Both parties repeat their earlier submissions with respect to the degree of similarity between the Trade Mark and the Opponent’s Trade Marks.

[41] Qantas Airways Limited v Edwards [2016] FCA 729, [142].

108.For the reasons provided with respect to the s 44 and the s 58 grounds of opposition, I am not satisfied that there is a substantive degree of similarity between the Trade Mark and any of the Opponent’s Trade Marks. I note also that the words featured in the Opponent’s Additional Word Marks (‘Flow Components’, ‘farm technologies’ and ‘filtration’ respectively) are markedly different to the words featured in the Trade Mark and distinguish these trade marks from the Trade Mark.

109.Overall, there is insufficient evidence before me to suggest that a consumer seeking the Applicant’s Services would be caused to wonder whether the Applicant’s Services provided under the Trade Mark are related to the Opponent’s goods or services. Notwithstanding the Opponent’s reputation in respect of, at least, the ‘GEA’ simpliciter trade mark, I am not satisfied that because of that reputation, use of the Trade Mark in respect of any of the Applicant’s Services would be likely to deceive or cause confusion.

110.The ground of opposition under s 60 of the Act has not been established.

Section 42

111.Section 42 of the Act provides:

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.

112.It is clear that this ground is claimed under s42(b) of the Act. The Opponent bears the onus of establishing that use of the Trade Mark by the Applicant would rather than could be contrary to law on the balance of probabilities.[42]

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

113.The Opponent states in the SGP that use of the Trade Mark would be contrary to the Competition and Consumer Act 2010 (Cth) (‘CCA’) and would constitute the tort of passing off. The Opponent has not identified the relevant sections of the CCA to which its s 42(b) ground of opposition relates and the parties have not provided submissions with respect to the s 42(b) ground of opposition. However, I note that as both parties rely on their submissions with respect to the s 60 ground of opposition in respect of the s 42(b) ground, I understand the Opponent’s reference to the CCA is intended to be a reference to misleading and deceptive conduct pursuant to s 18 of the Australian Consumer Law (‘ACL’) which forms Schedule 2 to the CCA.

114.It is declared in Griffiths that the Applicant has never sought to represent to consumers that the Applicant’s Services are the same as the Opponent’s services or are derived from sources associated with the Opponent,[43] and that the Applicant is not aware of any instances of confusion between the Trade Mark and the Opponent’s Trade Marks. The Opponent notes that actual instances of confusion are not required under s 42(b) and that the risk of deception or confusion is not limited to incumbent clients.

[43] Griffiths, [34].

Australian Consumer Law

115.Section 18 of the ACL stipulates that there must be a likelihood that the relevant consumer would be misled or deceived as to the origin of the Applicant’s goods or services due to the conduct of the Applicant.

116.Section 60 of the Act requires only that consumers would be likely to be deceived or confused. There is a stricter test for conduct contravening the ACL.[44] Given I am not satisfied that the s 60 ground of opposition is established, it follows that on the stricter test to be applied under the ACL I am likewise not satisfied that the Applicant’s use of the Trade Mark would be likely to mislead or deceive under the ACL.

[44] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [33] (Stewart J).

Passing Off

117.Where use of a trade mark does not contravene s 18 of the ACL it will not amount to the tort of passing off. The relationship between passing off and s 52 of the now repealed Trade Practices Act 1974 (Cth) (‘TPA’) was addressed in Re Equity Access Pty Ltd v Westpac Banking Corporation:

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.[45]

[45] [1989] FCA 506, [40] (French J).

118.As s 18 of the ACL is the equivalent of ss 52 of the TPA,[46] the comments above are also applicable to the relationship between s 18 of the ACL and the tort of passing off. As I have found that s 18 of the ACL has not been contravened, it follows that use of the Trade Mark does not amount to passing off.

[46] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174 [410] (Rangiah J).

119.The ground of opposition under s 42(b) of the Act is not established.

Decision

1. Section 55 of the Act relevantly provides:

   (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.

121.The Opponent has failed to establish any of the grounds of opposition nominated in the SGP.  Trade mark application number 2280972 may proceed to registration not less than one month from the date of this decision. 

1. 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.

Costs

1. The parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle. I award costs against the Opponent in accordance with s 221 of the Act, in the amounts set out in Schedule 8 of the Regulations.

   Sheona Robertson

   Hearing Officer

   Oppositions and Hearings

   Trade Marks and Designs

   27 February 2025