Geelong Grammar School Limited

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application 2290393 (classes 9, 16, 18, 25, 28, 35, 36, 41, 43) – Timbertot – in the name of Geelong Grammar School Limited

Delegate: Nicholas Barbey

Representation: Applicant: Andrew Sykes of counsel instructed by The Lantern Legal Group Pty Ltd trading as Harwood Andrews

Decision: 2024 ATMO 108
Trade Marks Act 1995 (Cth) – s 33 proceeding – s 44 and reg 4.15A of the Trade Marks Regulations 1995 (Cth) considered – grounds for rejection established in relation to a subset of goods and services – evidence considered but not sufficient – opportunity to amend – goods and services amended – trade mark application accepted
Background

This matter concerns an application filed by Geelong Grammar School Limited (‘Applicant’) to register the following trade mark:
Trade mark:               Timbertot (‘Trade Mark’)
Number:                  2290393 (‘Application’)
Priority date:              1 August 2022
Specification:[1]            Class 9: (including) audio visual multimedia and teaching apparatus and instruments in this class; downloadable educational material including webcasts, podcasts, audio visual files, music files, software programs and mobile or web-based software applications; software
[1] An indicative specification is provided. The complete specification is reproduced in Annexure A to this decision.
Class 16: (including) educational materials; printed matter and printed publications; articles of stationery
Class 18: (including) bags, including school bags, book bags and sports bags; luggage; umbrellas
Class 25: (including) apparel (clothing, footwear and head gear), including without limitation, school clothing, school footwear and school head gear for students, children and young people
Class 28: (including) educational toys, playthings and sporting goods in this class; sporting apparatus
Class 35: (including) wholesaling and retailing of goods (by any means); retail services; distribution of goods (not being transport services); career planning services
Class 36: (including) fundraising services; charitable services, namely financial services; leasing of accommodation; preparing reports and other business documents in relation to the above services
Class 41: (including) educational services including schooling; provision of library services; arranging, conducting and making available online training sessions, workshops, seminars, courses, lectures, exhibits and conferences; publication of printed educational materials, statistics, research and information; training in the care of children; online publications (non-downloadable)
Class 43: (including) boarding house accommodation and hospitality services; arranging of accommodation for students; hospitality services (food and drink)
(‘Claimed GS’)
The Application was examined as required by s 31 of the Trade Marks Act 1995 (Cth) (‘Act’) and an examination report issued to the Applicant raising, inter alia, grounds for rejection under s 44 of the Act in respect of the following trade marks (collectively ‘Citations’):
Trade mark:               TIMBER TOTS (‘59 Mark’)
Number:  1813159
Priority date:              1 December 2016
Specification:[2]            Class 35: charitable services, namely organising and conducting volunteer programmes and community service projects
[2] An indicative specification is provided. The complete specification is reproduced in Annexure B to this decision.
Class 39: (including) arranging of excursions; organisation of travel
Class 41: (including) cultural activities; educational services; instruction services; training
Class 42: design of child care facilities
Class 43: (including) child care services
(‘59 Services’)
Trade mark:               TIMBER TOTS (‘65 Mark’)
Number:  2055265
Priority date:[3]             4 April 2019
[3] Australian trade mark 2055265 is a protected international trade mark based on international registration 1501313.
Specification:             Class 28: toys, games, vibrating and sound toys; educational toys, early childhood toys, construction toys, modular toys; figurines (toys), play sets and boxes specially adapted for toys; vehicles (toys); toy furniture; homes for children (toys)
(‘65 Goods’)
Trade mark:  (‘69 Mark’)
Number:  2139769
Priority date:              30 November 2020
Specification:             Class 43: services for providing food and drink; cafe, restaurant and take away food services
(‘69 Services’)
Endorsements:            Registration of the Trade Mark is limited to Western Australia.
Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.
The examination report asserted that the Trade Mark closely resembled each of the Citations and that the Claimed GS contained goods and services which were similar to those claimed by the Citations.
In response, the Applicant filed evidence seeking acceptance of the Application under s 44(3) of the Act. Emphasis was placed on the Applicant’s following Australian trade mark registrations 924308 and 951180 (together ‘Earlier Marks’):
Trade mark:                Timbertop
Number:  924308
Priority date:              23 August 2002
Specification:             Class 9: teaching apparatus and instruments, including compact disks, tapes, computer software
Class 16: instructional and teaching material (except apparatus) including paper, postcards, books, printed matter and magazines
Class 18: bags, including school bags
Class 28: educational toys and sporting goods
Class 35: business management, business administration and office functions, including retail of educational products, clothing, bags, stationery, toys, paper and printed matter, CDs, tapes and computer software
Class 41: education services, including schooling
Trade mark:                Timbertop
Number:  951180
Priority date:              22 April 2003
Specification:             Class 25: clothing, footwear and head gear, including without limitation, school clothing, school footwear and school head gear
Endorsement:             Provisions of subsection 44(4) applied.
In the Applicant’s view, the Trade Mark is ‘substantially the same’ as ‘Timbertop’ and the goods and services for which the Earlier Marks are registered ‘encapsulate goods and services that are substantially the same’ as the Claimed GS.[4] It claimed that these circumstances meant the Application could be accepted pursuant to s 44(3)(b) of the Act. Alternatively, the Applicant alleged that its prolonged use of ‘Timbertop’ was sufficient to enable acceptance under s 44(3)(a) of the Act.
[4] Applicant’s response dated 16 December 2022 to the first examination report, [2.4.7].
Unpersuaded, the examiner maintained the grounds for rejection and issued a second examination report pointing out that ‘Timbertop’ was ‘not substantially the same’ as the Trade Mark. Hence, use of the former was not sufficient to enable the provisions of s 44(3) of the Act to be applied. At this point, the Applicant requested to be heard.
An oral hearing was scheduled and the Applicant filed written submissions (‘Submissions’) together with supplementary evidence prior to the hearing. As a delegate of the Registrar of Trade Marks (‘Registrar’), I heard this matter by video conference on 19 February 2024. Andrew Sykes of counsel, instructed by Michelle Dowdle of Harwood Andrews, presented oral submissions on the Applicant’s behalf. Laura Shandley, the Applicant’s representative, attended in an observational capacity.
From the outset, I note that the grounds for rejection must be considered afresh and s 33 of the Act embodies a presumption of registrability which provides that the Registrar must accept an application for registration, unless satisfied that there are grounds under the Act for rejecting it or the application has not been made in accordance with the Act.
Evidence
The Applicant relied on the following evidence:
·Declaration made on 12 February 2024 by Bronwen Mary Charleson (Executive Director [Safeguarding and Legal Services] and Company Secretary of the Applicant) with Exhibits BC-01 to BC-12 (‘Charleson 1’).
·Declaration made on 14 December 2022 by Bronwen Mary Charleson with Attachment C (‘Charleson 2’).
According to Charleson 1, Geelong Grammar School ‘is one of Australia’s longest standing educational institutions’ that ‘educates over one thousand four hundred (1,400) students each year across four unique campuses’.[5] Its Timbertop campus was established in 1953 and is located near Mount Timbertop in Victoria. The Timbertop programme is described as ‘a unique educational experience of indoor and outdoor learning, presenting new challenges to young people and helping them discover their best within’.[6] Notable individuals who have attended the Timbertop campus include King Charles III, Missy Higgins and John Marsden.
[5] Charleson 1, [8]–[9].
[6] Ibid [36].
Ms Charleson claims that the ‘process for use of [the Trade Mark] as a brand commenced with work in 2021’ and ‘[i]t is intended that the Trade Mark will be used for the [early learning centre] programme at the School’s Corio and Toorak campuses’.[7] She explains that ‘[i]t is envisaged that students commence at the School as a “Timbertot”, and then continue their Geelong Grammar School education to become a Timbertop student’.[8] The Trade Mark ‘was chosen for brand development because it so closely resembles [Timbertop]’ and the Applicant’s intention is ‘to develop a family of trade marks so that the Trade Mark leans on the long history of use and reputation relating to [Timbertop] to launch the Trade Mark’.[9]
[7] Ibid [22], [26].
[8] Ibid [30].
[9] Ibid [49].
It is declared that Timbertop has ‘been consistently and continuously used by the School in relation to the goods and services set out in their registrations since as early as 1953’.[10] The Applicant believes that the ‘significant and notable reputation in “Timbertop” for over 70 years will extend to its use of “Timbertot” as a family of related trade marks’.[11] Ms Charleson submits that ‘the acceptance of the Trade Mark is unlikely to lead to any more confusion’ given the Earlier Marks were registered before the Citations.[12]
[10] Ibid [45].
[11] Ibid [52].
[12] Ibid [53].
Charleson 2 puts into evidence various publications outlining the history and curriculum of the Timbertop campus. It also provides a news article which mentions that King Charles III studied at the Timbertop campus in the 1960s.[13]
Discussion
[13] Charleson 2, Attachment C. Sophie Aubrey, ‘King Charles and the confiscated cigarettes: A Geelong Grammar tale’ (11 September 2022) The Age.
Section 44 and regulation 4.15A
Section 44 of the Act relevantly provides:
Identical etc. trade marks
…
(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.
(3) If the Registrar in either case is satisfied:
(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
...
(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:
(a) beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b) ending on the priority date for the registration of the applicant's trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
Regulation 4.15A of the Trade Marks Regulations 1995 (Cth) (‘Regulations’) relevantly provides:
Grounds for rejection--trade mark identical etc to trade mark protected under Madrid Protocol
(1) For section 189A of the Act, and subject to subregulations (3) and (5), 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 protected international trade mark; or
(ii) a trade mark in respect of which the Registrar has received notification of an IRDA;
held by another person in respect of similar goods or closely related services; 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 other trade mark in respect of the similar goods or closely related services.
…
(3) If, in a case mentioned in subregulation (1) or (2), the Registrar is satisfied:
(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose.
…
(5) If, in a case mentioned in subregulation (1) or (2), the Registrar is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:
(a) beginning before the priority date for the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b) ending on the priority date for the registration of the applicant's trade mark;
the Registrar must not reject the application because of the existence of the other trade mark.
Regulation 4.15A of the Regulations and s 44 of the Act are essentially identical. The former applies when reliance is placed on a Protected International Trade Mark (‘PITM’) or international registration designating Australia as the earlier conflicting mark. The latter is relevant when the earlier conflicting mark is a national application or registration. For simplicity, the following discussion will primarily adopt the expression used in s 44 of the Act notwithstanding the 65 Mark is a PITM.
To establish a valid ground for rejection under s 44 of the Act, a pending or registered trade mark which satisfies the following requirements must be identified:
(i)it is in the name of a person other than the Applicant (‘First Requirement’);
(ii)it has a priority date which is earlier than the Relevant Date (‘Second Requirement’);
(iii)it is substantially identical with, or deceptively similar to, the Trade Mark (‘Third Requirement’); and
(iv)it is in respect of goods and/or services which are similar and/or closely related to the Claimed GS (‘Fourth Requirement’).
Each of the Citations are in the name of another person and have a priority date earlier than the Relevant Date. The First and Second Requirements are satisfied.
With respect to the Third Requirement, the Applicant conceded that the 59 Mark and the 65 Mark are at least deceptively similar to the Trade Mark.[14] I agree. In short, the singularisation of ‘tots’ and conjoining of ‘timber’ and ‘tot’ within the Trade Mark does not materially alter the similar overall impression conveyed by each trade mark. The Third Requirement is satisfied in relation to the 59 Mark and the 65 Mark.
[14] Submissions, [9].
As regards to the 69 Mark, the Applicant maintained that this was neither substantially identical with, or deceptively similar to, the Trade Mark. The test for determining ‘substantial identity’ was formulated by Windeyer J in Shell Co 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.[15]
[15] [1963] HCA 66, [12] (‘Shell’).
Reproduced below are the trade marks:

69 Mark Trade Mark

Timbertot

A side by side comparison reveals obvious dissimilarities. The 69 Mark is six letters long and encased by a rectangular border whereas the Trade Mark is nine letters in length and borderless. These differences lead to a total impression of dissimilarity emerging from the relevant comparison. As such, the Trade Mark is not substantially identical with the 69 Mark.
Section 10 of the Act provides that ‘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’. The assessment of deceptive similarity was considered in Shell by Windeyer J who stated:
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].[16]
[16] Ibid [13].
The Applicant claims that the 69 Mark ‘presents as a long singular word’ with ‘exaggerated spacing between the letters’ that imports visual differences between the trade marks.[17] It contends that the 69 Mark is ‘simple and short’ and differs to the Trade Mark which is ‘longer and has a different syllabic structure’.[18] Consequently, the Applicant asserts that there is no real and tangible danger of deception or confusion occurring between the trade marks.
[17] Submissions, [30].
[18] Ibid [32].
In my view, the 69 Mark is deceptively similar to the Trade Mark. By default, ‘timber’ is the only word element of the 69 Mark and the alleged impact of the ‘exaggerated spacing between the letters’ is negligible. The essential element of the 69 Mark remains the word ‘timber’. The border present in the 69 Mark merely reinforces this. Meanwhile, ordinary consumers are likely to comprehend and articulate the Trade Mark as two separate words, namely ‘timber’ and ‘tot’. It would be naturally pronounced in this manner and not, for example, as ‘tim-bert-ot’. In the context of consumers who tend to slur the termination of words,[19] substantial aural similarities arise between the marks given emphasis will fall on ‘timber’ within the Trade Mark.
[19] London Lubricants (1920) Limited's Application (1925) 42 RPC 264, 279 (Sargant LJ).
Furthermore, ‘timber’ is at the front of the Trade Mark and forms a dominant element of same. The word ‘tot’, which comprises only a third of the letters within the Trade Mark, does little to diminish the shared visual similarities. This is especially so given its incorporation as a suffix. Additionally, ‘timber’ is not descriptive of food and beverage services. By contrast, ‘tot’ may be defined as a ‘small quantity of anything’ or ‘a small child’.[20] In this setting, ‘tot’ does not create significant conceptual dissimilarities between the trade marks, nor does it subsume the identity of ‘timber’ within the Trade Mark.
[20] Macquarie Dictionary (online at 4 April 2024) ‘tot’ (defs 1 and 3).

In assessing the likelihood of deception or confusion, consideration should turn to the surrounding circumstances.[21] Here, the relevant services are unlikely to be closely scrutinised given they pertain to the provision of food and beverages. These services are not specialised or directed towards a specific market. Rather, their general nature and price point are such that consumers are unlikely to exercise a high degree of care or discernment when choosing the services. This, in turn, tends to increase the potential for deception or confusion occurring. As such, when the trade marks are considered as wholes, the Third Requirement is satisfied in relation to the 69 Mark.
[21] [1999] FCA 1020, [50(iii)].
Turning to the Fourth Requirement, goods or services are ‘similar’ if they are the same as, or if they are of the same description as, the other goods or services.[22] The guiding factors for determining similar goods are well settled and involve a holistic consideration of:
[T]he nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek's Application ([1946] 63 R.P.C. 59), Romer, J. classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold.[23]
[22] Act s 14.
[23] Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369, 372.
These factors, subject to any necessary modification, are equally applicable to determining if services are similar.[24] For comparative purposes, it is the notional scope of the respective claims that must be considered.[25] Meanwhile, the term ‘closely related’, which is not defined in the Act, focuses on the relationship between goods and services. In Registrar of Trade Marks v Woolworths Ltd, French J explained:
The relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods. Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them. Television repair services in this sense are closely related to television sets as a class of goods.[26]
[24] See Mid Sydney Pty Ltd v Australian Tourism Co Ltd & Ors [1998] FCA 1616 (Burchett, Sackville and Lehane JJ).
[25] Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43, [11] (Mason J).
[26] [1999] FCA 1020, [38] (emphasis added).
In Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co (‘Caterpillar’), Lockhart J observed:
It is obvious that there is likely to be confusion if substantially the same or deceptively similar trade marks are used by different proprietors, one for goods and the other for services, where the goods and services are closely related. Examples that present practical difficulties are the sale of goods such as data processing equipment and the sale of programs for their operation; the sale of curtains and furnishing materials on the one hand, and the sewing of curtains on the other, as interior decorators often sell curtains and perform the service of sewing; the sale of clothes on the one hand and tailoring on the other because the service of custom tailoring is frequently provided in addition to the sale of ready-made clothes; and the sale of educational material on the one hand and educational services (language courses, home study programs) on the other.[27]
[27] [1983] FCA 145 (‘Caterpillar’) (emphasis added).
As a starting point, I do not consider the items particularised in classes 18, 25, 35 and 36 of the Claimed GS to be similar or closely related to the goods and/or services claimed by the Citations. For its part, the Applicant conceded certain items in the Claimed GS were similar or closely related to the goods and services claimed by the Citations. Broadly, these concessions pertained to educational and hospitality services as well as various toys and sporting goods. However, the Applicant disputed that goods such as sports balls and services in the nature of online publications were similar to the Claimed GS. Further, it did not provide submissions in relation to items in classes 9 and 16 because these goods had not been objected to by the examiner. Here, it is timely to reiterate that the Application must be considered afresh and the examiner’s position as to the scope of similarity between the goods and services of the relevant trade marks is not determinative.
It is convenient to consider the goods and services of the Citations sequentially. The 59 Services include broad claims for education services, training and publication of educational materials. In my consideration, these services are closely related to the various teaching and training goods specified in the Claimed GS because they are invariably provided in the same marketplace, are typically complementary and share a common educational purpose. Indeed, this particular relationship is recognised in Caterpillar. The 59 Services also contain similar services insofar as the publication of educational materials and providing recreation facilities share self-explanatory similarities with services in the nature of online publications and the provision of sporting club facilities. Likewise, library services often go hand in hand with educational services given they serve the same purpose and are routinely supplied by the same entity. In my view, consumers would expect the trade origin of these services to be the same. As such, they constitute services of the same description.
As regards to the 65 Goods, the items claimed have been broadly drafted and encompass all forms of toys. A ‘toy’ is essentially an object to play, interact or otherwise derive amusement from.[28] In the context of notional use, the 65 Goods would include goods which are either the same or of the same description to the various sports balls and training devices. This is especially so given the existence of sports toys and related accessories aimed at developing motor skills or which are adapted for toddlers. It follows that all items claimed in class 28 of the Claimed GS are similar to the 65 Goods.
[28] Macquarie Dictionary (online at 4 April 2024) ‘toy’ (def 1).
In relation to the 69 Services, there is merit to the Applicant’s position that boarding house and lodging accommodation services in the Claimed GS are dissimilar to the food and drink services particularised in the 69 Services. The nature and purpose of such services fundamentally differ. This is apparent in the fact that one is the provision of accommodation whereas the other concerns the provision of food and drink for consumption. These services also have different trade origins and, in my estimation, consumers are unlikely to infer a connection between same.
Accordingly, in principle, the s 44 and reg 4.15A grounds for rejection have been established in respect of the goods and services depicted in strikethrough in Annexure C to this decision (‘Conflicting GS’). However, the grounds for rejection may be overcome if the Applicant demonstrates that it has continuously used the Trade Mark in respect of the Conflicting GS for a period beginning before the relevant priority dates of each of the Citations and ending on the Relevant Date.[29] Alternatively, the Application may be accepted if there has been honest concurrent use of the trade marks or that, because of other circumstances, it is proper to do so.[30]
Prior continuous use
[29] Act s 44(4); Regulations reg 4.15A(5).
[30] Act s 44(3); Regulations reg 4.15A(3).
The Applicant submits that its use of the Earlier Marks should enable acceptance of the Application based on the provisions of s 44(4) of the Act and reg 4.15A(5) of the Regulations. It contends that ‘Timbertop’ and the Trade Mark are substantially identical and thus use of ‘Timbertop’ is use of the Trade Mark with additions or alterations that do not substantially affect its identity.[31]
[31] Act s 7(1).
The test for determining substantial identity is set out at [20] of this decision. The crux of the Applicant’s argument rests on the positioning of the letters ‘p’ and ‘t’ at the end of each trade mark. In its view, the trade marks have a ‘high degree of phonetic similarity and otherwise identical symbolic structure’ and ‘there is no relevant ideational difference conveyed to the consumer’.[32] The Applicant emphasised that, in the setting of educational services, ‘TIMBERTOP has no specific meaning other than to allude to timber or trees’ and ‘TIMBERTOT contains this same allusion save that it also alludes to a “TOT”’ which ‘is relatively non-distinct as it alludes to the subject or recipient of a type of education services’.[33]
[32] Submissions, [43].
[33] Ibid.
As stated in Shell, determining substantial identity involves a side by side comparison of the essential features of the trade marks. The relevant analysis has been described as ‘a studied comparison’[34] and can be differentiated from the test for deceptive similarity because considerations such as imperfect recollection are not relevant for comparative purposes.[35]
[34] Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd [2020] FCAFC 186, [98] (Middleton, Yates and Lee JJ).
[35] Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel [2021] FCAFC 8, [27] (McKerracher, Gleeson and Burley JJ).
In my opinion, ‘Timbertop’ and the Trade Mark are not substantially identical. First, the letters ‘p’ and ‘t’ do not bear any visual similarity irrespective of capitalisation. Second, this single letter difference gives rise to some aural dissimilarity notwithstanding emphasis is likely to fall on ‘timber’ and the variance occurs at the termination of each trade mark. Third, the suffixes of ‘-top’ and ‘-tot’ are known words with different meanings. Fourth, accepting that the Trade Mark alludes to timber and a small child, this meaning still diverges from the idea of a timber surface or geographical location that is conveyed by ‘Timbertop’. Plainly, the trade marks are similar. However, it does not follow that they are substantially identical. On a studied comparison, the single letter difference between the trade marks would not be overlooked. Whilst this difference is quantitatively small, its effect is qualitatively significant. As such, an overall impression of identity between the ‘Timbertop’ and the Trade Mark does not emerge.
The Applicant also drew attention to examples wherein ‘marks differing in one or two letters have [been] held to be substantially identical’.[36] I accept that the trade marks in these examples were viewed as being substantially identical despite a spelling variation or additional letter.[37] However, I do not consider any are analogous. In particular, ‘Timbertop’ is not an obvious appropriation of the Trade Mark, nor do I consider it to be almost identical to the Trade Mark. Be that as it may, it has been acknowledged that ‘a conclusion of substantial identity or not is one of fact about which reasonable minds may differ’[38] and there are ample instances in which a single letter difference has resulted in a finding of substantial identity not being established.[39] As such, little would be gleaned from undertaking an in-depth analysis of the examples referred to by the Applicant.
[36] Submissions, [44].
[37] Submissions, [44] which listed: ‘POLYKIN’ v ‘POLYKEN’ in Kendall Co v Mulsyn Paint & Chemicals [1963] HCA 1 (Kitto J); ‘DIOR’ and ‘DION’ in RKH Pty Ltd v Christian Dior (1985) 6 IPR 78; ‘SPORTSCRAFT’ v ‘SPORTCRAFT’ in Sportscraft Consolidated Pty Ltd v General Sportcraft Co Ltd (1993) 27 IPR 74; ‘DAIMER’ v ‘DAIMARU’ in Daimer Industries Pty Ltd v Kabushiki Kaisha Daimar (1993) 27 IPR 124; ‘POLYVIC’ v ‘POLIVIC’ in Mulford Plastics Pty Ltd v 3V Partecipazioni Industriali Spa (1995) 32 IPR 557.
[38] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [53] (Greenwood, Jagot and Beach JJ).
[39] See, eg, ‘OPTUS’ v ‘OPTUM’ in Singtel Optus Pty Ltd v Optum Inc [2018] FCA 575 (Davies J); ‘SIGFOX’ and ‘SIGBOX’ in SIGFOX (Societe Anonyme) v Macquarie Telecom Pty Ltd [2020] ATMO 183; ‘AXIA’ v ‘AXIS’ in Axis Legal (Australia) Pty Ltd v Axia Litigation Lawyers Pty Ltd [2016] ATMO 41; ‘VOLTEX’ v ‘VOLEX’ in Volex Group plc v TH & EE Tunley Pty [2012] ATMO 86; ‘SKYPAL’ v ‘SKYPOL’ in Carl Zeiss AG v Zhang Yimin [2009] ATMO 69; ‘OTRIVIN’ v ‘OTRIVINE’ in Otrivin Trade Mark [1967] RPC 613.
Bearing the above in mind, the use of ‘Timbertop’ does not constitute use of the Trade Mark with additions or alterations that do not substantially affect its identity. It follows that the evidence, which only demonstrates prior use of ‘Timbertop’, is of no assistance for the purposes of s 44(4) of the Act and reg 4.15A(5) of the Regulations. For completeness, the expression of these provisions is clear insofar as the benefit of each relates to the prior continuous use of the Trade Mark and not, for example, the prior continuous use of a trade mark that is deceptively similar to the Trade Mark.
Honest concurrent use
As discussed above, ‘Timbertop’ is not use of the Trade Mark for the purposes of the Act. The ‘2 trade marks’ referred to in s 44(3)(a) of the Act and reg 4.15A(3)(a) of the Regulations are evidently a reference to the ‘applicant’s trade mark’ and the ‘other trade mark’ as particularised in ss 44(1) and (2) or regs 4.15A(1) and (2) of the Regulations. On any reasonable interpretation, the honest concurrent use of a trade mark that is deceptively similar to the Trade Mark is not envisaged by the language deployed in these provisions. It follows that the evidence filed is not sufficient to apply the provisions of s 44(3)(a) of the Act or reg 4.15A(3)(a) of the Regulations.
Other circumstances
The Applicant submits that other circumstances exist which make it proper to accept the Application under s 44(3)(b) of the Act and reg 4.15A(3)(b) of the Regulations. Three circumstances were highlighted which the Applicant says favours acceptance. First, the Applicant points to its ‘long standing prior registered rights in the’ Earlier Marks.[40] Second, reliance was placed on its ‘even longer standing significant reputation’ in ‘Timbertop’.[41] Lastly, the Applicant asserts that it would suffer ‘particular hardship and substantial inconvenience’ if the Application is rejected.[42]
[40] Submissions, [51].
[41] Ibid.
[42] Ibid.
The relevant date for determining whether s 44(3)(b) of the Act, and by analogy reg 4.15A(3)(b) of the Regulations, applies is the time at which the discretion is exercised.[43] As such, the circumstances upon which the Applicant may rely include those which came into existence after the Relevant Date.
[43] Bendigo and Adelaide Bank Ltd v Community First Credit Union Ltd [2021] FCAFC 31, [228] (Middleton and Burley JJ); Trident Seafoods Corporation v Trident Foods Pty Ltd [2019] FCAFC 100, [83] (Reeves, Jagot and Rangiah JJ).
The first circumstance advanced is premised on ‘Timbertop’ and the Trade Mark being regarded as substantially identical to each other. If accepted, the Applicant opines that ‘[t]here will essentially be no extension of statutory rights beyond what is already held’ and it ‘would be futile’ to reject the Application.[44] As explained at [39] of this decision, the trade marks are not substantially identical. That being so, the decisions of the Registrar cited by the Applicant to support its position are distinguishable from the present matter.[45] Those decisions involved consideration of, inter alia, the prior registration of a plain text trade mark as being a circumstance which warranted acceptance of a subsequent trade mark incorporating identical text elements. Here, the statutory rights granted by the Earlier Marks differ in nature and scope to the rights sought by the Application. It follows that rejecting the Application would not be ‘futile’.
[44] Submissions, [55].
[45] Staats v Click Loans Pty Ltd [2018] ATMO 116; Kantfield Pty Ltd (Unreported, Australian Trade Marks Office, 31 January 2024).
The alleged reputation of ‘Timbertop’, being the second circumstance, is not a compelling factor that weighs in favour of acceptance. I acknowledge that ‘Timbertop’ and the Trade Mark are similar. However, the mere existence of a reputation in the former is not a circumstance which makes it proper to accept the Application. For example, the evidence provided reveals that the Applicant does not deviate from its use of ‘Timbertop’ with iterations that might otherwise educate or cause consumers to infer a connection with the Trade Mark. In short, whatever reputation exists in ‘Timbertop’ does not grant an entitlement under the Act to obtain registration for any subsequent ‘Timberto-’ type mark the Applicant desires.
As to the final circumstance, I am not satisfied that the Applicant will suffer ‘particular hardship’ or ‘substantial inconvenience’ if the Application is rejected. The evidence reveals that the Trade Mark is still in its early stages with planning of how the Trade Mark will be used having been undertaken internally by the Applicant. The only objective expenditure disclosed pertains to the engagement of a third party agency to oversee the conceptual development of the Trade Mark. There has been no public use of the Trade Mark and, by its own admission, the Applicant’s intention is to ‘develop a family of trade marks’.[46] That is, the Applicant is taking its first step towards creating a portfolio of ‘Timber-’ trade marks. The prospect of some internal plans falling by the wayside and the Applicant having to adjust its branding direction are certainly inconvenient. However, based on the evidence, these risks do not constitute a substantial inconvenience given the Trade Mark is in its relative infancy. Further, any potential hardship suffered by the Applicant is, to an extent, offset by the fact that the Trade Mark may proceed to acceptance for the goods and services which fall outside of the Conflicting GS.
[46] Charleson 1, [49].
In light of the above, whether considered individually or collectively, I am not satisfied that the circumstances advanced make it proper to apply the provisions of s 44(3)(b) of the Act or reg 4.15A(3)(b) of the Regulations. Accordingly, the s 44 and reg 4.15A grounds for rejection have been established in respect of the Conflicting GS.
Decision
Section 33 of the Act provides:
Application accepted or rejected
(1) The Registrar must, after the examination, accept the application unless he or she is satisfied that:
(a) the application has not been made in accordance with this Act; or
(b) there are grounds under this Act for rejecting it.
Note: For this Act see section 6.
(2) The Registrar may accept the application subject to conditions or limitations.
Note: For limitations see section 6.
(3) If the Registrar is satisfied that:
(a) the application has not been made in accordance with this Act; or
(b) there are grounds under this Act for rejecting it;
the Registrar must reject the application.
(4) The Registrar may not reject an application without giving the applicant an opportunity of being heard.
Note: For applicant see section 6.
I am satisfied on the balance of probabilities that there are grounds for rejecting the Application under s 44 of the Act and reg 4.15A of the Regulations in relation to the Conflicting GS.
On 17 May 2024, I notified the Applicant of my intention to reject the Application unless the Claimed GS were amended as shown in Annexure D to this decision.[47] On 13 June 2024, the Applicant consented to these amendments. The Claimed GS have since been amended.
[47] Several classification issues were raised during the examination of the Application. The Applicant agreed to amend these items but they were not implemented during the examination. As such, the correspondence sent to the Applicant also addressed these remaining classification issues.

Accordingly, I accept for possible registration trade mark application 2290393 for the amended specification set out in Annexure D to this decision.
Nicholas Barbey
Hearing Officer
Delegate of the Registrar of Trade Marks
17 June 2024

Annexure A
Class 9: audio visual multimedia and teaching apparatus and instruments in this class; downloadable educational material including webcasts, podcasts, audio visual files, music files, software programs and mobile or web-based software applications; multimedia material including electronic and recorded publications; interactive education software including compact disks and tapes; training aids (apparatus for teaching people); training apparatus (teaching apparatus for teaching people); electronic publications (downloadable); electronic publications (non-downloadable); bags adapted for laptops, tablets and other mobile technologies; software
Class 16: educational materials; educational publications; printed matter and printed publications; booklets; books; journals; periodicals; bulletins; articles of paper for stationary purposes; postcards; brochures; catalogues; adhesive stickers; name badges (office requisites); badges made of cardboard; badges made of paper; posters; newsletters; yearbooks; albums; binders, workbooks and work books; calendars and diaries; flags of paper; paper flags; charts; flashcards; handbooks; manuals; magazines; newsletters; written articles; instructional and teaching material; printed policies; printed submissions; printed research papers; printed study guides; printed worksheets; printed examinations and answer sheets; portfolio cases (covers); portfolio cases (folders); portfolios being stationery cases for holding documents; portfolios being stationery cases for holding plans; portfolios made from imitation leather adapted for carrying artwork; portfolios made from plastic adapted for carrying artwork; presentation portfolios (stationery cases); writing and drawing instruments and apparatus in this class including pens, pencils, highlighters, crayons, rulers, marketers, sharpeners, correcting fluids and erasers; articles of stationery
Class 18: bags, including school bags, book bags and sports bags; back packs; shoulder bags; gym bags; satchel bags; luggage; suitcases; conference folders; drawing instrument cases; art portfolios (cases); briefcase-type portfolios; conference portfolios; leather portfolios; portfolio cases (briefcases); portfolios (briefcases); portfolios (other than stationery); business card cases; card cases (notecases); card holders (wallets); luggage identity tags; luggage label holders; umbrellas; umbrella covers
Class 25: apparel (clothing, footwear and head gear), including without limitation, school clothing, school footwear and school head gear for students, children and young people; clothing for sports; clothing adapted for athletic use and training in this class; headwear adapted for athletic use and training (other than helmets) in this class; sports headgear (other than helmets); ties (for wear); blazers; scarfs; gloves; jackets and outerwear in this class; shirts and blouses in this class; knitwear in this class; swimwear in this class; badges for wear in this class including those made of common metal or textile materials
Class 28: educational toys, playthings and sporting goods in this class; educational playthings for use in teaching; electronic games (other than software); electronic educational teaching games; electronic educational teaching games for children; tactile educational games (playthings); tactile educational toys (playthings); musical games; musical playthings; musical toys; computer games apparatus; board games in this class; cards and card games for use in teaching; sporting apparatus; sports balls in this class including footballs, rugby balls, soccer balls, basketballs, volleyballs and hand balls; sports training aids and devices; sporting bags (shaped to contain apparatus used in playing sports); sports games; toys for adventure, positive and creative play
Class 35: promotion of education; business management, business administration and office functions; promotion of education, psychology, learning behaviours, behavioural science and factors contributing to social and emotional well being and mental health; promotion of emotional, social and mental health and well being; retail of education and training materials, manuals and curriculum-based instructional and teaching materials including those in printed, audio, video, digital, multimedia, software and electronic format; wholesaling and retailing of goods (by any means); retail services; distribution of goods (not being transport services); demonstration of goods; the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; promoting the commercial and business interests of professional provided by an association for its members; provision of business support or advice by an association for its members; career advisory services (other than education and training advice); career counselling (employment advice and information); career information and advisory services (other than educational and training advice); career planning services; all the foregoing being available or accessible online or via the internet; provision of information in relation to the above services including online, via an online forum, emails, webinars, weblogs and social media applications
Class 36: organising and arranging for charitable donations and collections including in relation to education, training, entertainment, sporting or cultural activities; financial sponsorship of programs and support services to meet the educational needs of others; fundraising services; sponsorship of group recreational activities for the purpose of charitable fundraising; collaborations with third parties for the purpose of charitable fundraising; facilitating access to educational services for others through financial means; organisation of charitable collections; charitable services, namely financial services; leasing of accommodation; provision of housing accommodation; provision of long-term accommodation; rental of accommodation; preparing reports and other business documents in relation to the above services; advisory and consultancy relating to the above services; provision of information in relation to the above services, including online, via an online forum, email, weblogs and social media posts and applications
Class 41: educational services including schooling; educational services provided by kindergarten, preparatory, pre-school, primary and secondary schools; provision of educational instruction, tuition, study, tutoring, coaching and training services; provision of distance education; boarding school services; educational programs; providing facilities for educational purposes; rental of sporting facilities, theatres and performance spaces including the provision of services relating to the operation and management of leased spaces; provision of sporting club facilities; social club services (entertainment, sporting and cultural services); provision of educational courses; providing curriculum development services; providing of curriculum based educational resources and support materials; educational consultancy services; provision of education services via an online forum; provision of cultural educational activities including music, drama and dance lessons; production of plays, musical, dance and theatrical performances and shows; provision of early learning (educational) services including in relation to the development of fine motor, verbal, numbers, counting, colours and alphabet skills; provision of education and training services in relation to broad, lateral and critical problem solving skills, psychology, learning behaviours, behavioural science and factors contributing to social and emotional wellbeing and mental health; adventure, nature and inquiry-based learning programs (education and training); organising, conducting and managing events and activities for physical and emotional wellbeing including problem-solving exercises and team-based adventure challenges; physical education; physical health education; instructing and training of outdoor education and recreational activities; conducting and arranging of camps for students; creating and developing educational or training courses and programs including for early learners in relation to the development of fine motor, verbal, numbers, counting, colours and alphabet skills; creating and developing educational or training courses and programs in relation to the development of broad, lateral, creative and critical problem solving skills, psychology including positive psychology, learning behaviours, behavioural science and factors contributing to social and emotional wellbeing and mental health; provision of library services; archive library services; provision of kindergarten, playgroup and pre-school educational services; kindergarten services (education or entertainment); kindergartens (nursery schools); preschool teaching; preschools (education); provision of children's educational services through play groups; arranging, conducting and making available online training sessions, workshops, seminars, courses, lectures, exhibits and conferences; educational research; association services being the provision of training and education to members of an association; organising, conducting and managing events and activities including cultural, social, educational, sporting, charitable and entertainment events; event management services in relation to educational and sporting events; boarding school services; boarding schools; dissemination and publication of educational material including online; providing educational information; providing facilities for sporting activities, recreation and entertainment; training in the care of children; life coaching services (training or education services); lifestyle counselling and consultancy (training); career counselling (training and education advice); career information and advisory services (educational and training advice); wellbeing services being guidance and non-therapeutic counselling to meet the educational needs of students, children and young people; charitable services (education and training); publication of printed educational materials, statistics, research and information; online publications (non-downloadable); weblog (blog) services (online publication of journals or diaries); provision of information in relation to the above services including online, via an online forum, emails, webinars, weblogs and social media applications; providing the above services online including via an online forum or portal; advisory and consultancy relating to the above
Class 43: organising, arranging and managing of boarding and temporary accommodation facilities for students, children and young people; arranging, conducting and making available school holiday programs for children, students and boarding houses; boarding house accommodation and hospitality services; lodging house accommodation and hospitality services; arranging of accommodation for students; student village services (accommodation); before and after hours school care services for children, students and young people; hospitality services (food and drink); dining hall services for the provision of food and drink; arranging for the provision of food, drink and meals for children, students and young people; café, snack bar and canteen services; takeaway food and drink services; provision of information in relation to the above services including online, via an online forum, emails, webinars, weblogs and social media applications; providing the above services online including via an online forum or portal; advisory and consultancy relating to the above
Annexure B
Class 35: charitable services, namely organising and conducting volunteer programmes and community service projects
Class 39: arranging of excursions; organisation of excursions; arranging of travel; escorting of travellers; provision of travel information; organisation of travel; agency services for arranging tours; arranging of sightseeing tours; arranging of travel tours; conducting sightseeing tours; organisation of sightseeing tours; organisation of tours; provision of tours
Class 41: adult training; advisory services relating to training; arranging group recreational activities; charitable services, namely education and training; children's adventure playground services; children's entertainment services; choir singing; conducting instructional courses; conducting workshops (training); consultancy services relating to training; correspondence courses; cultural activities; design of educational courses, examinations and qualifications; dietary education services; dissemination of educational material; education academy services; education advisory services; education information; education services; educational assessment services; educational consultancy services; educational examination; educational institute services; educational instruction; educational research; educational seminars; educational services; health education; information services relating to education; instruction in dancing; instruction in the use of computers; instruction services; kindergarten services (education or entertainment); kindergartens (nursery schools); management of education services; mentoring (training); nursery schools; organisation of competitions (education or entertainment); organisation of contests (education or entertainment); organisation of exhibitions for cultural or educational purposes; organisation of shows (impresario services); organisation of sporting competitions; organisation of teaching activities; organisation of youth training schemes; organisation of games; organisation of parties; organisation of sporting activities; personal development training; physical education; physical training services; preschool teaching; preschools (education); providing courses of instruction; providing information, including online, about education, training, entertainment, sporting and cultural activities; providing recreation facilities; provision of children's' educational services through play groups; provision of courses of instruction; provision of education courses; provision of education services via an online forum; provision of educational information; provision of facilities for education; provision of information relating to training; provision of training; provision of training courses; provision of tuition; publication of educational materials; school services; teacher training services; teaching; training; training consultancy; training in the care of children; tutoring
Class 42: design of child care facilities
Class 43: child care services; day care services for children; day nurseries; day-care centres (day-nurseries); day-nurseries (creches); provision of day nurseries (other than schools)
Annexure C
Class 9: audio visual multimedia and teaching apparatus and instruments in this class; downloadable educational material including webcasts, podcasts, audio visual files, music files, software programs and mobile or web-based software applications; multimedia material including electronic and recorded publications; interactive education software including compact disks and tapes; training aids (apparatus for teaching people); training apparatus (teaching apparatus for teaching people); electronic publications (downloadable); electronic publications (non-downloadable); bags adapted for laptops, tablets and other mobile technologies~~; software~~
Class 16: ~~educational materials; educational publications; printed matter and printed publications; booklets; books; journals; periodicals; bulletins;~~ articles of paper for stationary purposes; postcards; brochures; catalogues; adhesive stickers; name badges (office requisites); badges made of cardboard; badges made of paper; posters; ~~newsletters; yearbooks; albums; binders, workbooks and work books;~~ calendars and diaries; flags of paper; paper flags; charts; flashcards; handbooks; manuals; magazines; newsletters; written articles; instructional and teaching material; printed policies; printed submissions; printed research papers; printed study guides; printed worksheets; printed examinations and answer sheets; portfolio cases (covers); portfolio cases (folders); portfolios being stationery cases for holding documents; portfolios being stationery cases for holding plans; portfolios made from imitation leather adapted for carrying artwork; portfolios made from plastic adapted for carrying artwork; presentation portfolios (stationery cases); writing and drawing instruments and apparatus in this class including pens, pencils, highlighters, crayons, rulers, marketers, sharpeners, correcting fluids and erasers; articles of stationery
Class 18: bags, including school bags, book bags and sports bags; back packs; shoulder bags; gym bags; satchel bags; luggage; suitcases; conference folders; drawing instrument cases; art portfolios (cases); briefcase-type portfolios; conference portfolios; leather portfolios; portfolio cases (briefcases); portfolios (briefcases); portfolios (other than stationery); business card cases; card cases (notecases); card holders (wallets); luggage identity tags; luggage label holders; umbrellas; umbrella covers
Class 25: apparel (clothing, footwear and head gear), including without limitation, school clothing, school footwear and school head gear for students, children and young people; clothing for sports; clothing adapted for athletic use and training in this class; headwear adapted for athletic use and training (other than helmets) in this class; sports headgear (other than helmets); ties (for wear); blazers; scarfs; gloves; jackets and outerwear in this class; shirts and blouses in this class; knitwear in this class; swimwear in this class; badges for wear in this class including those made of common metal or textile materials
~~Class 28:~~ educational toys, playthings and sporting goods in this class; educational playthings for use in teaching; electronic games (other than software); electronic educational teaching games; electronic educational teaching games for children; tactile educational games (playthings); tactile educational toys (playthings); musical games; musical playthings; musical toys; computer games apparatus; board games in this class; cards and card games for use in teaching; sporting apparatus; sports balls in this class including footballs, rugby balls, soccer balls, basketballs, volleyballs and hand balls; sports training aids and devices; sporting bags (shaped to contain apparatus used in playing sports); sports games; toys for adventure, positive and creative play
Class 35: promotion of education; business management, business administration and office functions; promotion of education, psychology, learning behaviours, behavioural science and factors contributing to social and emotional well being and mental health; promotion of emotional, social and mental health and well being; retail of education and training materials, manuals and curriculum-based instructional and teaching materials including those in printed, audio, video, digital, multimedia, software and electronic format; wholesaling and retailing of goods (by any means); retail services; distribution of goods (not being transport services); demonstration of goods; the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; promoting the commercial and business interests of professional provided by an association for its members; provision of business support or advice by an association for its members; career advisory services (other than education and training advice); career counselling (employment advice and information); career information and advisory services (other than educational and training advice); career planning services; all the foregoing being available or accessible online or via the internet; provision of information in relation to the above services including online, via an online forum, emails, webinars, weblogs and social media applications
Class 36: organising and arranging for charitable donations and collections including in relation to education, training, entertainment, sporting or cultural activities; financial sponsorship of programs and support services to meet the educational needs of others; fundraising services; sponsorship of group recreational activities for the purpose of charitable fundraising; collaborations with third parties for the purpose of charitable fundraising; facilitating access to educational services for others through financial means; organisation of charitable collections; charitable services, namely financial services; leasing of accommodation; provision of housing accommodation; provision of long-term accommodation; rental of accommodation; preparing reports and other business documents in relation to the above services; advisory and consultancy relating to the above services; provision of information in relation to the above services, including online, via an online forum, email, weblogs and social media posts and applications
~~Class 41:~~ educational services including schooling; educational services provided by kindergarten, preparatory, pre-school, primary and secondary schools; provision of educational instruction, tuition, study, tutoring, coaching and training services; provision of distance education; boarding school services; educational programs; providing facilities for educational purposes; rental of sporting facilities, theatres and performance spaces including the provision of services relating to the operation and management of leased spaces; provision of sporting club facilities; social club services (entertainment, sporting and cultural services); provision of educational courses; providing curriculum development services; providing of curriculum based educational resources and support materials; educational consultancy services; provision of education services via an online forum; provision of cultural educational activities including music, drama and dance lessons; production of plays, musical, dance and theatrical performances and shows; provision of early learning (educational) services including in relation to the development of fine motor, verbal, numbers, counting, colours and alphabet skills; provision of education and training services in relation to broad, lateral and critical problem solving skills, psychology, learning behaviours, behavioural science and factors contributing to social and emotional wellbeing and mental health; adventure, nature and inquiry-based learning programs (education and training); organising, conducting and managing events and activities for physical and emotional wellbeing including problem-solving exercises and team-based adventure challenges; physical education; physical health education; instructing and training of outdoor education and recreational activities; conducting and arranging of camps for students; creating and developing educational or training courses and programs including for early learners in relation to the development of fine motor, verbal, numbers, counting, colours and alphabet skills; creating and developing educational or training courses and programs in relation to the development of broad, lateral, creative and critical problem solving skills, psychology including positive psychology, learning behaviours, behavioural science and factors contributing to social and emotional wellbeing and mental health; provision of library services; archive library services; provision of kindergarten, playgroup and pre-school educational services; kindergarten services (education or entertainment); kindergartens (nursery schools); preschool teaching; preschools (education); provision of children's educational services through play groups; arranging, conducting and making available online training sessions, workshops, seminars, courses, lectures, exhibits and conferences; educational research; association services being the provision of training and education to members of an association; organising, conducting and managing events and activities including cultural, social, educational, sporting, charitable and entertainment events; event management services in relation to educational and sporting events; boarding school services; boarding schools; dissemination and publication of educational material including online; providing educational information; providing facilities for sporting activities, recreation and entertainment; training in the care of children; life coaching services (training or education services); lifestyle counselling and consultancy (training); career counselling (training and education advice); career information and advisory services (educational and training advice); wellbeing services being guidance and non-therapeutic counselling to meet the educational needs of students, children and young people; charitable services (education and training); publication of printed educational materials, statistics, research and information; online publications (non-downloadable); weblog (blog) services (online publication of journals or diaries); provision of information in relation to the above services including online, via an online forum, emails, webinars, weblogs and social media applications; providing the above services online including via an online forum or portal; advisory and consultancy relating to the above
Class 43: organising, arranging and managing of boarding and temporary accommodation facilities for students, children and young people; arranging, conducting and making available school holiday programs for children, students and boarding houses; boarding house accommodation ~~and hospitality~~ services; lodging house accommodation ~~and hospitality~~ services; arranging of accommodation for students; student village services (accommodation); before and after hours school care services for children, students and young people; hospitality services (food and drink); dining hall services for the provision of food and drink; arranging for the provision of food, drink and meals for children, students and young people; café, snack bar and canteen services; takeaway food and drink services; provision of information in relation to the above services including online, via an online forum, emails, webinars, weblogs and social media applications; providing the above services online including via an online forum or portal; advisory and consultancy relating to the above
Annexure D
Class 9: bags adapted for laptops, tablets and other mobile technologies
Class 16: articles of paper for stationary purposes; postcards; brochures; catalogues; adhesive stickers; name badges (office requisites); badges made of cardboard; badges made of paper; posters; calendars and diaries; flags of paper; paper flags; portfolio cases (covers); portfolio cases (folders); portfolios being stationery cases for holding documents; portfolios being stationery cases for holding plans; portfolios made from imitation leather adapted for carrying artwork; portfolios made from plastic adapted for carrying artwork; presentation portfolios (stationery cases); writing and drawing instruments and apparatus in this class including pens, pencils, highlighters, crayons, rulers, marketers, sharpeners, correcting fluids and erasers; articles of stationery; drawing instrument cases (fitted)
Class 18: bags, including school bags, book bags and sports bags; back packs; shoulder bags; gym bags; satchel bags; luggage; suitcases; conference folders; drawing instrument cases (not fitted); art portfolios (cases); briefcase-type portfolios; conference portfolios; leather portfolios; portfolio cases (briefcases); portfolios (briefcases); portfolios (other than stationery); business card cases; card cases (notecases); card holders (wallets); luggage identity tags; luggage label holders; umbrellas; umbrella covers
Class 25: apparel (clothing, footwear and head gear), including without limitation, school clothing, school footwear and school head gear for students, children and young people; clothing for sports; clothing adapted for athletic use and training in this class; headwear adapted for athletic use and training (other than helmets) in this class; sports headgear (other than helmets); ties (for wear); blazers; scarfs; gloves; jackets and outerwear in this class; shirts and blouses in this class; knitwear in this class; swimwear in this class; badges for wear in this class made of common metal or textile materials
Class 35: promotion of education; business management, business administration and office functions; promotion of education, psychology, learning behaviours, behavioural science and factors contributing to social and emotional well being and mental health; promotion of emotional, social and mental health and well being; retail of education and training materials, manuals and curriculum-based instructional and teaching materials including those in printed, audio, video, digital, multimedia, software and electronic format; wholesaling and retailing of goods (by any means); retail services; distribution of goods for retail and demonstration advertising purposes (not being transport services); demonstration of goods; the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; promoting the commercial and business interests of professional provided by an association for its members; provision of business support or advice by an association for its members; career advisory services (other than education and training advice); career counselling (employment advice and information); career information and advisory services (other than educational and training advice); career planning services; all the foregoing being available or accessible online or via the internet; provision of information in relation to the above services including online, via an online forum, emails, webinars, weblogs and social media applications
Class 36: organising and arranging for charitable donations and collections including in relation to education, training, entertainment, sporting or cultural activities; financial sponsorship of programs and support services to meet the educational needs of others; fundraising services; sponsorship of group recreational activities for the purpose of charitable fundraising; collaborations with third parties for the purpose of charitable fundraising; facilitating access to educational services for others through financial means; organisation of charitable collections; charitable services, namely financial services; leasing of accommodation; provision of housing accommodation; provision of long-term accommodation; rental of accommodation; preparing reports and other business documents in relation to the above services; advisory and consultancy relating to the above services; provision of information in relation to the above services, including online, via an online forum, email, weblogs and social media posts and applications
Class 43: boarding house accommodation services; lodging house accommodation services; arranging of accommodation for students; student village services (accommodation); provision of information in relation to the above services including online, via an online forum, emails, webinars, weblogs and social media applications; providing the above services online including via an online forum or portal; advisory and consultancy relating to the above

Delegate:	Nicholas Barbey
Representation:	Applicant: Andrew Sykes of counsel instructed by The Lantern Legal Group Pty Ltd trading as Harwood Andrews
Decision:	2024 ATMO 108 Trade Marks Act 1995 (Cth) – s 33 proceeding – s 44 and reg 4.15A of the Trade Marks Regulations 1995 (Cth) considered – grounds for rejection established in relation to a subset of goods and services – evidence considered but not sufficient – opportunity to amend – goods and services amended – trade mark application accepted

[2024] ATMO 108

17 June 2024