George Saragas v Shane Gregory

[2025] ATMO 114

TRADE MARKS ACT 1995

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

Re:Opposition by George Saragas to registration of trade mark application number 2218184 (class 41) – BEYOND THE ULTIMATE 40+ TRANSFORMATION - in the name of Shane Gregory

Delegate:

Tracey Berger

Representation:

Opponent: Self-represented

Applicant: The TradeMark Co

Decision:

2025 ATMO 114

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

Background

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by George Saragas (‘Opponent’) to registration of the trade mark the subject of the application detailed below  in the name of Shane Gregory (‘Applicant’):

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

Number:

2218148 (‘Application’)

Trade Mark:

BEYOND THE ULTIMATE 40+ TRANSFORMATION

(‘Trade Mark’)

Filing Date:

13 October 2021 (‘Relevant Date’)

Services:

Class 41:  Health and fitness education; instruction in physical fitness; group fitness instruction; dietary education services; health and fitness coaching services; physical health education; fitness and exercise clinics, clubs and salons; health club services (exercise); advisory services relating to training; personal trainer services; provision of information relating to weight loss; instruction in health and wellbeing; life coaching services (training or education services); lifestyle counselling and consultancy (training); mentoring (education and training); personal development training; publishing services; publication of books; publication of periodicals; publication of electronic books and journals online; provision of educational information; publication of educational texts, educational materials, journals, books, magazines, and manuals; design of education and training courses; weblog (blog) services (online publication of journals or diaries); writing for others (commissioned and custom writing); provision of education services via an online forum; electronic publication of information on a wide range of topics, including online and over a global computer network; publication of multimedia material online; providing digital video, audio and multimedia entertainment publishing services; publishing by electronic means; educational services provided via a chat room/forum; production of audio recordings; production of audio/visual presentations; arranging of events, exhibitions, seminars, activities and competitions for educational purposes; conducting training seminars and workshops; social club services (entertainment, sporting and cultural services)

(‘Applicant’s Services’)

2. The Application was examined as required under s 33 of the Act and was advertised as accepted for possible registration on 14 March 2022. On 1 April 2022 the Opponent filed both a Notice of Intention to Oppose and a Statement of Grounds and Particulars (‘SGP’), which was subsequently rectified. The Applicant filed a Notice of Intention to Defend the opposition on 12 July 2022.

3. The parties then had the opportunity to file evidence in accordance with the Regulations. Neither party filed any evidence in this matter.

4.     Once the time for filing evidence had concluded, the parties were able to request a hearing but neither party asked to be heard.  The Applicant requested a decision without a hearing.  I am a delegate of the Registrar of Trade Marks and this matter has been allocated to me to determine.  I do so based on the aforementioned documents.

Grounds, onus and Relevant Date

5.     The SGP nominated grounds of opposition under ss 44 and 58A.

6.     The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[2] The standard of proof is the ordinary civil standard on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is the Relevant Date.

Discussion

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

[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

Section 44

7.     Section 44 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.

1. In its SGP, the Opponent nominated its registration detailed below as the basis for this ground of opposition:

Number:

2048655

Trade Mark:

Over 40s Transformation Centre  (‘Opponent’s Mark’)

Filing Date:

4 November 2019

Services:

Class 41: Health club services (health and fitness training); Boot camp services (fitness training); Conducting fitness classes; Operation of physical fitness centres; Personal trainer services (fitness training); Physical fitness training services

(‘Opponent’s Services’)

1. To successfully oppose the Application pursuant to s 44, the Opponent must establish each of the following requirements:

   ·the Opponent’s Mark has a priority date which is earlier than the Relevant Date and is held in a name other than that of the Applicant (‘first requirement’);

   ·the Applicant’s Services are similar to the Opponent’s Services (‘second requirement’).

   ·the Trade Mark is substantially identical with or deceptively similar to the Opponent’s Mark (‘third requirement’).

   10.     The Opponent’s Mark satisfies the first requirement in that it has an earlier priority date of 4 November 2019 and is in the name of a person other than the Applicant.

   Similar Services

   11.     The second requirement will be satisfied if the Applicant’s Services are similar to the Opponent’s Services.  Section 14 provides that two sets of services are similar if they are the same or of the same description.   Whether two sets of services are of the same description depends on whether the services belong to the same or different trades, as determined through consideration of the following factors:[4]

   ·the nature and characteristic of the services;

   • the origin of the services;
   • the purpose of the services;
   • whether the services are usually provided by one and the same business or person;
   • whether the services are provided from the same sources, in the same area or district, during the same season or in relation to the same related goods or services and to the same class or classes of customers; and
   • whether the services are regarded as the same by those who provide them.[5]

   [4] Re Jellinek (1946) 63 RPC 59, 64 (Romer J).

   [5] Trade Marks Office Manual of Practice and Procedure, [26.4.2].

   12.     Both the Applicant’s Services and Opponent’s Services include various health and fitness services which are identical or at least services of the same description.  However, a number of other services covered by the Application are different to the Opponent’s Services including for example, mentoring (education and training), publication services, and social club services.  Many of the services claimed in the Application are not limited to the fields of health and fitness and hence would cover services that are unrelated to the Opponent’s Services.  It is sufficient for the purposes of this decision that I have found some of the Applicant’s Services to be similar to those of the Opponent and for reasons which will be apparent below, I need not determine this question with any further specificity.

   13.     Having found that some of the Applicant’s Services are similar to the Opponent’s Services, the determinative question for this ground of opposition is whether the Trade Mark is substantially identical or deceptively similar to the Opponent’s Mark.

   Substantially identical or deceptively similar

   14.     The test for determining whether trade marks are substantially identical was articulated 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.[6]

   [6] [1963] HCA 66, [12].

   15.     The marks to be compared in the present case are:

Trade Mark	Opponent’s Mark
BEYOND THE ULTIMATE 40+ TRANSFORMATION	Over 40s Transformation Centre

16.     On a side by side comparison, it is apparent that the only common elements between the two marks are the numeral 40 and word TRANSFORMATION.  The marks are otherwise completely different in their composition.  The differences between the Trade Mark and Opponent’s Mark are obvious at first glance and as such there is not a total impression of resemblance.  The Trade Mark is not substantially identical to the Opponent’s Mark and I move to the question of whether the marks are deceptively similar.

17. 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.

18.     The comparison of the marks is no longer to be conducted side by side but rather involves a consideration of 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].[7]

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

19.     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.[8]

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

20.     This comparison of the mark is to be made by reference to the standards of ordinary people ‘who should not be credited with high perception or habitual caution’ and in the context of the business and the way in which the particular class of services are provided.[9]  A likelihood of confusion will exist if there ‘is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source’.[10]  There must be a real tangible danger of confusion; a possibility of confusion is not sufficient.[11]  It is not necessary that the confusion persist up to, or contribute to inducing, a sale.[12]  The use to be considered is notional use.[13]

[9] Australian Woollen Mills v F S Walton and Co Ltd (‘Australian Woollen Mills’) [1937] HCA 51; (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ).

[10] Ibid.

[11] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365; [1999] FCA 1020 [50] (French J).

[12] TiVo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 [105] (Dodds-Streeton J).

[13] Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43; (1973) 129 CLR 353, 362 (Mason J).

21.     It may be relevant that an element of the mark is descriptive.  This does not preclude a finding of deceptive similarity,[14] but the Full Court noted in Combe International Ltd v Dr August Wolff GmbH & Co. KG Arzneimittel:

It is correct to observe, as his Honour did, that an element of a trade mark that is descriptive may not tend to cause confusion about the source of a product because it calls to mind the nature of the product, rather than its trade source. However, as we have noted, each case must be considered on the basis of the marks in question and the facts established. The authorities do not say that where there is a common descriptive element in marks that component is to be ignored for the purposes of comparison. In this regard the observation made by Lord Evershed (Asquith and Jenkins LJJ agreeing) in Broadhead’s Application (at 215.1-5), to the effect that even where there is a common denominator one must be careful not to treat words as though the common part was not there at all, is apposite.[15]

[14] Lift Shop P/L v Easy Living Home Elevators P/L [2014] FCAFC 75, [64] (Besanko, Yates and Mortimer JJ).

[15] [2021] FCAFC 8, [78] (McKerracher, Gleeson and Burley JJ).

22.     In this case, the overall appearance and sound of the two marks are distinct.  The Trade Mark has a different structure and length to the Opponent’s Mark.  Further, the words ‘BEYOND THE ULTIMATE’ at the beginning of the Trade Mark are distinctive and memorable whereas in the context of fitness and health services, the common elements are descriptive of services aimed at individuals over forty who wish to ‘transform’ their health, fitness or body.  The commonality of the numeral 40 and word ‘TRANSFORMATION’ in the marks is unlikely to lead consumers to assume that the services offered under the respective marks are related, as opposed to being separate businesses offering similar services.  While the two marks convey a somewhat similar idea, the Trade Mark suggests a superior transformation experience whereas the Opponent’s Mark implies a specialised centre.  In my opinion, given the overall differences in the marks, there is not a real tangible danger that consumers, even those with an imperfect recollection, will be deceived or confused.

23.     I am not satisfied that the Trade Mark is deceptively similar to the Opponent’s Mark and accordingly, the s 44 ground of opposition is unsuccessful.

Section 58A

24.     Section 58A applies only where a trade mark has been accepted for registration under the provisions of s 44(4) or a similar provision of the regulations made under Part 17A.

25.     The Trade Mark has not been accepted under s 44(4) or similar provision.  Further, the Applicant has not filed any evidence of use to persuade me that I should apply the provisions of s 44(4).  Therefore, the s 58A ground of opposition is not available in this case.

Decision

26. 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.

27.     The Opponent has failed to establish either of the grounds of opposition nominated in the SGP.  Trade mark application number 2218184 may proceed to registration not less than one month from the date of this decision. 

28.    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.

29. In its Notice of Intention to Defend, the Applicant requested an award of costs. As costs generally follow the event, I award costs against the Opponent under s 221 in the applicable amounts set out in Schedule 8 of the Regulations.

Tracey Berger

Hearing Officer

Delegate of the Registrar of Trade Marks

10 June 2025