Internet Services Australia 1 Pty Ltd v The Net-a-Porter Group Ltd

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by The Net-a-Porter Group Ltd to registration of trade mark application number 2082135 (14, 18, 25) – CONSIDERED – in the name of Internet Services Australia 1 Pty Ltd

Delegate: Bianca Irgang

Representation:
Opponent: Rebecca de Stoop of Counsel instructed by Griffith Hack

Applicant: David Larish of Counsel instructed by Lewis Integrated Legal

Decision: 2024 ATMO 99
Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 41, 43 and 59 pressed – s 41 established and overcome with evidence – no other ground of opposition established.
Background

Internet Services Australia 1 Pty Ltd (‘the Applicant’), filed trade mark application number 2082135 on 16 April 2020 for goods in classes 14, 18 and 25 of the Nice Agreement Concerning the International Classification of Goods and Services. Current details of the application are set out below.
Trade mark:  CONSIDERED (the ‘Trade Mark’)
Trade mark application no: 2082135
Priority Date:  16 April 2020 (the ‘Relevant Date’)
Specification:  Class 14: Imitation jewellery; jewellery; jewellery made of non-precious metal; jewellery made of precious metals; jewellery made of semi-precious materials; precious stones; semi-precious stones; horological instruments; chronometric instruments; finger rings; earrings; cuff links
Class 18: Handbags; carrying bags (other than disposable carrier bags); briefcases; purses; leather wallets; luggage; luggage bags; imitation leather; leather
Class 25: Apparel (clothing, footwear, headgear); belts (clothing); clothing; scarves; swimwear; sportswear; headwear
Endorsements:  Evidence and/or other circumstances provided under subsection 41(4).
Acceptance of the application for possible registration was advertised in the Australian Official Journal of Trade Marks dated 8 April 2022. Subsequently, The Net-a-Porter Group Ltd (‘the Opponent’) filed a Notice of Intention to Oppose registration followed by a Statement of Grounds and Particulars (‘SGP’).
The Applicant then filed its Notice of Intention to Defend. Thereafter, the Opponent and the Applicant filed evidence in accordance with the provisions of the Trade Marks Regulations 1995 (Cth) (‘the Regulations’).
I heard the opposition by teleconference as a delegate of the Registrar of Trade Marks on 20 March 2024. The Opponent was represented by Rebecca de Stoop of Counsel instructed by Griffith Hack. The Applicant was represented by David Larish of Counsel instructed by Lewis Integrated Legal.
Grounds of Opposition
The SGP nominated a number of grounds of opposition under the Trade Marks Act 1995 (Cth) (‘the Act’) and sections 41, 43 and 59 were pursued at the hearing. The Opponent bears the onus of establishing at least one of the grounds of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2]
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[2] Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26] (Gyles J); Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelman JJ).
Evidence
The evidence filed in this matter consists of the following declarations being:
Opponent’s evidence in support
·Declaration of Emma Mortimer, Managing Director of the Opponent, dated 20 September 2022 with exhibits EM-1 to EM-14 (‘Mortimer’)
Applicant’s evidence in answer
·Declaration of Gayle Burchell, Chief Commercial and Sustainability Officer of the Applicant trading as The Iconic, dated 23 December 2022 with annexures GB-1 to GB-4 (‘Burchell’) including confidential annexures.
Section 41
Section 41 provides:
41  Trade mark not distinguishing applicant’s goods or services
             (1)  An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.
             (2)  A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.
             (3)  This subsection applies to a trade mark if:
                     (a)  the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
                     (b)  the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.
             (4)  This subsection applies to a trade mark if:
                     (a)  the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
                     (b)  the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:
                              (i)  the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;
                             (ii)  the use, or intended use, of the trade mark by the applicant;
                            (iii)  any other circumstances.
             (5)  For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.
In the SGP the Opponent particularised the s 41 ground of opposition as follows:
The trade mark the subject of the opposed application (Opposed Mark) is not capable of distinguishing the goods filed by the Applicant (Opposed Goods) from the goods and services of other persons for the purposes of Section 41 of the Trade Marks Act 1995 (Cth) (Act).
The Opposed Mark is not to any extent inherently adapted to distinguish the designated goods within the meaning of Section 41(3)(a) of the Act. Furthermore, the Applicant had not, at the priority date, used the Opposed Mark to such an extent that the Opposed Mark does in fact distinguish within the meaning of Section 41(3)(b) of the Act.
Alternatively, if the Registrar considers that this opposition should be determined pursuant to Section 41(4) of the Act, on the basis that the Opposed Mark is “to some extent, but not sufficiently, inherently adapted to distinguish” the Opposed Mark did not at the priority date and will not distinguish the designated goods, when regard is had to the matters stipulated at Section 41(4)(b) of the Act.
The trade mark consists of CONSIDERED simpliciter. The trade mark directly describes the kind, quality, intended purpose and characteristic of the Opposed Goods, including by indicating goods that are made in a considered manner or which are sustainably or ethically manufactured or sourced. The trade mark is one that other traders are likely in the ordinary course of their business to wish to use (and do use, including for many years before the Applicant’s priority date) in relation
n to their own similar goods and services.
The evidence submitted to IP Australia on 29 March 2022 by the Applicant is not sufficient to prove that the Opposed Mark has developed a secondary meaning as a trade mark for the Applicant such that the average Australian consumer would overlook the primary meaning of the word CONSIDERED when applied to the Opposed Goods or similar goods and services to the Opposed Goods.
If the Hearings Officer finds that the evidence submitted to IP Australia on 29 March 2022 represents use as a trade mark within the meaning of Section 17 of the Act, which we do not admit, the evidence does not show use in connection with the Opposed Goods. We further submit that evidence of use filed does not establish acquired distinctiveness.
The first step, in terms of subsections 41(3) and 41(4) is to consider the extent, if any, to which the Trade Mark is inherently adapted to distinguish the goods of the applicant from the similar goods and/or services of other persons.
The test for inherent adaptation to distinguish is the familiar one in Clark Equipment Co v Registrar of Trade Marks[3] where Kitto J said:
That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner’s goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others. In Registrar of Trade Marks v. W. & G. Du Cros Ltd. (1913) AC 624, at pp 634, 635 Lord Parker of Waddington, having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not “adapted to distinguish” the applicant’s goods, defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. His Lordship said: “The applicant’s chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use.” The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R.J. Lea, Ltd. (1913) 1 Ch 446, at p 463; (1913) 30 RPC 216, at p 227; but to say this is not to treat the question as depending upon some vague notion of public policy: it is to insist that the question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.
[3] Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 [513–14].
The consideration of inherent adaptability to distinguish is something which depends on the nature of the trade mark itself. It is not a test conducted with reference to specific traders who happen to have similar trade marks, but a general question of whether “other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their services” per Justice Kitto in F. H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd.[4]
[4] (1965) 112 CLR 537) [6].
The majority of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited[5] noted the following part of Kitto J’s test:
"in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess"
[5] (2014) 109 IPR 154 [26]-[30] French CJ, Hayne, Grennan and Kiefel JJ.
Considering this passage the majority of the High Court explained that the inherent adaptability of a trade mark consisting of a word (including a foreign word) is to be tested by checking the ordinary meaning (that is the “ordinary signification”) of the word to anyone ordinarily purchasing, consuming or trading in the relevant goods, which may be characterised as “the target audience”[6]. The High Court held that CINQUE STELLE and ORO (Italian words meaning FIVE STARS and GOLD) were not shown to convey a meaning or idea sufficiently tangible to anyone in Australia concerned with coffee goods as to be words having a direct reference to the character or quality of the goods. The High Court compared those trade marks to the trade mark TUB HAPPY in respect of cotton goods, as trade marks which “convey an allusive or metaphorical meaning in respect of certain goods” rather than directly describing those goods[7].
[6] Ibid [28], [30].
[7] Ibid [73].
The Applicant has argued:
In the context of the Designated Goods, the ordinary signification of the Opposed Mark accords with this ordinary meaning. The Opposed Mark does no more than suggest that something about the Designated Goods has been thought about carefully. It does not provide any specificity as to what has been thought about, or how that has occurred, or the upshot of that thought process. It follows that the ordinary signification of the Opposed Mark is allusive, and the Opposed Mark is inherently adapted to distinguish the Designated Goods.
I disagree with the Applicant. The term CONSIDERED is defined in the Macquarie Dictionary as:
verb (t) 1.  to contemplate mentally; meditate or reflect on.
2.  to regard as or deem to be: I consider the examination is justified.
3.  to think; suppose.
4.  to make allowance for.
5.  to pay attention to; regard: he never considers others.
6.  to regard with consideration or respect; hold in honour; respect.
7.  to think about (a position, purchase, etc.) with a view to accepting or buying.
8.  to view attentively, or scrutinise.
–verb (i) 9.  to think deliberately or carefully; reflect.
I am satisfied that the Trade Mark has numerous definitions, some of which have no applicability to the Applicant’s goods but some of which do have applicability. When considering the ordinary signification of a word context is crucial. I consider it is appropriate to focus on the definition of the term in the manner which is most relevant to the consumer of the Applicant’s goods. Namely, that the goods of the Applicant are those which have been viewed attentively and/or scrutinised for particular characteristics and/or thought about carefully. Accordingly, the ordinary signification of the Trade Mark in relation to the Applicant’s clothing and accessory goods is that they have been thought about carefully and/or viewed attentively and/or scrutinised for particular characteristics.
Having determined the ordinary signification, I turn to whether other traders might legitimately desire to use the Trade Mark, or something so nearly resembling it for its ordinary signification in respect of their own similar goods.
The Trade Mark has an ordinary meaning which indicates the Applicant’s clothing, bags and jewellery goods is that they have been thought about carefully and/or viewed attentively and/or scrutinised for particular characteristics. It strikes me as a word which other traders, without any improper motive, would desire to use for its ordinary signification in connection with their own clothing, bags and jewellery goods.
I am satisfied that the ground of opposition under section 41(4)(a) of the Act with regards to all the goods in the application has been established. I acknowledge that the Trade Mark has a an element of distinctiveness to it and this provides the Trade Mark with some inherent adaptation to distinguish the designated goods from those of other traders which is why I am satisfied that a ground for rejection exists under section 41(4).
However, the establishing of a section 41(4) ground of opposition need not be fatal to the application, I must also be satisfied that the Trade Mark does not and will not distinguish the designated goods as being those of the Applicant having regard to the factors set out in section 41(4)(b). Accordingly, I will now consider the Applicant’s evidence of use, intended use and any other circumstances that may be relevant in the consideration.
Burchell states the Applicant trades as THE ICONIC, which enjoys an extremely high profile in the Australian and New Zealand markets and is recognized as the leading online fashion, beauty, sports and homewares retailer in Australia and New Zealand. Accordingly, Ms Burchell provides details that THE ICONIC was launched in Australia and New Zealand in 2011 and quickly developed a strong reputation among consumers in Australia for its retailing services and the range of goods and services which it offers, including those that are covered by the Trade Mark.
The Applicant has won numerous awards including:
(a) 'Best New Online Retailer' at the 2012 Online Retailer Industry Awards (ORIAs);
(b) 'Best Social Commerce' at the 2013 ORIAs;
(c) 'Best Mobile Commerce Site/App' at the 2014 ORIAs; and
(d) 'Best Fashion Retailer' and 'Best Online Only Retailer' at the Power Retail All Star Bash 2020 Awards.
Ms Burchell states the Applicant launched the website (Website) in Australia in late 2011 which has a very significant following according to the table set out in Confidential Exhibit GB-3 accompanying Burchell. Prior to the Relevant Date, the Applicant had a large social media presence in Australia across various social media platforms including Facebook, Instagram, Pinterest and YouTube[8]. Additionally, in 2014, the Applicant launched its mobile app for IOS and Android devices facilitating the browsing and purchasing of various goods and services, including after the launch of the Trade Mark, the Goods under or by reference to the Trade Mark. Prior to April 2020, the App had been downloaded a significant number of times by customers in Australia[9].
[8] Exhibit GB-4 accompanying Burchell.
[9] Confidential Exhibit GB-1 accompanying Burchell.
Ms Burchell attests that the Applicant conducted extensive market research prior to launching the Trade Mark which did not reveal any use of the Trade Mark by other traders in Australia or elsewhere in the world. According to Burchell, the Trade Mark was adopted by the Applicant following a cross-functional review by the Applicant’s Sustainability, Legal, Marketing and Commercial teams, CONSIDERED was selected as the most suitable trade mark for the Applicant’s Edit that spans across multiple categories (now seven: Sustainable Materials, Eco-production, Fair production, Animal Friendly, Community Engagement, Clean Beauty and Circular by Design) and customers’ sustainability personal values.
Ms Burchell states the Applicant has been using the Trade Mark since at least 2018, when it used the Mark in an Electronic Direct Mail (EDM) marketing initiative to promote and sell its products. This is actually corroborated in Mortimer and its accompanying exhibit EM-5 which contains a copy of the evidence filed by the Applicant during the examination process which includes the declaration of Rebekka Carey-Smith (‘Carey-Smith’). This evidence reiterates and supports much of the Burchell evidence concerning the adoption of the Trade Mark and its use.
According to Carey-Smith and Burchell, the Applicant formally launched its Trade Mark in April 2019. Copies of press releases issued by the Applicant and its parent company, Global Fashion Group S.A. from before the Relevant Date are at pages 42 to 48 of Ms Mortimer’s declaration. The press release concerning the launch of the Trade Mark range of goods states that the Trade Mark was applied to 6,400 products in the Applicant’s retail store and I note from the evidence that these goods include clothing, bag, jewellery and leather goods. A consideration of the evidence makes it highly likely that the Trade Mark was applied to all the goods covered in the application. Copies of third party media articles regarding the launch are also present in the Opponent’s evidence[10] as well as in Exhibit GB-3 accompanying Burchell.
[10] Pages 454 to 525 of Mortimer.

Since January 2019 the Applicant has derived significant revenue from the sale of its goods provided under or by reference to the Trade Mark in Australia and New Zealand. Confidential Exhibit GB-4 accompanying Burchell contains a table setting out the number of units and value of Goods sold under the Trade Mark in Australia and New Zealand and in total. These numbers are very significant.
The Opponent has argued in their written submissions:
Judging from a review of the Burchell Declaration and the Carey-Smith Declaration, it is clear that the Applicant has not used CONSIDERED on goods. If anything, the CONSIDERED has only been used with services. The Trade Mark has not been applied to goods as stitching or as a brand, and has not been used on swing tags or other onproduct branding. There is no evidence demonstrating use of the Trade Mark on product packaging. The only use of CONSIDERED has been online, such as on the Applicant’s website to characterise goods with sustainable characteristics. CONSIDERED has not been used as a badge of origin for goods. In this regard, it is worthwhile bearing in mind that the primary business activity of the Applicant is the online marketing and retail of third-party goods. The volume of goods branded as THE ICONIC is negligible, and the Applicant does not market or sell goods branded CONSIDERED. If a consumer is reviewing or purchasing goods on the Applicant’s website, the goods the consumer purchases and received are third-party goods branded with third-party trade marks, such as LEVI’S, NORTH FACE, NIKE or R.M. WILLIAMS.
In considering the totality of the Applicant’s evidence and the evidence in Exhibit EM-5 accompanying Mortimer, I am satisfied that the Trade Mark attaches to both goods and services given the way the Applicant has used it. I note from exhibit EM-5 accompanying Mortimer that a print out from the Applicant’s website states:
Our Considered edit consists of products made using a material or process that is better for humans, animals or the environment, or made by a brand that is positively contributing to the community around us. Being included in our Considered edit means they have at least one sustainability credential, highlighted on the product page.
The Trade Mark is being used through the Applicant’s online retail store to denote a broad range of various goods as having some quality of being environmentally friendly. The Applicant’s initial act of having ‘CONSIDERED’ the goods and catagorising them into a particular range that it retails is a service. Then the goods may be purchased by Australian consumers after the Applicant has attached the digital ‘CONSIDERED’ label to them. While it is not a physical swing tag, it is a digital tag that has been attached by the Applicant to a broad range of goods within the Applicant’s online retail store. This digital tag makes the goods more attractive for purchase to an environmentally conscious consumer. It is acting as a badge of origin for the Applicant, who has gone through the process of curating the goods and then attaching its digital label bearing the Trade Mark. As the Full Court quoted with approval in Halal Certification Authority Pty Limited v Flujo Sanguineo Holdings Pty Limited[11]:
“The “branding function”… can be carried out in different places… with different degrees of strength and subtlety.”
[11] [2023] FCAFC 175 [84].
Many of the examples in the above referenced evidence show use of various trade marks in relatively close proximity to the Trade Mark. To the extent that the Applicant has used composite phrases such as “CONSIDERED BY THE ICONIC”, this still involves use of the Trade Mark. It is “well established that use of a mark that is a component of a larger composite mark… can constitute use of a trade mark”[12].
[12] Bed Bath ‘N’ Table Pty Ltd v Global Retail Brands Australia Pty Ltd [2023] FCA 1587 [389].
Additionally, the financial figures provided by the Applicant in relation to the goods sold under the Trade Mark are very significant. While I accept a portion of these sales is also in regards to New Zealand, I conclude that the level of sales is such that should I only attribute 75% of those sales to Australian consumers, it would still be very significant. Having regard to the extent to which the Trade Mark is inherently adapted to distinguish, combined with the totality of the evidence of use provided by the Applicant, I am satisfied that the Trade Mark does distinguish its goods from those of other traders.
Section 43
Section 43 provides:
43  Trade mark likely to deceive or cause confusion
                   An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
In the SGP the Opponent particularises the s 43 ground of opposition as follows:
The Opposed Mark is a common and non-distinctive word frequently used to describe a sustainable and/or ethically sourced collection in the retail context. Use of the Opposed Mark indicates that the designated goods are ethically and/or sustainably sourced. Use of the trade mark would therefore deceive or cause confusion, as consumers encountering the Opposed Mark on or in relation to the Opposed Goods will naturally and reasonably expect the goods to be ethical or sustainably derived and will be deceived or confused if the goods do not possess these characteristics.
To establish a ground of opposition under s 43, there must be an inherent connotation within the trade mark itself. Justice Gyles in Pfizer Products Inc v Karam commented:
‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question …[13]
[13] [2006] FCA 1663, [53].
In Winton Shire Council v Lomas, Spender J noted:
Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60.[14]
[14] [2002] FCA 288, [19].
The Opponent submits that the connotations the Trade Mark has are:
The goods covered by Trade Mark Application No. 2082135 are not limited to goods sourced or manufactured ethically or sustainably. It must follow that if the Trade Mark is registered, there will naturally be a risk that the Trade Mark could be used on goods which do not satisfy the connotations or characteristics implied by the Trade Mark, and that such use would deceive or confuse consumers. The Trade Mark Application should therefore be rejected on the basis of the section 43 ground of opposition.
In order for s 43 to operate to prevent the registration of the Trade Mark, the requisite confusion or deception must arise from a connotation within the Trade Mark itself rather than as a result of any reputation that the Opponent may be able to demonstrate in another mark.
In the present case, I agree with the Applicant that just that trade marks containing descriptive matter would not necessarily attract a s 43 objection. I am satisfied that there is no evidence before me sufficient to establish there is connotation in the Trade Mark which would cause confusion or deception.
I am not satisfied that the Trade Mark is likely to deceive or cause confusion because of any connotation in the Trade Mark. The ground of opposition under s 43 is not established.
Section 59
In the SGP the Opponent particularised this ground of opposition as follows:
The Applicant has no intention to use the applied-for trade mark as a trade mark in respect of the Opposed Goods. The Opposed Mark is only used in a descriptive manner to promote sale of goods and is not used as a badge of origin for the goods.
Section 59 of the Act is reproduced below:
Applicant not intending to use trade mark
The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia, or
(b) to assign the trade mark to a body corporate for use by the body Corporate in Australia; in relation to the goods and/or services specified in the application.
There is a presumption of intention to use which arises from an Applicant’s act of filing an application for registration.[15] The onus of establishing this ground remains with an Opponent unless, or until, it has established a prima facie case of the applicant’s lack of intention, at which point the onus moves to the Applicant for rebuttal.[16] The intention to use a trade mark must exist at the date of application;[17] consequently, it is incumbent upon an opponent to establish that the applicant did not intend to use the trade mark at the time of filing. The relevant intention requires that an Applicant must have ‘a real intention to use, not a mere problematic intention, not an uncertain or indeterminate possibility, but it means a resolve or settled purpose which has been reached at the time when the mark is to be registered’.[18] There must be ‘a real and definite intention’ to use the mark publicly as a trade mark in connection with the services applied for.[19]
[15] Aston v Harlee Manufacturing Co (1960) 103 CLR 391, 401 (Fullagar J) (‘Aston’).
[16] Ibid [163].
[17] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [74] (Keane CJ, Stone and Jagot JJ).
[18] Re Ducker’s Trade Mark (1928) 45 RPC 397, 402.
[19] Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100, [158] (Jacobson J).
Where the specification of goods and services in an application extends well beyond the goods or services in respect of which the applicant has previously used the mark, and the Applicant has come nowhere near to launching the mark in relation to such goods or services, that is
indicative of an approach to registration that is not aligned with genuine intention, but rather to a desire to cover a field beyond the range of expected or intended use. Such an approach diminishes the benefit of any imputation arising from the fact of registration itself in the sense contemplated in Aston.[20]
[20] Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808, [152] (Burley J) (‘Goodman Fielder’).
The Opponent submits that an intention to use a trade mark the subject of a trade mark application must exist at the priority date, and that the intention must relate to the use of the trade mark (1) in Australia and (2) for the goods specified in the application.
The Opponent states:
The Applicant was put on notice by the Opponent’s Statement of Grounds and Particulars that its intention to use the Trade Mark for the goods covered by the Trade Mark Application was in issue. The Applicant has nonetheless not been able to introduce evidence of use for goods or evidence of an intention to use the Trade Mark for goods, either in Australia or in other countries. It is clear that if CONSIDERED has been used as a trade mark, then use has only been in respect of retail services. The Applicant does not manufacture, market or sell CONSIDERED jewellery, CONSIDERED bags or CONSIDERED clothing, and has not sought to prove that it does so or intends to do so. Consumers purchasing goods from the website operating under THE ICONIC brand purchase third party goods, such as NIKE goods, and cannot purchase CONSIDERED goods.
While the definition of “use of a trade mark in relation to goods” in section 7(4) of the Act may generally be thought to be somewhat broad, as “use” includes use “in physical or other relation to, the goods”, the Opponent submits that use of a trade mark for purposes such as allowing customers to narrow down the range of goods viewed online, such as to limit to sustainably-sourced goods or organic goods, should not be deemed to be use in relation to goods or on goods. This is especially so in this instance, where the Applicant has clearly not demonstrated any intention to use the Trade Mark on goods.
The Opponent further submits that the photograph of a gift bag introduced at Exhibit GB-2 of the Burchell Declaration does not amount to use of the Trade Mark for Class 18 goods or other goods. Providing promotional items as a reward for the purchase of goods or to encourage the sale of goods should not be considered to be use as a trade mark for the promotional goods. Further, the trade mark used in that instance is a different composite trade mark, which features THE ICONIC trade mark.
When I consider the Opponent’s evidence, there is nothing which demonstrates that the Applicant could not or did not provide clothing, bag, jewellery and leather goods bearing the Trade Mark. While it is clear from the evidence that the Applicant does use the Trade Mark as indicating a particular range of carefully scrutinized clothing, bag, jewellery and leather goods, the evidence does not demonstrate that the Applicant filed the application for the Trade Mark merely for speculative or defensive reasons.
To summarise, the Opponent’s submissions focus on whether or not the Trade Mark has been directly/physically applied to the goods or their packaging and the lack of that rather than a lack of intention to use to the Trade Mark. I have already established in the preceding paragraphs under the heading of s 41 that the Applicant has used its Trade Mark on the relevant goods. The evidence relied upon by the Opponent, and its submissions, rise no higher than mere allegations of there being a lack of intention to use the Trade Mark and the Opponent asserting the use demonstrated is lack of use to date on the applied for goods.
The evidence and the circumstances relied upon by the Opponent do not establish a prima facie case that the Applicant lacked the requisite intention to use the Trade Mark for the Relevant Goods as at the filing date. Consequently, the onus has not shifted to the Applicant.
Accordingly, the s 59 ground of opposition has not been established.
Decision
Section 55 of the Act provides:
55 Decision
(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.
Note: For limitations see section 6.
None of the grounds of opposition pressed by the Opponent have ultimately been successful. The Trade Mark may accordingly proceed to registration one month from the date of this decision. If the Registrar has been served with notice of appeal before that time, I direct that registration of the Trade Mark shall not occur until the appeal has been decided or discontinued.
Costs
It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Opponent under section 221 of the Act in terms of Schedule 8 of the Regulations.
Bianca Irgang
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
31 May 2024

[2024] ATMO 99

31 May 2024