Jeff Knox v The Australian Simmental Breeders Association Ltd
[2025] ATMO 175
•2 September 2025
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Jeff Knox to registration of trade mark application 2396773 (29, 31 42) – SIMMENTAL SIMBEEF (Figurative) and 2396774 (16) – SIMMENTAL AUSTRALIA (Figurative)– each in the name of The Australian Simmental Breeders Association Ltd
Delegate:
Nicholas Smith
Representation:
Opponent: Fraser Old of Fraser Old & Sohn
Applicant: Written Submissions ONEQUITY PTY LTD
Decision:
2025 ATMO 175
Trade Marks Act 1995 (Cth) - section 52 oppositions: ss 41, 42(b) and 43 considered – none established – trade marks to proceed to registration
Background
This decision concerns an opposition brought by Jeff Knox (‘Opponent’) to the registration of the trade marks (collectively ‘Trade Marks’) which are the subject of the applications detailed below in the name of The Australian Simmental Breeders Association Ltd (‘Applicant’):
Application Number:
2396773
Filing Date[1]:
16 October 2023
Goods and Services:
Class 29: Beef; Beef products
Class 42: Live animals; Livestock fattening preparations
Class 45: Genetic research; Livestock assessment(‘2396773 Goods and Services’)
Trade Mark:
(‘2396773 Mark’)
[1] Also known in this decision as the ‘relevant date’.
Application Number:
2396774
Filing Date[2]:
16 October 2023
Goods and Services:
Class 16: Boxes for packaging (cardboard); Brochures
(‘2396774 Goods’)
Trade Mark:
(‘2396774 Mark’)
[2] Also known in this decision as the ‘relevant date’.
Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively. In this decision where I refer to the ‘Applicant’s Goods and Services’ I am referring to the 2396773 Goods and Services and the 2396774 Goods collectively.
Following the advertisement of the applications’ acceptance for possible registration, the Opponent filed Notices of Intention to Oppose the registration followed by Statements of Grounds and Particulars (‘SGP’). Each SGP raised grounds of opposition under ss 41, 42(b) and 43. The Applicant filed a Notice of Intention to Defend each opposition on 29 April 2024.
Evidence
The parties filed the same evidence in respect of both marks, with the evidence being set out below:
Declarant and Position
Date
Annexures or Exhibits
Evidence in support
Jeff Knox, Opponent (‘Smith declaration’)
5 July 2024
Fraser Patison Old, patent attorney with Fraser Old & Sohn (‘Old declaration’)
5 July 2024
FPO1 to FPO 9
Evidence in answer
N/A (None Filed)
Evidence in reply
N/A (None Filed)
Once the time allowed for filing evidence had ended, the parties were given an opportunity to request an oral hearing or a hearing by written submissions. On 13 February 2025 the Opponent requested an oral hearing. The matter was set down for a hearing on 1 July 2025 and the matter was allocated to me. In line with usual practice, a letter was sent to the parties on 14 May 2025 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing. The Applicant indicated that they only wished to file written submissions and following payment of the required fee filed written submissions on 5 March 2025 (‘Applicant’s Submissions’). The Opponent filed written submissions on 20 May 2025 (‘Opponent’s Submissions’). At the hearing Fraser Old represented the Opponent.
I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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.
In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs and any oral submissions made by the parties.
The Opponent
The Opponent is a grazier who has been involved in the Australian beef industry for approximately 40 years.
The relevant claims/statements in the Knox declaration can be summarised as follows:
· Beef cattle in Australia come in various breeds including the Simmental breed, which is a European breed identified by its light brown colour with white head and white patches of variable shape. Simmental cattle are not black.
· Trade Mark No. 2396773 contains the word SIMMENTAL, indicating that it is to be used for beef from the Simmental breed. However, the goods for which the mark is sought to be registered are not restricted to beef from Simmental cattle. Moreover, the illustration of the cow appears to depict that the cow has a black hide and that the cow’s head is that of a Black Baldy cow and thus is not that of a cow from the Simmental breed. The 2396773 Mark is thus misleading and deceptive.
· Trade Mark No. 2396774 contains the word SIMMENTAL, indicating that it is to be used for beef from the Simmental breed. Like the previous mark the goods for which this mark is sought to be registered are not restricted to beef from Simmental cattle. Moreover, the illustration of the cow indicates that the cow is likely a Black Baldy cow and thus is not that of a cow from the Simmental breed. The 2396774 Mark is misleading and deceptive.
The Old declaration annexes a series of documents indicating the difference between various breeds of cattle and in particular that Simmental cattle are prominently brown though they have a face that is predominantly white with tan marks around the eyes. The declaration also annexes various brochures provided by the Applicant where the declarant states that the Applicant is using the terms Simmental to describe cattle that are not from the Simmental breed, being either unrelated to the Simmental breed or cross-bred. The Old declaration also repeats the statements made in the Knox declaration about the nature of the Simmental breed and the misleading nature of the Trade Marks.
The Applicant
The Applicant has not filed any evidence and as such I have no information about it other than what is set out on the Register.
Grounds of Opposition, Onus and Standard of Proof
As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 41, 42(b) and 43. To successfully oppose the application the Opponent needs to establish one of the nominated grounds.
The onus of proof in an opposition rests upon the Opponent.[3] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[4] The date at which the rights of the parties are to be determined is the relevant date.[5]
[3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[4] Following Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
[5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [4] (Kitto J) (‘Southern Cross’), see also s 29(1) Trade Marks Act 1995 (Cth).
Discussion
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.
Note: For goods of a person and services of a person see section 6.
(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.
Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a)the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b)the time of production of goods or of the rendering of services.
Note 2: For goods of a person and services of a person see section 6.
Note 3: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).
(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.
Note 1: For applicant and predecessor in title see section 6.
Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).
With respect to s 41 it is appropriate to discuss the ‘presumption of registrability’. As was explained by the Hearing Officer in Unilever plc v Beiersdorf AG with respect to s 33:
Section 33 of the Act states that the Registrar must accept an application unless satisfied that it has not been made in accordance with the Act, (which is not relevant here), or that there are grounds under the Act for rejecting it. In this regard s 33 embodies what is often referred to as a ‘presumption of registrability.’ As was explained in Blount Inc v Registrar of Trade Marks[6] (‘Oregon’), however, prior to the [Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Amending Act”)] ss 41(5) and (6) as they then were, (which essentially correspond to current ss 41(4) and (3) respectively), effectively shifted the onus onto an applicant. Section 41 was thus amended to address that inconsistency, with the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (‘the EM’) stating at page 146:
[6] [1998] FCA 440 (1998); 40 IPR 498, 505 (Branson J).
The changes are intended to clarify that the presumption of registrability, as provided for in section 33, does apply to section 41. … The intention is that, if the Registrar is equally unsure of whether the mark is or is not capable of distinguishing, that doubt should be resolved in the applicant’s favour.
The Amending Act was not however intended to alter the relevant standard for registrability. In this regard the EM goes on to state (also at page 146):
Note that while the amendment [to s 41] ensures that the onus rests with the Registrar during examination, it is not intended to require that the trade mark should clearly not be registered. Rather, as with other grounds it is intended that the delegate need only be satisfied that a ground exists on the balance of probabilities.
The amendments are not meant to alter the key concepts of “inherently adapted to distinguish”, “capable of distinguishing” and “does or will distinguish”. The judicial tests for these terms are settled and the amendments are not intended to change the legal concept of a trade mark distinguishing the applicant’s goods or services from others.
Branson J’s analysis at 504 in Oregon of the operation of s 41 as it stood prior to the Amending Act, as paraphrased below, also remains apt in relation to the amended section:
Having taken [the extent of inherent adaptation] into account, it is theoretically open to [me] to conclude:
(a) that the [Trade Mark] is inherently adapted to distinguish the [Applicant’s Services] from the goods or services of other persons and capable, on that basis alone, of so distinguishing the [Applicant’s Services]; [that is, neither s 41(3) nor s 41(4) applies] or
(b) that the [Trade Mark] is not to any extent inherently adapted to distinguish the [Applicant’s Services] from the goods or services of other persons; [that is, s 41(3) applies] or
(c) that the [Trade Mark] is to some extent inherently adapted to distinguish the [Claimed Goods] from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the [Applicant’s Services]. [that is, s 41(4) applies][7]
[7] [2017] ATMO 25, [38]-[40] (Hearing Officer Kirov).
In the present case the Applicant has provided no evidence of use of the Trade Mark. As such the ground for rejection under s 41 will apply if the Trade Mark is to some extent, but not sufficiently, inherently adapted to distinguish the Applicant’s Goods from the goods of other persons, being the test in s 41(4). It is not necessary to conclude that the Trade Mark is not to any extent inherently adapted to distinguish, being the test in s 41(3).
In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd, the Full Court summarised the principles in respect of s 41 as follows:
(1) In deciding whether or not a trade mark is capable of distinguishing the designated services from the service of others, the first question is the extent to which the trade mark is inherently adapted to distinguish the designated services from those of others: s 41(2) and (3).
(2) In determining whether a trade mark is inherently adapted to distinguish the services of a trader, the answer largely depends 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 connection with their goods: Clark Equipment Co v Registrar of Trade Marks (“Clark Equipment”) [1964] HCA 55; (1964) 111 CLR 511 per Kitto J at 514.
(3) The question of whether a trade mark is adapted to distinguish the services of the applicant is to 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 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 the words ordinarily possess) will think of the word and want to use it in connection with similar goods in any manner which would infringe the trade mark once registered: Clark Equipment at 514.
(4) Directly descriptive words, like geographical names, are not prima facie suitable for the grant of a monopoly conferred by registration of a trade mark because use of them, as trade marks, will “rarely eclipse” their “primary” (that is, their ordinary) signification. Such words (or a word) are unlikely to be inherently, that is to say, “in [their] own nature”, adapted to distinguish the applicant’s goods. Traders may legitimately want to use such words in connection with their goods or services “because of the reference they are ‘inherently adapted to make’ to those goods”: Cantarella Bros Pty Limited v Modena Trading Pty Limited (“Cantarella”) [2014] HCA 48; (2014) 254 CLR 337 at [57] per French CJ, Hayne, Crennan and Kiefel JJ.
(5) The principles derived from the observations of Kitto J in Clark Equipment apply with as much force to directly descriptive words as they do to words which are, according to their ordinary signification, geographical names: Cantarella at [57].
(6) In determining whether a word is (or words are) inherently adapted to distinguish the goods or services of an applicant, the question is to be examined from the point of view of the “possible impairment” of the rights of “honest traders” and from the “point of view of the public”: Cantarella at [59].
(7) In determining whether a word contains (or words contain) a “direct reference” to the relevant goods or services (and thus prima facie not registrable as a trade mark) or whether the word (or words) makes a “covert and skilful allusion” to the relevant goods or services (and thus prima facie registrable as a trade mark), the “ordinary signification” of the word or words to persons who will purchase, consume or trade in the goods or services, must be considered: Cantarella at [59].
(8) Where the question is whether there are other traders who may legitimately want to use or apply a word or words in connection with their goods or services (other than a geographical name or a surname), the test refers to the “legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods”: Cantarella at [59].
(9) Consistent with the proposition at (7), the test described at (8) does not encompass the desire of other traders to use a word or words which in relation to the goods or services are “allusive or metaphorical”: Cantarella at [59].
(10) In determining whether a trade mark is inherently adapted to distinguish the designated goods or services for the purposes of s 41(3), the ordinary signification of the word or words are to be considered from the perspective of “any person in Australia concerned with the goods or services to which the trade mark is to be applied”: Cantarella at [70].
(11) Consideration of the “ordinary signification” of any word or words said to constitute a trade mark is “crucial”: Cantarella at [71]. That is so whether the word (or words) is said not to be registrable because: it is not an invented word and has direct reference to the character or quality of the goods or services; or, the word is laudatory; or, the word is a geographical name; or, the word has either lost its distinctiveness or it never had the requisite distinctiveness from the outset: Cantarella at [71].
(12) The process of reasoning in addressing s 41(3) of the Act involves first identifying the “ordinary signification” of the word in question and then undertaking an enquiry into whether other traders might legitimately need to use the word in respect of their goods: Cantarella at [71]. If a word contains an allusive reference to goods or services it is, prima facie, qualified for the grant of a monopoly as a trade mark under the Act. If, on the other hand, the word is understood, by the target audience, as having a directly descriptive meaning in relation to relevant goods or services then, prima facie, the proprietor is not entitled to a monopoly in respect of the word. As a general proposition, a word or words which are prima facie entitled to a monopoly secured by registration as a trade mark under the Act, according to this method, are inherently adapted to distinguish: Cantarella at [71].[8]
[8] [2017] FCAFC 56, [236] (Greenwood, Besanko and Katzmann JJ).
The ground of opposition pursuant to s 41 was particularised in the respective SGPs as follows:
The word SIMMENTAL denotes a specific breed of bos taurus cattle but the goods in Class 29 are not so limited. In addition, the services in Classes 31 and 42 are not even limited to cattle. Furthermore, the Trade Mark includes the device of a bos taurus cow’s head which, because of its colouring, cannot possibly be the head of a SIMMENTAL cow. This confusion on two bases means the mark is incapable of distinguishing the applicant’s goods and/or services.”.
The word SIMMENTAL denotes a specific breed of bos taurus cattle but the goods are not limited either to boxes for packing beef or boxes for packing beef from SIMMENTAL cattle. Furthermore, the Trade Mark includes the device of a bos taurus cow’s head which, because of its colouring, cannot possibly be the head of a SIMMENTAL cow. This confusion on two bases means the mark is incapable of distinguishing the applicant’s goods and/or services.
The SGPs do not address the requirements of s 41 which concerns the question of whether the Trade Marks are inherently adapted to distinguish the Applicant’s Goods and Services. The question of whether the Trade Marks are misleading will be addressed under the s 42(b) or s 43 grounds. The Opponent has not put on any evidence or made any submissions to the effect that the Trade Marks are not inherently adapted to distinguish (namely that they indicate the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic of the Applicant’s Goods and Services); indeed the thrust of its case is exactly the opposite, namely that the marks do not accurately describe the Simmental breed. Its submission that the ground of opposition under s 41 arises because the Trade Marks are misleading and deceptive is not supported by any case law and is precisely contrary to the statement made in Note 1 of the legislation which requires the marks contain a sign used to indicate some aspect of the goods; whereas the Opponent submits that the Trade Marks contain images that do not reflect the goods and services for which the Trade Marks are sought to be registered.
I note that the examiner has conducted an examination of the Trade Marks and reached the conclusion that, with reference to the respective goods and services, each of the Trade Marks is in inherently adapted to distinguish. I reach the same conclusion. Both marks are device marks and specifically the 2396774 Mark is not descriptive of the 2396774 Goods which are boxes. The 2396773 Mark contains what appears to be the coined word SIMBEEF, along with the various additional elements arranged in a distinctive manner which is, on balance, sufficient to render the mark inherently adapted to distinguish the 2396773 Goods and Services.
I find that the Opponent has failed to establish the ground of opposition under s 41.
Section 43
Section 43 is reproduced below:
Section 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.
To establish a ground of opposition under s 43, there must be an inherent connotation within the trade mark. As Gyles J 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... [9]
[9] [2006] FCA 1663; (2006) 70 IPR 599, [53].
In Winton Shire Council v Lomas Spender J said:
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. [10]
[10] [2002] FCA 288; (2002) 119 FCR 416; (2002) 56 IPR 72, [19].
In Primary Health Care Limited v Commonwealth of Australia[11] Jagot J stated:
[11] [2016] FCA 313,[17].
Insofar as use of a trade mark would be likely to deceive or cause confusion is concerned (the s 43 issue, on which the respondents bear the onus):
(1) The section:
looks to the inherent qualities of the trade mark of which registration is sought for the purpose of identifying whether the use of the trade mark would be likely to deceive or cause confusion... (Woolworths at [79]).
(2) “In order for s 43 to apply, the Court must be satisfied that there is a reasonable likelihood of deception or confusion arising because of the connotation within the mark, having regard to the nature of the goods or services to which it is to apply and other relevant considerations” (McCorquodale v Masterson at [26]).
(3) The purpose of s 43:
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, rather than, for example, deception by reason of similarity with other marks... (Pfizer Products at [53]).
(4) “Whether there is a likelihood of deception or confusion is to be answered ‘not by reference to the manner in which the applicant for registration has used its mark in the past, but by reference to the use to which it can properly put the mark if it becomes registered’: Berlei v Hestia Industries Ltd [1973] HCA 43; (1973) 129 CLR 353 at 362” (Scotch Whisky Association v De Witt [2007] FCA 1649; (2007) 74 IPR 382 (Scotch Whisky Association) at [52]). Deceptive similarity must be considered against the “background of the usages in the particular trade” (Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 410).
(5) “The probability of deception or confusion must be finite and nontrivial. There must be a ‘real tangible danger of its occurring’ - Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1955] HCA 15; (1954) 91 CLR 529 (sic) at 594-5 per Kitto J” (Woolworths at [43]). As such, the mere possibility of confusion is insufficient (Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592 (Southern Cross Refrigerating) at 595). Further, that “exceptionally stupid or careless consumers might be confused does not suffice” (Scotch Whisky Association at [61]).
(6) “In order for s 43 to apply, the connotation must be clear and there must be a real and tangible danger that the trade mark, in the context of the relevant services, would be likely to deceive or cause confusion. It would be sufficient if there is ‘real and tangible danger’ of consumers having ‘reasonable doubt’ or being ‘caused to wonder’ about this issue: cf Southern Cross Refrigerating...at 595, per Kitto J” (Accor Australia at [269]).
(7) All surrounding circumstances must be considered including the circumstances in which the marks will be used, the circumstances in which the services will be provided, and the character of the probable users of the services (Southern Cross Refrigerating at 595).
(8) The test is not confined to a particular method of use of the marks; the question is “what can the applicant do if he obtains registration?” (Southern Cross Refrigerating at 595). [12]
[12] [2016] FCA 313, [17].
The operative test is the secondary meaning which arises from the reasonable expectations of the consumer after considering the meaning in the context of the goods provided. It does not follow that all trade marks containing descriptive matter would attract a section 43 objection. Only if there is a real and tangible danger that the trade mark would cause consumer’s expectations to be false and result in confusion as to the inherent nature of the goods themselves, would section 43 be triggered.
The ground of opposition pursuant to s 43 was particularised in the respective SGPs as follows:
The word SIMMENTAL denotes a specific breed of bos taurus cattle. The Trade Mark includes the device of a bos taurus cow’s head which, because of its colouring, cannot possibly be the head of a SIMMENTAL cow. This means the mark is likely to deceive or cause confusion.
The word SIMMENTAL denotes a specific breed of bos taurus cattle but the goods are not limited either to boxes for packing beef or boxes for packing beef from SIMMENTAL cattle. Furthermore, the Trade Mark includes the device of a bos taurus cow’s head which, because of its colouring, cannot possibly be the head of a SIMMENTAL cow. This means the mark is likely to deceive or cause confusion.
Each of the Trade Marks contains a two-colour (black and white or black and yellow) image of a cow. Each of those cows is depicted as having dark colouring with a lighter coloured head. In my opinion a reasonable viewer of the Trade Marks could consider the darker colour to be black, or brown or dark grey, and the lighter colour to be white or some variant. I do not accept the Opponent’s evidence that either of the Trade Marks depict a cow with a black coat and thus could not depict a cow from the Simmental breed.
The Opponent’s second submission is that the head of the cows depicted on the Trade Marks would likely be viewed as a Black Baldy cow, and not a cow from the Simmental breed which has a face that is a mixture of white with tan patches around the eyes, noting that the images of the cows on the Trade Marks do not depict the darker, tan patches.
Accepting the Opponent’s evidence that the breed depicted on the marks would not, to an educated eye, be recognised as cows from the Simmentel breed, the next question is whether this factor would result in a real and tangible danger that the trade mark would cause a consumer’s expectation to be false and result in confusion as to the inherent nature of the goods themselves. I do not consider that this would be the case. If either of the marks were applied to goods containing products from the Simmentel breed of cattle the first thing that a consumer would see is the clear word ‘Simmentel’ displayed on both the marks. The fact that the device is not strictly accurate would only be appreciated by a subset of the consumers (those familiar with the appearance of Simmentel cattle) and even to those consumers, confusion would be unlikely to arise given the large and prominent placement of the word Simmentel on both the marks. To put it simply; because the marks contain the word Simmentel, if they were applied to goods and services relating to Simmentel cattle, then, regardless of the inaccuracy of the device element (which would only be perceived by a subset of the market) it is unlikely that mark would deceive or cause confusion. I address the issue of application of the Trade Marks to goods and services unrelated to Simmentel cattle in the next paragraph.
The Opponent’s third submission, repeated under the s 42(b) ground, is that because the Trade Marks are sought to be registered for goods and services broader than Simmental cattle, the use of the Trade Marks would be likely to deceive or cause confusion. The requirement under s 43 (and s 42(b)) is that use of the mark would cause confusion (or in the case of 42(b) would be contrary to law), not that it could cause confusion. The Opponent’s submission is that if the Trade Marks were used by the Applicant in a particular way, namely in connection with breeds that are not Simmental cattle breeds, the use of the Trade Mark would cause confusion. This may be correct (as noted in the paragraph above, the inclusion of the prominent word Simmentel would provide the impression that the goods and services for which it is applied are connected to Simmentel cattle) but is not the test for s 43 (or 42(b)) which does not depend on an opponent identifying a particular combination of circumstances in which the use will deceive, rather if the mark can clearly be used in circumstances that will not deceive, such as the case here (in connection with goods and services relating to the Simmental breed of cattle) then the ground will not succeed. Were the Opponent’s submission to be taken to its logical conclusion; then all trade marks containing descriptive terms, such as BONDI BURGER or NEW ZEALAND NATURAL would be required to have specific limitations on their goods and services (i.e. that BONDI BURGER could only be registered for goods produced or services offered at Bondi, or NEW ZEALAND NATURAL could only be registered for ice cream produced in New Zealand). This is not the case because this is not what is required under the Act. Rather if circumstances arose where either of the Trade Marks were used in an actively misleading or deceptive manner; the appropriate remedy would be to bring a claim in a court of law, likely in reliance on the provisions of the Australian Consumer Law (‘ACL’).
As a consequence, I am not satisfied that if either of the Trade Marks are used in relation to the goods and services for which they are sought to be registered, there is an apparent connotation within it which is likely to result in deception or confusion. I find that the ground of opposition under section 43 has not been established.
Section 42
Section 42 is reproduced below:
42 - Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
(a) the trade mark contains or consists of scandalous matter; or
(b) its use would be contrary to law.The Opponent pressed this ground of opposition solely on the basis that the use of the Trade Marks would be contrary to law (s 42(b)). The onus is on the Opponent to establish that use of the Trade Marks by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[13] The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[14]
[13] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).
[14] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353 (Wilcox J).
The Opponent has particularised the ground of opposition in the SGP as follows:
Tort of passing off; Competition and Consumer Act 2010
The Opponent’s submissions refer to ss 18 and 29 of the ACL. The Opponent’s submissions under this ground are the same as those under the s 43 ground, namely that the Trade Marks depict a cow that is not from the Simmental breed, and the Trade Marks could be used in a manner that infringes the ACL. For the reasons set out under the s 43 ground, neither of these requirements are satisfied. To repeat the conclusions above, if the marks are used in connection with goods and services relating to the Simmentel breed, the Trade Marks would not be misleading as they each contain the prominent word ‘Simmentel’, while if they were used for other goods and services, they may be misleading but the test under this ground is that they would, not could, be misleading and the proper remedy in these circumstances is outside the Trade Marks Act.
For these reasons I am not satisfied that use of the Trade Marks by the Applicant would be contrary to law. Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).
Decision and Costs
The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Trade mark application numbers 2396773 and 2396774 may proceed to registration not less than one month from the date of this decision. 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.
The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs in respect of trade mark number 2396773 against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations. In respect of trade mark number 2396774 I award costs against the Opponent to be taxed in the same manner as indicated in Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd[15].
[15] [2001] ATMO 78 (Hearing Officer Williams).
Nicholas Smith
Hearing Officer
Delegate of the Registrar of Trade Marks
2 September 2025
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