Karen Walker Limited v Premonition Designs Pty Ltd and Mamta Group Pty Ltd

[2025] ATMO 103

TRADE MARKS ACT 1995

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

Re:Opposition by Karen Walker Limited to registration of trade mark application number 2155513 (classes 25 and 35) – Runaway the Label – in the name of Premonition Designs Pty Ltd and Mamta Group Pty Ltd

Delegate:

Sheona Robertson

Representation:

Opponent: AJ Park

Applicants: Spruson & Ferguson

Decision:

2025 ATMO 103

Trade Marks Act 1995 (Cth) – opposition under s 52 – grounds of opposition pursued under ss 42(b), 44, 58A, 60 and 62A – s 44(3)(a) not applicable – s 44 ground established – registration refused

Background

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) by Karen Walker Limited (‘Opponent’) to registration of the trade mark the subject of the application for registration detailed below (‘Application’) in the name of Premonition Designs Pty Ltd (‘Premonition Designs’) and Mamta Group Pty Ltd (‘Mamta Group’) (together ‘the Applicants’):

Number:

2155513

Trade mark:

Runaway the Label (‘Trade Mark’)

Filing date:

12 February 2021

Specification:

Class 25: Hoods (clothing); Interlinings for clothing; Jackets (clothing); Jerseys (clothing); Jump suits (clothing); Knitted clothing; Knitwear (clothing); Ready-made clothing; Slips (clothing); Thongs (clothing); Three piece suits (clothing); Women's clothing; Apparel (clothing, footwear, headgear); Athletic clothing; Beach clothes; Beach clothing; Clothes; Clothing; Casual clothing; Ladies clothing; Maternity clothing; Girl's clothing; Clothing for swimming; Wraps (clothing); Embroidered clothing (‘Applicants’ Goods’)

Class 35: Online retail services (‘Applicants’ Services’)

Endorsement:

Provisions of paragraph 44(3)(a) and/or Reg 4.15A(3)(a) applied.

2.     In this decision, a reference to ‘Applicants’ Goods and Services’ is a reference to the class 25 goods and the class 35 services listed above.

3. The Application was examined as required under s 33 of the Act and was advertised as accepted for possible registration on 10 January 2023.

4.     The Opponent filed a Notice of Intention to Oppose registration of the Trade Mark on 9 March 2023 followed by a Statement of Grounds and Particulars (‘SGP’) on 11 April 2023. The Applicants filed a Notice of Intention to Defend on 22 June 2023.

5.     In support of the opposition, the Opponent filed as evidence in support a declaration made on 27 September 2023 by Karen Elizabeth Walker, the founding Director of the Opponent, and exhibits KEW-1 to KEW-26 (‘Walker’).

6.     The Applicants filed as evidence in answer a declaration made on 9 January 2024 by Premal Patel, sole Director of the Applicants, together with Annexures PP-1 to PP-27 (‘Patel’).

7.     The Opponent did not file evidence in reply.

8.     Once the time allowed for filing evidence ended, the parties were given an opportunity to request a hearing. The Applicants filed a request on 10 April 2024 for an oral hearing. The Opponent elected to be heard by way of written submissions. The Opponent filed written submissions on 18 February 2025 (‘Opponent’s Submissions’). The Applicants filed written submissions on 26 February 2025.

9.     I heard this matter by video conference on 5 March 2025. At the hearing, Khajaque Kortian of Spruson & Ferguson appeared for the Applicants. The Opponent was not represented at the hearing.

10.     As a delegate of the Registrar of Trade Marks (‘Registrar’), I have decided this matter as required by s 55 of the Act. In doing so, I take account of the aforementioned materials and the oral submissions of the Applicants.

Grounds of opposition, onus and standard of proof

11. The SGP nominated grounds of opposition under ss 42(b), 44, 58A, 60 and 62A of the Act.

12. The Opponent’s Submissions state that the Opponent relies on four grounds of opposition under ss 44, 58A, 42(b) and 62A of the Act. I note the Opponent’s Submissions address the grounds of opposition under ss 44 and 60 of the Act only. However, for the reasons which follow it is not necessary for me to determine whether the Opponent intends to press the remaining grounds.

13.     The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[1] The standard of proof is the ordinary civil standard on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 12 February 2021 (‘Relevant Date’), being both the filing date and priority date of the Trade Mark.

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

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

Opponent’s evidence

14.     The Opponent is a New Zealand based fashion label incorporated in 1990. The Opponent’s ‘Karen Walker’ brand has become one of New Zealand’s most well-known fashion labels and is also internationally recognised. It has expanded to be stocked in around 600 stores worldwide. In Australia, the Opponent’s ‘Karen Walker’ branded products are available in David Jones and Myer stores as well as on several e-commerce stores such as Shopbop, Nordstrom and The Iconic.

15.     The Opponent’s ‘Karen Walker’ brand has been showcased at various high profile fashion shows including London Fashion Week, New York Fashion Week and Australian Fashion Week. It is regularly featured in world leading fashion publications, including Australian publications such as ELLE Australia. The Opponent’s clothing designs have also been worn by various celebrities. The Opponent has received a number of awards and acknowledgements in New Zealand and elsewhere.

16.     The Opponent is the owner of the following registered trade marks in Australia (together, ‘Opponent’s Trade Marks’:

Trade mark	Number	Goods	Priority date
RUNAWAY	1177410 (‘410 Mark’)	Class 25: Clothing; footwear; headwear; clothing and fashion accessories in this class; belts in this class	17 May 2007
RUNAWAY	1615117 (‘117 Mark’) (International Registration 1197278)	Class 3: Perfumery, essential oils, fragrance derived toiletries and products for personal use, namely, perfume, eau de parfum, eau de toilette; deodorants for personal use; room fragrancing preparations	2 December 2013

17.     The Opponent is also the owner of two trade mark registrations[3] in respect of the following device, which the Opponent refers to as the ‘Runaway Girl’:

[3] Australian trade mark registration number 1212918 in classes 9, 14 and 25 with a priority date of 30 November 2007; and Australian trade mark registration number 1640783 in class 3 with a priority date of 2 December 2013.

18.     According to Walker, the Opponent’s ‘RUNAWAY’ brand was selected to evoke adventure and escapism. The Runaway Girl was created to evoke both the spirit of the ‘RUNAWAY’ brand and the brand’s founder as a child.

19.     The Opponent’s ‘RUNAWAY’ brand was first used in London in 2002 as the title of the Opponent’s first solo fashion show. The first use of the Runaway Girl also occurred at this time. The debut ‘RUNAWAY’ collection earned significant international recognition, and since that time the Opponent has used the ‘RUNAWAY’ brand extensively across goods including ready-to-wear clothing, accessories, home wear, jewellery, fragrances and tea. Walker provides examples of RUNAWAY branded goods offered for sale on the website ‘Karenwalker.com’ and featured in domestic and international publications. Consumers have been able to purchase goods from this website for shipping to Australia since August 2010.

20.     The Opponent’s ‘RUNAWAY’ collection was first made available in Australia in 2003. Walker contains several articles from Australian fashion publications discussing the Opponent’s ‘RUNAWAY’ collection and featuring goods bearing the Opponent’s ‘RUNAWAY’ trade marks.

21.     Walker contains a list of all stockists of the Opponent’s goods in Australia as well as details of products sold under the Opponent’s ‘RUNAWAY’ brand in the Opponent’s Australian retailers between 2003 and 2021 and estimates of the total numbers of each product sold in Australia.

22.     The Opponent markets its products by way of electronic direct marketing (‘EDM’) to its subscriber base. Much of the subscriber base is not geolocated but the Opponent estimates that in March 2021 well over 5,000 subscribers were based in Australia. Walker provides examples of EDM featuring the Opponent’s ‘RUNAWAY’ trade mark and/or the Runaway Girl that have been sent to the Opponent’s EDM subscribers.

23.     Walker provides examples of posts on the Opponent’s ‘Karen Walker’ Facebook and Instagram pages dated between August 2013 and May 2020 featuring the Opponent’s ‘RUNAWAY’ trade marks.

24.     It is noted in Walker than the Applicants filed Australian trade mark application number 1687122 on 14 April 2015, in respect of ‘clothes’ in class 25 for the following trade mark (‘Prior Application’):

25. Walker notes that the 410 Mark was cited as an obstacle to registration of the Prior Application under s 44 of the Act, and the Prior Application was not accepted for registration.

Applicants’ evidence

26.     The Applicants are Sydney based designers and retailers of young women’s clothing. The Applicants provide clothing under the Trade Mark as well as the trade marks ‘Seven Wonders the Label’, ‘Prem the Label’ and ‘SheIsUs’.

27.     Premonition Designs was incorporated in June 2005. MAMTA Group was incorporated in March 2014. Premonition Designs first used the Trade Mark in respect of the Applicants’ Goods in or around March 2013 by way of its physical retail store in Sydney. In or around April 2014, the Applicants jointly commenced use of the Trade Mark in respect of the Applicants’ Goods and Services with the launch of an online store at (‘Applicants’ Website’). The Applicants have continuously used the Trade Mark since this time.

28.     It is declared in Patel that the name ‘RUNAWAY THE LABEL’ was selected because it conveyed the impression of freedom and reflected the Applicants’ target customer base, being women between 18 and 40 years of age with aspirations to travel.

29.     The Applicants’ Goods have been promoted and sold by third party retailers and online stores. Patel includes representative screenshots of the websites of third party retailers showcasing the Applicants’ Goods. Patel provides representative invoices and purchase orders for wholesale sales of the Applicants’ Goods.

30.     It is declared in Patel that the Applicants’ Goods and Services under and by reference to the Trade Mark have been promoted by various means, including:

·the Applicants’ Website. Patel contains current and historical screenshots of the Applicants’ Website between May 2015 and March 2022, as well as Google Analytics extracts showing web usage data and numbers of retail and wholesale orders placed through the Applicants’ Website between January to September 2022, and January to December 2023.

·the Applicants’ wholesale website. Patel contains representative screenshots of this website which contain references to ‘Runaway’ in small text above the relevant product name.

·the Applicants’ Facebook, Instagram, Tiktok, X (formerly Twitter), LinkedIn and Pinterest accounts. Representative screenshots from each of these social media accounts are contained in Patel. Of the representative posts which contain a direct reference to the name of the fashion label, the Applicants’ brand is variously referred to as ‘RUNAWAY THE LABEL’ and ‘RUNAWAY’.

·collaborations with social media influencers. Patel contains representative Instagram and TikTok posts from 2023 by social media influencers promoting the Applicants’ Goods.

·online publications including online newspapers, women’s magazines and fashion magazines. Patel contains copies of several articles dated between December 2019 and December 2023.

·EDM newsletters variously using the Trade Mark or ‘RUNAWAY’ solus. Examples of the Applicants’ newsletters sent to subscribers dated between April 2017 and November 2021 are provided in Patel.

·pamphlets and flyers featuring the Trade Mark or ‘RUNAWAY’ solus, provided to both wholesale and retail customers. Patel contains examples of proofs for pamphlets and flyers featuring the Trade Mark which were distributed to retail or wholesale customers between January 2017 and February 2021.

·swing tags, labels and packaging featuring the Trade Mark or ‘RUNAWAY’ solus, examples of which, dated between March 2013 and November 2022, are provided in Patel.

·billboards, advertisements on buses, and digital screens. Patel contains representative photographs of such advertising in Sydney, Brisbane and Robina between January 2017 and December 2023, variously featuring either ‘RUNAWAY’ solus or the Trade Mark.

·promotional events, such as launch parties and fashion shows. Patel provides copies of invitations, photographs and media relating to collaborative events held in Sydney and Victoria between December 2019 and November 2022 which were reportedly attended by media, social media influencers and celebrities.

31.     Between 2018 and March 2020 the Applicants operated a physical store in Sydney under the Trade Mark. Patel contains a photograph taken in 2018 showing building signage featuring the Trade Mark. The Applicants also operated a pop-up store in Robina, Queensland between February 2019 and March 2020. Social media posts relating to the Robina store show building signage bearing the trade mark ‘RUNAWAY’ solus.

32.     It is declared in Patel that the Applicants have enjoyed strong sales of the Applicants’ Goods, have generated substantial revenue from the provision of the Applicants’ Goods and Services under and by reference to the Trade Mark, and have invested significantly in the promotion of the Applicants’ Goods and Services under and by reference to the Trade Mark. Patel contains financial statements for each of the Applicants for the years 2018 to 2020, 2022 and 2023, as well as representative purchase orders and invoices in respect of goods bearing the Trade Mark.

Discussion

Section 44

33. Section 44 of the Act relevantly provides:

44  Identical etc. trade marks

(1) Subject to subsections (3) and (4), 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 trade mark registered by another person in respect of similar goods or closely related services; or

(ii) a trade mark whose registration in respect of similar goods or closely related services 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 goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

…

(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.

34.     The SGP nominates the Opponent’s Trade Marks[4] as the basis for this ground of opposition.

[4] The 117 Mark is an international trade mark registration protected in Australia. Accordingly, the technical ground of opposition is under reg 4.15A of the Trade Marks Regulations 1995 (Cth) rather than s 44. However, since the terms of s 44 and reg 4.15A are substantively identical for all relevant purposes, and given the parties have framed their submissions in terms of s 44, I have retained the reference to s 44 in this decision. References to s 44 in this decision should be read as reg 4.15A.

35. The s 44 ground of opposition is established if, subject to sub-ss 44(3) and 44(4) of the Act, either of the Opponent’s Trade Marks meet the following requirements:

(i)they are in the name of a person other than the Applicants;

(ii)they have a priority date which is earlier than the Relevant Date;

(iii)they are substantially identical with, or deceptively similar to, the Trade Mark; and

(iv)they are in respect of goods or services which are similar, or closely related, to the Applicants’ Goods and Services.

36.     The Opponent’s Trade Marks are registered by a person other than the Applicants and have priority dates which are earlier than the Relevant Date. Requirements (i) and (ii) are satisfied.

Similarity of goods and services

37. Section 14 of the Act provides:

14  Definition of similar goods and similar services

(1) For the purposes of this Act, goods are similar to other goods:

(a) if they are the same as the other goods; or

(b) if they are of the same description as that of the other goods.

(2) For the purposes of this Act, services are similar to other services:

(a) if they are the same as the other services; or

(b) if they are of the same description as that of the other services.

38.     Whether goods are of the same description depends on whether the goods belong to the same or different trades, as determined through consideration of the following factors:[5]

(i)the nature of the goods;

(ii)the respective uses of the goods; and

(iii)the trade channels through which the goods are respectively bought and sold.[6]

[5] Re Jellinek’s Application (1946) 63 RPC 59, 64 (Romer J).

[6] Ibid 70.

39. The test for determining whether goods are closely related to services, or vice versa, requires a different analysis. The words ‘closely related’ are not defined in the Act. Justice French noted in Registrar of Trade Marks v Woolworths Ltd:

The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related” … it is a term of wider import than “similar” and can apply to the relationships between competing services as well as between goods and services.[7]

[7] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [37].

40.     The Applicants’ Goods are items of clothing and the Applicants’ Services are online retail services. The goods of the 410 Mark and the 117 Mark are, respectively, clothing, footwear, headwear and fashion accessories in class 25, and perfumes, fragrances and toiletries in class 3. 

41.     The Applicants acknowledge that the Applicants’ Goods are the same, or of the same description, as the class 25 goods of the 410 Mark. However, the Applicants submit that the Applicants’ Goods are not the same or of the same description as the class 3 goods of the 117 Mark on the basis of the different natures, uses and trade channels of the respective goods.

42.     I agree that the Applicants’ Goods are similar to the class 25 goods of the 410 Mark. I also consider the Applicants’ Services to be closely related to the class 25 goods of the 410 Mark. I note it is increasingly common for clothing brands to sell their own products by way of their own websites, such that there is now a consumer expectation that goods and the retail sale of those goods, provided under the same or similar trade marks, emanate from the same trade source.[8]

[8] The IP Australia Trade Marks Manual of Practice and Procedure, Part 26.4.3.1.

43.     In relation to the 117 Mark, I am not persuaded that perfumes, fragrances and toiletries are the same, or of the same description, as the Applicants’ Goods. I do not consider the respective goods to be similar in terms of either their nature, uses or trade channels. Having regard to the specification of the Trade Mark as a whole, I do not consider the Applicants’ Services to be closely related to the goods of the 117 Mark. Accordingly, I do not consider the Trade Mark to be in respect of similar goods or closely related services as the goods of the 117 Mark for the purposes of requirement (iv).

44.     Requirement (iv) is established with respect to the 410 Mark only.

Substantially identical

45.     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.[9]

[9] [1963] HCA 66, [12].

46.     On a side by side comparison, there are notable differences between the Trade Mark and the  410 Mark. The Trade Mark consists of the three words ‘Runaway The Label’. The 410 Mark consists of the single word ‘RUNAWAY’. The Trade Mark is six syllables and 15 letters in length, whereas the 410 Mark is only three syllables and seven letters in length. The additional words ‘the Label’ in the Trade Mark, while descriptive, provide context to the Trade Mark that is absent from the 410 Mark by identifying that the Applicants’ Goods are those of a fashion label. These differences lead to a total impression of dissimilarity. I do not consider the trade marks to be substantially identical.

Deceptively similar

47. 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’.

48.     In Shell, Windeyer J provided the following insights on deceptive similarity:

The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [mark].[10]

[10] Ibid [13].

49.     Kitto J made the following comments regarding the risk of deception or confusion in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd:

While a mere possibility of confusion is not enough - for there must be a real, tangible danger of its occurring - it is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough if the ordinary person entertains a reasonable doubt.[11]

[11] [1954] HCA 82, [4] (citations omitted).

50.     Deceptive similarity can be found where one mark uses an essential feature of the other, however it is the whole of the respective trade marks which must be considered.[12]  Regard must be had to the overall impression that a person of ordinary intelligence and memory would likely have of the Trade Mark and of the 410 Mark, having regard to the look, sound, and ideas conveyed by the respective marks, and allowing for imperfect recollection.

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

51.     The Opponent submits that there are obvious similarities between the 410 Mark and the Trade Mark, as the word ‘RUNAWAY’ comprising the 410 Mark is wholly contained in the Trade Mark.

52.     The Applicants submit that because of the additional words ‘THE LABEL’ in the Trade Mark, there is not a real or tangible danger of deception or confusion between the Trade Mark and the 410 Mark. In oral submissions the Applicants submitted that the Trade Mark and the 410 Mark clearly carry different meanings (the former being an item and the latter being a person), and that the word ‘RUNAWAY’ is a common, non-invented word.

53.     In oral submissions the Applicants cited other trade marks previously registered in class 25 (and subsequently removed from the Register for non-renewal or non-use) which contain the word ‘RUNAWAY’.[13] I note that each of these marks contain additional distinctive words, whereas I consider the additional term ‘THE LABEL’ in the Trade Mark to be descriptive. As such, I do not consider these other ‘RUNAWAY’ marks support the Applicants’ contention that the Trade Mark is sufficiently different to the 410 Mark.

[13] Australian trade mark registration numbers 1150755 (‘RUNAWAY LOVERS’), 1195039 (‘Runaway Pony’) and 1597250 (‘Runaway Orchid’).

54.     In my assessment, the Trade Mark and the 410 Mark are deceptively similar. I note that the first part of a trade mark is generally the most important for comparative purposes.[14] Visually and aurally, the word ‘RUNAWAY’ forms an essential feature of both the Trade Mark and the 410 Mark; the 410 Mark is wholly encompassed in the Trade Mark. The word ‘RUNAWAY’ may be an ordinary English word but, in my view, in the context of the respective goods and services it is distinctive and its presence as a shared element in the respective trade marks heightens the risk of confusion. In spite of the parties’ differing accounts of the intended connotations of the respective marks, I consider the shared word ‘RUNAWAY’ in each mark to convey the same concept, namely escapism, independence and self-assurance.

[14] London Lubricants (1920) Ltd’s Application (1925) 42 RPC 264, 279 (Sargant LJ).

55.     The additional words ‘THE LABEL’ in the Trade Mark lack distinctive character; while they qualify the essential feature ‘RUNAWAY’ as the name of a fashion label, they do not diminish the visual and aural dominance of the ‘RUNAWAY’ element of the Trade Mark. Having regard to the doctrine of imperfect recollection and the potential for careless pronunciation, in light of the dominance of the word ‘RUNAWAY’ in the Trade Mark it is probable that the remaining words ‘THE LABEL’ would not be recalled and that the Trade Mark would be recalled as ‘RUNAWAY’ solus. Accordingly, there is a real and tangible risk that the relevant buying public would likely consider that the respective goods and services emanate from the trade source.

56.     For these reasons, I am satisfied that there is a real, tangible danger of deception or confusion occurring between the Trade Mark and the 410 Mark. The trade marks are deceptively similar and requirement (iii) is satisfied.

Honest concurrent use

57. Section 44(3) of the Act enables a trade mark to be accepted, which would otherwise be rejected under ss 44(1) or 44(2), on the basis of honest concurrent use or other circumstances.

58. The Applicants bear the onus to positively demonstrate that the honesty of adoption and use weighs in favour of an exercise of the discretion under s 44(3)(a).[15] It is the circumstances before the Relevant Date which must be considered in assessing evidence of honest concurrent use of the Trade Mark.[16]

[15] Trident Seafoods Corporation v Trident Foods Pty Limited [2018] FCA 1490, [186] (Gleeson J) (‘Trident’); Hills Industries Limited v Bitek Pty Ltd [2011] FCA 94 (‘Hills Industries’), [147] (Lander J); Telstra (n 2).

[16] Hills Industries ibid [163]; Trident ibid [186].

59.   In McCormick & Company Inc v McCormick, Kenny J set out the principal factors for determining whether registration of a trade mark should be permitted pursuant to s 44(3) of the Act:

(a) the honesty of the concurrent use;

(b) the extent of the use in terms of time, geographic area and volume of sales;

(c) the degree of confusion likely to ensue between the marks in question;

(d) whether any instances of confusion have been proved; and

(e) the relevant inconvenience that would ensue to the parties if registration were to be permitted.[17]

[17] [2000] FCA 1335, [30]-[32].

60.   Of these factors, the honesty of the concurrent use is the most important. Honesty in this context refers to honesty in a commercial rather than a general sense. Whether the adoption of a trade mark was ‘commercially honest’ was considered by Dodds-Streeton J in Tivo Inc v Vivo International Corporation Pty Ltd (‘Tivo’):

Relevant authorities have taken into account a number of factors in determining whether the applicant adopted the trade mark without knowing of the earlier mark or in the honest belief that no confusion would arise or business be diverted by use of the name. They include:

(a) whether the words which make up the trade mark are common, everyday words. If they are, it is more likely that the use will be found to be honest than would be the case if the words are “invented” or are not such as to be obviously attractive to other traders;

(b) the subsequent conduct of the applicant;

(c) the likelihood of confusion;

(d) the applicant’s knowledge of the opponent’s mark; and

(e) whether the adoption of the mark, and the continued use of it, was surreptitious.[18]

[18] [2012] FCA 252, [246].

61.     The circumstances surrounding the adoption of a trade mark are of considerable importance when considering whether the use of that mark has or has not been ‘honest’.[19] Knowledge of an earlier trade mark is not necessarily fatal to a finding of honest concurrent use.[20] Absence of evidence as to an honest belief that there would be no confusion may be telling.[21]

[19] Re Parkington & Co Ltd's Application (1946) 63 RPC 171, 182-3 (Romer J).

[20] Baume & Co Ltd v Moore (A H) Ltd [1958] RPC 226, 235 (CA); Joseph Rodgers & Sons Ltd v W N Rodgers & Co (1924) 41 RPC 277, 291 (Romer J).

[21] Fanfirm Pty Ltd v Fanatics, LLC [2024] FCA 764, [296]-[297].

62.     The Opponent submits that the requirements of ‘honest concurrent use’ have not been met, for the following reasons:

·the Applicants have not provided evidence that they conducted searches, sought professional advice, or took other reasonable precautions in relation to the adoption of the Trade Mark;

·the Applicants claim not to have been aware of the Opponent’s Trade Marks at the time the Trade Mark was adopted, but ‘a simple claim not to be aware of the registration without evidence is not enough’;[22]

·the Applicants were aware of the Opponent’s Trade Marks from at least 21 July 2015, when they were cited during examination of the Prior Application. The Applicants have not provided any explanation as to why they continued to use the Trade Mark after becoming aware of the Opponent’s Trade Marks;

·the Opponent wrote to the Applicants in January 2021 objecting to their use of the Trade Mark in relation to the Applicants’ Goods and Services. The Applicants’ subsequent decision to file the Application constitutes flagrant disregard for the Opponent’s registered rights.

[22] Opponent’s Submissions, [3.12].

63.     The Opponent’s Submissions make reference to several cases which have considered whether the adoption and continued use of a trade mark was ‘surreptitious’:

In Tivo, Dodds-Streeton J found there had not been honest concurrent use in circumstances where, amongst other things, the applicant had failed to carry out an adequate search, seek professional advice or take reasonable precautions in relation to its adoption of a trade mark.

In Flexopack S.A. Plastics Industry v Flexopack Australia Pty Ltd [‘Flexopack’],[23] Beach J considered that if a person does not take steps that an honest and reasonable person would take to ascertain the ability to use a trade mark, and has in effect taken a risk, then the person is not acting in good faith in the sense of “honestly” within the terms of the good faith “own name” defence under s 122(1)(a).

In Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd,[24] Davies J in deciding that there was no honest concurrent use stated: “It cannot be said that there has been “honest” concurrent use of the radiology marks within the terms of s 44(3) when the searches, if conducted properly, would have come up with insight clinical imaging’s website and its similar marks.”

In Sensis Pty Ltd v Senses Direct Mail and Fulfillment Pty Ltd,[25] Davies J said “whether a person does take steps that an honest and reasonable person would take to ascertain the ability to use a trade mark is a consideration” when making a finding regarding honest concurrent use.

In Jackson Family Farms, LLC And Jackson Family Wines, Inc v Grands Domaines Du Littoral[26] it was held that a simple claim not to be aware of the registration without evidence was not enough, there is a requirement to take steps that an honest and reasonable person would take to ascertain the ability to use the trade mark.[27]

[23] [2016] FCA 235.

[24] [2016] FCA 1406, [125].

[25] [2019] FCA 719.

[26] [2023] ATMO 171, [43], [50] (Delegate Makrigiorgos).

[27] Opponent’s Submissions, [3.9].

64.     The Applicants submit that their reasons for the adoption of the Trade Mark have been provided and that the Trade Mark was adopted in March 2013 without the knowledge of the Opponent’s Trade Marks or the Runaway Girl. They further submit that significant, continuous use of the Trade Mark has been made since that time in the absence of any instances of confusion.

65.     Regarding the honesty of the adoption of the Trade Mark, the Applicants submit that when the Trade Mark was adopted, and up until the filing of the Prior Application, the Applicants had no prior involvement or experience with this Office and lacked awareness of trade mark rights generally, as evidenced by the fact that the Prior Application was self-filed, initially filed in the name of an incorrect owner, claimed goods based on this Office’s picklist, and was filed a full two years after the Applicants first adopted the Trade Mark. 

66.     In my view, there is nothing in the evidence provided to support a finding of the Applicants’ awareness of the Opponent’s Trade Marks before the Applicants commenced using the Trade Mark. However, the Applicants merely make a claim that they were not aware of the Opponent’s Trade Marks or the Runaway Girl when the Trade Mark was adopted. They do not provide any evidence that adequate searches were carried out, professional advice was sought or reasonable precautions were taken in relation to their adoption of the Trade Mark. The lack of explanation as to the circumstances surrounding the adoption of the Trade Mark is problematic and warrants a consideration of the other factors stated by Dodds-Streeton J in Tivo to assist in determining the Applicants’ honesty in adopting the Trade Mark.

67.     In relation to the first factor, the shared word ‘RUNAWAY’ in the Trade Mark and the Opponent’s Trade Marks is not an invented word, but neither is it so common with respect to the respective goods and services that it would be obviously attractive to other traders. Conversely, the term ‘THE LABEL’ is in common use in the relevant trade and is less likely to be regarded as an ‘honest’ addition to the Trade Mark.

68.     The second factor is the subsequent conduct of the Applicants. I note in this regard that while there is nothing in the evidence to demonstrate anything improper in the conduct of the Applicants with respect to their use of the Trade Mark, the Applicants have not made submissions or provided evidence regarding their conduct subsequent to becoming aware of the 410 Mark following receipt of the first adverse examination report in respect of the Prior Application, and receiving the Opponent’s correspondence objecting to the Applicants’ use of the Trade Mark. I note the Applicants’ explanation regarding their lack of experience with respect to trade mark rights and the trade mark registration process prior to filing the Prior Application, but this does not explain the Applicants’ subsequent decision to continue use of the Trade Mark and to later file the Application.

69.     The third factor is the likelihood of confusion, which I have already determined is significant with respect to the Trade Mark and the 410 Mark having regard to the nature of the respective goods, their respective uses and trade channels.

70.     Regarding the fourth factor concerning the Applicants’ knowledge of the 410 Mark, although the Applicants’ awareness of this mark followed the adoption of the Trade Mark, it nevertheless predated the Applicants’ decision to file the Application by several years.

71.     The last factor concerns whether the adoption of the Trade Mark, and the continued use of it, was surreptitious. There is nothing in the evidence which leads me to conclude that the Applicants’ adoption and continued use of the Trade Mark was surreptitious. I note that in none of the cases cited by the Opponent is there a suggestion that the trade mark applicant had behaved in a ‘surreptitious’ manner. It was suggested in both Tivo and Flexopack that the trade mark applicants had provided implausible accounts of their adoption of the respective trade marks, but that is not the case here.

72. Overall, the Applicants have been transparent about their use of the Trade Mark, and the evidence does not show the Applicants’ conduct has been improper or surreptitious. However, in light of the lack of evidence regarding the steps taken to ascertain the Applicants’ ability to adopt and use the Trade Mark, the Applicants’ conduct after gaining awareness of the Opponent’s Trade Marks, and the significant likelihood of confusion, I am not satisfied that the Applicants have discharged their onus to establish that the Trade Mark was adopted honestly. Accordingly, it is not necessary that I consider the other factors surrounding honest concurrent use. The provisions of s 44(3)(a) do not apply.

Other circumstances

73. The Applicants have not made submissions with respect to s 44(3)(b) of the Act. For completeness, I note that honesty of use is generally essential to an exercise of the discretion under s 44(3)(b), as the Registrar may only exercise the discretion in circumstances where it is proper to do so.[28] As I have already determined that honest use of the Trade Mark has not been established, I do not consider it proper to apply the provisions of s 44(3)(b) of the Act.

[28] Trade Marks Manual of Practice and Procedure, [28.4]; Act, s 44(3)(b); Western Australian Land Authority [2014] ATMO 10, [30] (Delegate Wilson); see also Firstmac Limited v Zip Co Limited [2025] FCAFC 30, [85]-[88] (Perram, Katzmann and Bromwich JJ) in relation to factors not justifying an exercise of the discretion in circumstances where the respondents decided to continue use of their trade mark despite awareness of the existing prior mark and risk of confusion.

Decision

74. Section 55 of the Act relevantly 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.

75. I am satisfied that there is a ground of opposition under s 44 of the Act. Accordingly, I refuse registration of trade mark application number 2155513.

76.     If the Registrar is served with a notice of appeal within one month from the date of this decision, I direct that the disposition of the Application be in accordance with the court’s direction or order.

Costs

77. The parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle. I award costs against the Applicants in accordance with s 221 of the Act, in the amounts set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth).

Sheona Robertson

Hearing Officer

Delegate of the Registrar of Trade Marks

4 June 2025