Kmart Australia Limited v Above Point Pty Ltd

[2025] ATMO 92

TRADE MARKS ACT 1995

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

Re:Opposition by Kmart Australia Limited to registration of trade mark application number 2229980 (class 35) – Better Together - in the name of Above Point Pty Ltd

Delegate:

Tracey Berger

Representation:

Opponent: Davies Collison Cave

Applicant: YIP Legal Pty Ltd

Decision:

2025 ATMO 92

Trade Marks Act 1995 (Cth) – opposition under section 52 – s 44 considered and established – trade mark refused registration

Background

1. This is a decision on the opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] brought by Kmart Australia Limited (‘Opponent’) to registration of the trade mark detailed below filed in the name of Above Point Pty Ltd (‘Applicant’):

Trade Mark:               Better Together           (‘Trade Mark’)

Number:2229980  (‘Application’)

Filing Date:                21 November 2021     (‘Relevant Date’)        

Specification: Class 35:  Advice relating to business management; Advisory services for business management; Advisory services relating to business management; Advisory services relating to business risk management; Business administration consultancy; Business consultancy; Business consultancy relating to the administration of information technology; Business consultancy services relating to data processing; Business consultancy to firms; Business consultation; Business consulting services relating to logistics; Business franchising consultancy and business support services; Business management; Business management advice; Business management advisory services; Business management assistance; Business management and organization consultancy; Business management consultancy; Business management organisation consultancy; Business organisation consulting; Business organization consultancy; Business planning consultancy; Business project management; Commercial management consultancy; Consultancy relating to business document management; Consultancy relating to business efficiency; Consultancy relating to business management; Consultancy relating to business organisation; Consultancy relating to business planning; Corporate management consultancy; Data management consultancy; Logistics services (business management and organization of facilities and resources); Management advisory services for businesses; Management consultancy in information analysis; Management consultations relating to business; Management of business projects (for others); Professional business consultancy; Project business management and administration; Provision of business management assistance; Provision of information in relation to business management; Provision of business management information; Strategic business consultancy; Providing information, including online, about business management and administration and office functions; all of the aforementioned in relation to consultancy and human resource management in the fields of engineering, technical services, ICT, auditing, accounting, finance, and authoring/writing of technical documents; none of the aforementioned in relation to wholesaling and retailing services, including department store services, specialty store services, direct mail services, online retailing services, or online marketing and sales promotions.

(‘Applicant’s Services’)

[1] Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

2.     Following the advertisement of acceptance of the application for possible registration, the Opponent filed a Notice of Intention to Oppose on 22 June 2022 and also a request for acceptance of the Application to be revoked.  This office issued a Notice of Intention to revoke the Application on 6 July 2022.  In the meantime, the Opponent filed its Statement of Grounds and Particulars (‘SGP’). Acceptance of the Application was revoked on 8 August 2022 and the Application returned to the examination stage.

3.     The Applicant deleted class 42 from its Application and the Application was accepted for registration.  The Opponent wrote to this office on 21 December 2023 again requesting revocation of acceptance of the Application and filing a Notice of Intention to Oppose followed by its SGP on 22 January 2024.  On 2 February 2024, this office wrote to the Applicant indicating that acceptance would be revoked unless the class 35 specification was amended.  The Applicant filed a Notice of Intention to Defend the opposition whilst corresponding with this office regarding an appropriate amendment to the class 35 specification.  On 13 March 2024, this office wrote to the parties confirming that the class 35 specification had been amended and hence acceptance of the application was not revoked.

4. The parties then proceeded to file their evidence in accordance with the Regulations. The Opponent filed its evidence in support of the opposition on 3 June 2024 (‘EIS’) and the Applicant filed its evidence in answer on 9 August 2024 (‘EIA’). On 14 October 2024, the Opponent filed its evidence in reply (‘EIR).

5.     At the conclusion of the evidence stage, the parties had the opportunity to request a hearing.  Both parties asked to be heard by way of written submissions.  The Opponent’s written submissions were prepared by Tony Lolis of Davies Collison Cave and filed on 4 February 2025.  The Applicant’s written submissions were prepared by Andrew Petale of YIP Legal Pty Ltd and filed on 11 February 2025.  This matter has been allocated to me to determine as a delegate of the Registrar of Trade Marks and I do so based on the aforementioned materials.

Grounds and onus

6.     The Opponent’s SGP nominates grounds of opposition under ss 42(b), 44, 60 and 62A.  In its written submissions, the Opponent advises that it is only pressing the s 44 ground of opposition. 

7.     The Opponent bears the onus of establishing the s 44 ground of opposition.[2]  The standard of proof is the ordinary civil standard on the balance of probabilities.[3]

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

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

and Edelman JJ).

8.     The rights of the parties are to be determined at the Relevant Date being the priority date and filing date of the Application.

Evidence

9.     The following evidence was filed:

10.     Declarant and Position	Date	Exhibits/Annexures
EIS
Tony Victor Lolis, attorney at Davies Collison Cave (‘Lolis 1’)	3 June 2024	TVL-1 to TVL-5
EIA
Andrew Selim Petale, Principal of YIP Legal (‘Petale’)	8 August 2024	AP-1 to AP-2
EIR
Tony Victor Lolis (‘Lolis 2’)	14 October 2024	TVL-1

EIS

11.     Lolis 1 attests that the Opponent is the owner of the following Australian trade mark registration (‘Opponent’s Registration’)         :

Number

1945479

Trade Mark

 (‘Opponent’s Mark’)

Priority date:

2 August 2018

Specification:

Class 35:  Wholesaling and retailing services, including, such services provided online; department store, specialty store and direct mail and online retailing services, advertising and business services, retail and online marketing and sales promotions including sales promotions at point of sale or purchase, sales promotions by means of display, presentation and demonstration; marketing services, including, direct mail marketing and marketing by electronic means; administration and organisation of customer loyalty programmes; registry services (administration services being recording and maintaining lists and information for others); presentation of gift hampers for sale including online; retailing of gift hampers and arranging for delivery, excluding delivery services

Class 42:  Scientific and technological services and research and design services relating to environmental issues and environmental sustainability; research into environmental sustainability; environmental sustainability consultancy services; provision of information relating to environmental sustainability; information, advice and consultancy services relating to environmental issues and environmental sustainability; preparation and issue of reports, papers, publications and consultation papers all relating to the aforesaid services

12.     The Opponent also owns pending application 2237596 for the mark , filed on 17 December 2021, covering the same goods and services as the Opponent’s Registration.(‘Opponent’s Application’).  The Opponent’s Application faces a citation of the Trade Mark.

13.     Lolis 1 notes that both the Opponent’s Registration and Opponent’s Application cover ‘business services’ in class 35.

14.     The EIS also details the history of the Application and Lolis 1 exhibits a copy of the official file on the Application including the determinations of the Revocation Panel which considered whether acceptance of the Trade Mark should be revoked.  Lolis 1 declares that acceptance of the Application was not revoked a second time because the Revocation Panel did not interpret the Opponent’s registration as including a broad claim to ‘business services’.

EIA

15.      Petale analyses the specification of the Opponent’s Registration and notes that based on the use of semicolons in the specification, ‘business services’ forms part of the item ‘department store, specialty store and direct mail and online retailing services, advertising and business services, retail and online marketing and sales promotions including sales promotions at point of sale or purchase, sales promotions by means of display, presentation and demonstration’.  Petale declares that in this context, the Opponent’s business services relate only to ‘the operation of a department store, specialty store or direct mail and online retailing services, and not business services in a generalised sense’. 

16.     In contrast, Petale attests that the Applicant’s claim to ‘business services’ are qualified by the following limitation and exclusion in the specification of the Application:

·   all of the aforementioned in relation to consultancy and human resource management in the fields of engineering, technical services, ICT, auditing, accounting, finance, and authoring/writing of technical documents (‘Limitation’); and

·   none of the aforementioned in relation to wholesaling and retailing services, including department store services, specialty store services, direct mail services, online retailing services, or online marketing and sales promotions (‘Exclusion’).

17.     Petale annexes the results of searches of IP Australia’s Trade Mark Classification database for ‘business services’ and Trade Mark database for registered trade marks filed after 1 August 2018 covering ‘business services’.[4]  Petale declares that none of these marks contain ‘business services’ as a standalone term.

[4] Petale, Annexure AP-2.

EIR

18.     Lolis 2 disputes the Applicant’s interpretation of the scope of ‘business services’ in the Opponent’s Registration and confirms that the current practice of IP Australia is to regard ‘business services’ as being too vague.[5]  Lolis 2 notes that Part 14 paragraph 5.2.14 of the Manual which states that the term ‘business services’ is unacceptable and further specificity to be allowed in a specification, was added on 5 February 2021.

[5] Trade Marks Manual of Practice and Procedure (the ‘Manual’), Part 14.5 Principles of classification and finding the correct class for specified items.

19.     In addition, Lolis 2 annexes extracts of trade marks filed after 1 August 2018 which contain the general item ‘business services’ in the specifications.

Discussion

Section 44

20.     Section 44(2) relevantly provides:

(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

(a)it is substantially identical with, or deceptively similar to:

(i)a trade mark registered by another person in respect of similar services or closely related goods; or

(ii)a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

(b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

21.     In its SGP, the Opponent nominated the Opponent’s Registration in support of this ground.  I confirm that the Opponent’s Registration is in the name of a person other than the Applicant and has an earlier priority date.

22.     The next question is whether the Trade Mark is substantially identical with or deceptively similar to the Opponent’s Mark.  The Applicant does not dispute the Opponent’s contention that the Trade Mark is at least deceptively similar to the Opponent’s Mark.  I agree that the two marks are deceptively similar.  The words ‘Better Together’ in the Opponent’s Mark comprise the whole of the Trade Mark and the two marks will be pronounced the same.  The omission of the Globe Device from the Trade Mark is not sufficient to distinguish the two marks.  I believe that consumers seeing the Applicant’s Services offered under the Trade Mark will be caused to wonder whether those services have the same trade origin as the Opponent’s Services or are otherwise related to the Opponent.  I am satisfied that the Trade Mark is deceptively similar to the Opponent’s Mark.

23.     Accordingly, the crux of the issue is whether the Opponent’s Registration covers ‘business services’ generally and hence encompasses the specific business services claimed by the Applicant or similar services as defined in s 14.  The Opponent concedes that in some instances, the difference between a comma and a semicolon may result in a different interpretation of a specification but contends that this is not the case here because ‘[T]here is no preposition (a word governing and usually preceding a noun) such as the word including or namely that on a fair and logical reading restricts the scope of the advertising and business services to the field of retailing services given that advertising and business services are not examples of retail services’. 

24.     The Applicant argues that the use of semicolons in the specification splits the claimed services into 7 distinct categories:

i.Wholesaling and retailing services, including, such services provided online;

ii.department store, specialty store and direct mail and online retailing services, advertising and business services, retail and online marketing and sales promotions including sales promotions at point of sale or purchase, sales promotions by means of display, presentation and demonstration;

iii.marketing services, including, direct mail marketing and marketing by electronic means;

iv.administration and organisation of customer loyalty programmes;

v.registry services (administration services being recording and maintaining lists and information for others);

vi.presentation of gift hampers for sale including online;

vii.retailing of gift hampers and arranging for delivery, excluding delivery services

25.     The Applicant submits that the Opponent’s business services relate only to ‘department store, specialty store and direct mail and online retailing services’ and that ‘business services’ is not an acceptable item without further clarification.  It is the Applicant’s position that the updating of the Manual in 2021 to require that any claim to ‘business services’ be further specified to be acceptable only codified the existing practice and that the trade marks provided in Annexure AP-2 demonstrate the requirement to further specify ‘business services’ before 2021.

26.     Generally, commas are used to separate items in a list.  A semicolon is ‘used to indicate a more distinct separation between parts of a sentence than that indicated by a comma.[6]  ‘Normally the two parts of a sentence divided by a semicolon balance or complement each other as distinct from leading from one to the other, in which case a colon is usually more suitable’.[7]  Accordingly, on my reading of the class 35 specification of the Opponent’s registration, it contains the following categories of services:

[6] Macquarie Dictionary (online at 22 May 2025).

[7] Butterfield, Jeremy (ed), Fowler's Dictionary of Modern English Usage (online at 22 May 2025) ‘semicolon’ (def 1).

i.Wholesaling and retailing services, including such services provided online.

ii.Department store, specialty store, and direct mail and online retailing services.

iii.Advertising and business services.

iv.Retail and online marketing and sales promotions, including sales promotion at point of sale or purchase, sales promotion by means of display, presentation, and demonstration;

v.Marketing services, including direct mail marketing and marketing by electronic means;

vi.Administration and organisation of customer loyalty programmes;

vii.Registry services (administration services for recording and maintaining lists and information for others);

viii.Presentation of gift hampers for sale, including online;

ix.Retailing of gift hampers and arranging for delivery, excluding delivery services.

27.     In each case where an item is limited to the general category of services, the specification uses the word ‘including’ to make it clear that the following item falls within or relates to the preceding general category of services.  The general category is then ‘closed’ by using a semicolon.  Those items following a semicolon are individual claims as indicated by the use of commas between each item.  Accordingly, ‘business services’ is a general standalone claim and is not limited to business services relating to ‘department store, specialty store, and direct mail and online retailing services’.

28.     I disagree with the Applicant’s claim that ‘business services’ was not an acceptable description prior to the amendment to the Manual on 5 February 2021.  It is apparent from Annexure TVL-1 of Lolis 2 that ‘advertising and business services’ was allowed in the specification of a number of applications after 1 August 2018.  Moreover, the Applicant has not established that any of the trade marks covering a limited range of business services does so because of an objection by this office that ‘business services’ was too vague.  Those marks may cover more specific business services because the owner chose to claim a more restricted range of business services or so as to avoid or address a potential conflict with a prior mark.  Alternatively, it may be that the practice of requiring further specificity of ‘business services’ was inconsistent prior to February 2021.  Nevertheless, even if the item ‘business services’ should have been further specified at the time of examination of the Opponent’s Mark, this does not affect the scope of the registration as recorded on the Register of Trade Marks.  The Opponent is entitled to protection of the services covered by the registration which includes a general claim to ‘business services’.

29.     I am satisfied that the Opponent’s Registration covers ‘business services’ without limitation.  Hence the Opponent’s Registration covers services which are the same or similar to those claimed by the Applicant.  Accordingly, the Opponent has made out the requirement of its ground of opposition under s 44.

Decision

30.     The Opponent has established a ground of opposition under s 44 and I refuse to register the Trade Mark which is the subject of application 2229980.  If the Registrar is served with a notice of appeal, 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.

31. The parties have sought an award of costs and I see no reason to depart from the general rule that costs follow the event. Accordingly, I award costs against the Applicant under s 221 in the relevant amounts under Schedule 8 of the Regulations.

Tracey Berger

Hearing Officer

Delegate of the Registrar of Trade Marks

26 May 2025