Legacy Australia Incorporated v David Anthony Hamilton
[2025] ATMO 200
•23 September 2025
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Legacy Australia Incorporated to registration of trade mark application numbers 2358951 (class 36), 2358953 (class 41) and 2358954 (class 44) for the trade mark - LEAVE A LEGACY NOT A LOST LIFE - in the name of David Anthony Hamilton
Delegate:
Anne Makrigiorgos
Representation:
Opponent: Davies Collison Cave Pty Ltd
Applicant: Trademark Planet Limited
Decision:
2025 ATMO 200
Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 44, 58A and 60 pursued – ground of opposition established under s 60 – registration refused
Background
1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by Legacy Australia Incorporated (‘Opponent’) to registration of the trade mark LEAVE A LEGACY NOT A LOST LIFE (‘Trade Mark’) filed in the name of David Anthony Hamilton (‘Applicant’) on 24 May 2023 (‘Relevant Date’) with the following details:
[1] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’) and each reference to a regulation below is a reference to a regulation in the Trade Marks Regulations 1995 (Cth) (‘Regulations’)
Application Number
Services
2358951
Class 36: charitable fundraising; charitable fund raising; charitable collections
2358953
Class 41: education services
2358954
Class 44: psychological counselling
(collectively ‘Applications’)
2. The Applications were examined and advertised as accepted for possible registration on 25 October 2023.
3. On 22 December 2023, the Opponent filed Notices of Intention to Oppose registration of the Applications. On 22 January 2024, the Opponent filed its Statements of Grounds and Particulars (‘SGPs’). The Applicant filed Notices of Intention to Defend the Oppositions on 23 February 2024.
4. The same evidence was filed in connection with all three oppositions. The Opponent filed Evidence in Support (‘EIS’) on 24 May 2024. The Applicant filed Evidence in Answer (‘EIA’) on 23 August 2024. The Opponent filed Evidence in Reply (‘EIR’) on 18 November 2024.
5. The parties were given the opportunity to either request an oral hearing or a hearing by way of written submissions. The Opponent elected to be heard on the basis of written submissions, filing written submissions prepared by Davies Collison Cave Pty Ltd. The Applicant did not elect to be heard and did not file any written submissions. I have decided this matter based on the particulars set out in the SGPs, the evidence of the parties and the written submissions of the Opponent.
Grounds and onus
6. The SGP nominates grounds of opposition under ss. 42(b), 44, 58A[2] and 60. The Opponent carries the burden of establishing at least one ground of opposition[3] on the balance of probabilities.[4] The date at which the rights of the parties are to be determined is the Relevant Date.[5]
[2] While the SGPs nominates s 58A, the Opponent does not provide any submissions relating to this ground.
[3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[4] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelmann JJ).
[5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [4] (Kitto J) (‘Southern Cross’).
Evidence
7. The parties filed the following evidence in this matter:
Declarant and Position
Date
Annexures or Exhibits
EIS
Declaration of Graham Boyd, Chief Executive Officer of the Opponent (‘Boyd’)
23 May 2024
1 to 14
EIA
Declaration of David Anthony Hamilton, (‘Hamilton’)
23 August 2024
1 to 19
EIR
Second declaration of Graham Boyd (‘Boyd 2’)
18 November 2024
1 to 5
Summary of evidence
EIS
8. Boyd provides a history of the Opponent, a century old iconic Australian charity, founded on a promise made from one soldier to his dying mate to ‘look after the missus and the kids’ in the trenches of the Western Front during World War I. In 1923, Major General Sir John Gellibrand formed the Remembrance Club in Hobart. Another returning soldier, Lieutenant General Sir Stanley Savige, established a similar club in Melbourne which was named LEGACY. Today there are 44 Legacy Clubs across Australia, plus one in London, providing support to the families of the Australian Defence Force by volunteers including returned servicemen (known as ‘Legatees’).
9. The Opponent provides a broad range of developmental, social and financial support programs and services to war widows and their children under the name and house brand LEGACY including:
·helping beneficiaries access government benefits and pensions, covering transport costs for medical appointments and attendance at LEGACY events, supplementing pensions to ensure financial stability and assistance with education costs;
·access to accommodation, health, medical and psychological support services;
·providing social connection services by organising clubs, local events, holidays, and camps and organising visits and phone calls by volunteers or community social workers;
·nurturing the development of children, with a special priority given to education;
·providing charitable services, including fundraising services and volunteer services. A major fundraising event held by the Opponent is the Legacy Week Appeal which has been running since the 1940s. As part of this appeal, Legacy badges can be purchased for a donation.
(together ‘Opponent’s Services’).
10. Boyd states that LEGACY is a household name and an Australian icon. LEGACY is the name of the Northern Link tunnel in Brisbane (Legacy Tunnel), a park in Campbell ACT (Legacy Park) and a community hub in Tasmania (Legacy Park). On the Opponent’s 100th anniversary in 2023, a number of celebrations and campaigns took place including:
·Royal Australian Mint launching the Legacy Centenary coin;
·Australia Post issuing the Legacy Centenary stamp; and
·A Grevillea plant being named ‘LegacyFlame’.
11. Boyd exhibits details of twenty one activities and events hosted by the Opponent for veteran families from 2021 to 2023 across Australia including Legacy Junior Public Speaking Awards, Legacy Annual Kids Camp, The Legacy Charity Ride and organising Legacy Kokoda Treks in association with the Australian Defence Force.
12. Boyd provides details of the Opponent’s fundraising activities including Legacy Week where the Opponent sells special badges and other merchandise. The Opponent’s revenue is also derived from special events, sponsorships, dinners, bequests, and various other initiatives. Boyd exhibits details of events where the Opponent generates revenue including events held during Legacy Week.
13. Boyd claims that the Opponent also sells merchandise online at The merchandise includes pins/badges, pens, stickers, wristbands, cups, music, picnic blankets and centenary merchandise such as vintage tri-service bears and a centenary badge (‘Opponent’s Goods’).[6]
[6] The Opponent’s Goods and the Opponent’s Services will be collectively referred to as the ‘Opponent’s Goods and Services’.
14. Boyd details the Opponent’s support of Legacy Juniors which provides funding for school essentials, textbooks, uniforms, excursions, extra-curricular activities, camps, leadership development, adventurous training opportunities, and more recently with information technology. The Opponent also supports the widows and partners of veterans with educational needs to improve their employment prospects.
15. Boyd also details the Opponent’s care and support for families with congenital and acquired disabilities including intellectual, neurological, psychological or physical.
16. Boyd provides a table of the Opponent’s approximate revenue generated under the LEGACY mark for the period between the 2014 financial year to the 2022 financial year which revenue is between $1.1 million and $3.9 million and a table of the approximate annual amount spent on marketing the Opponent’s Goods and Services under the LEGACY mark for the same period which is between $49,000 and $392,000. Boyd exhibits the Opponent’s Annual Reports for the same period which contain the financial statements from which the revenue and marketing figures were obtained.
17. Boyd claims the LEGACY name has been used online through:
·the Opponent’s website since 2007 at exhibiting screenshots from the website including Wayback Machine screenshots from as early as 1998 to February 2024; and
·social media platforms: Facebook, Twitter, Instagram and LinkedIn exhibiting printouts from these social media sites.
18. Boyd provides examples of five other trade marks used by the Opponent namely:
LEGACY HOUSE and
19. Boyd claims that the Opponent receives television and print media coverage each year and exhibits a selection of media articles featuring the LEGACY trade mark.
20. Boyd provides a list of the Opponent twenty five Australian trade mark registrations which include the following trade marks relied upon in the SGPs. A list of the goods and services appear in Annexure A:
Number
Trade mark
Classes
Priority date
21. 709845
24, 30, 36 and 42
31 May 1996
22. 1303840
14, 24, 26, 30, 36 and 42
12 June 2009
1320910
LEGACY AUSTRALIA
14, 16, 24, 26, 30, 36, 43, 44 and 45
16 September 2009
1393495
LEGACY
36, 43, 44 and 45
10 November 2010
1576475
LEGACY
36
23 August 2013
1678602
LEGACY HOUSE
36 and 45
4 March 2015
1713092
LEGACY NSW
36
3 August 2015
1798004
41
21 September 2016
2124418
LEGACY
41
29 September 2020
2166416
41
25 March 2021
2199802
TORCH BEARERS
FOR LEGACY
14, 16, 21, 24, 25, 26, 28, 30, 36, 41, 43, 44 and 45
4 August 2021
EIA
23. In summary, Hamilton[7] declares that because the Opponent opposed the Applications, he reviewed all of the Opponent’s publicly available information including the Opponent’s registered trade marks and their association connection and meaning with the word LEGACY. This review ‘triggered’ him to conceive and create the slogan WE WILL REMEMBER THEIR LEGACY. As he had to prepare the EIA, he was claiming ownership and intellectual property rights in this slogan by lodging a business name application and then a trade mark application.
[7] Hamilton page 9.
24. Hamilton declares that the Trade Mark was created and conceived by him without any research of any kind from books, written material and/or the internet, or of other organisations individuals and/or entities including the Opponent.[8] He also declares his belief that there are substantial and fundamental differences between the Trade Mark and the Opponent’s marks Legacy, Legacy Australia, Legacy House, Legacy NSW, Legacy Smiles, Torch Bearers for Legacy, and We Will Remember Them and as a consequence, the Applicant is the legal and rightful intellectual property rights owner of Trade Mark.[9]
[8] Ibid page 11.
[9] Ibid.
25. Hamilton states that the Trade Mark has a meaning that there is an importance of not leaving a memory of your actions while you were alive, of being associated with having contributed to or have caused the loss of a human life.[10]
[10] Ibid page 4.
26. The balance of Hamilton consists primarily of comments and opinions on the Opponent and the Opponent’s trade marks including the LEGACY trade mark and generally, which do not constitute evidence and have no probative value nor relevance to the matter before me.
EIR
27. Boyd refers to communication between the Opponent and the Applicant on 24 January 2024, putting the Applicant on notice of the Opponent’s reputation and rights in the LEGACY mark and requesting withdrawal of the Applications. Boyd states that on the same day as this communication, the Applicant launched a charity with the name ‘Men as Mates – Leave a Legacy Not a Lost Life’ on the Applicant’s Facebook page, exhibiting a printout of the Facebook page. Donations to this charity are made through a GoFundMe page, exhibiting a copy of the GoFundMe page.
28. Boyd states that the Applicant filed a trade mark application for WE WILL REMEMBER THEIR LEGACY in class 36 for, inter alia, charitable fundraising on 25 January 2024 which has since lapsed and on 28 January 2024, the Applicant filed a trade mark application for BENEFITS FROM LEGACY LAST A LIFE TIME in class 36 for, inter alia, charitable fundraising which has also since lapsed.
29. Boyd provides a list of other trade marks filed by the Applicant which contain terminology or have themes that are commonly associated with Anzacs, Australian veterans of war and/or the Opponent and the work it carries out.
30. Boyd states that the actions of the Applicant in filing the trade mark applications which include the word LEGACY, and their timing, demonstrate that the Applicant had an intention to deceive or confuse when adopting the Trade Mark and filing the Applications.
Discussion and reasons
Section 60
The provisions of s 60 are reproduced below:
Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.
Note: For priority date see section 12.
To establish this ground, the Opponent must demonstrate the existence of another trade mark which had acquired a reputation in Australia before the Relevant Date. The Opponent must then establish that because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.
The SGP identifies the trade mark LEGACY, stylised versions of the trade mark LEGACY and other marks containing the word LEGACY as supporting this ground of opposition (‘Opponent’s Marks’). The SGP states that these trade marks have a significant reputation as a result of (i) their use and promotion by the Opponent since at least as early as the 1920s in relation to charitable services, education and counselling services, and related goods and services and (ii) the Opponent’s broad engagement with the Australian public and with the business community in charitable fund raising,
As a preliminary observation, each trade mark must be considered and assessed separately for the purposes of s 60.[11]
Reputation
[11] Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [89] (O’Bryan J) (‘Rodney Jane’); Qantas Airways Ltd v Edwards [2016] FCA 729, [160] (Yates J) (‘Qantas Airways’).
The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick (‘McCormick’) as referring to ‘the recognition of the [trade mark] by the public generally’ and includes the credit, image and values projected by the trade mark.[12]
[12] [2000] FCA 1335, [81] (‘McCormick’).
Further, Kenny J stated in McCormick that:
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product ... public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.[13]
[13] Ibid [86].
In Rodney Jane Racing Pty Ltd v Monster Energy Company, it was observed that:
The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[14]
[14] Rodney Jane (n 11), [83].
The reputation in the other trade mark must be amongst a ‘significant or substantial’ number of Australian consumers but this is tempered by the nature of the relevant market.[15] Here given the parties’ services both cover charitable services, psychological counselling and educational services, the relevant market is likely to include a great many Australians. Meanwhile, the existence and extent of reputation must be established as a matter of fact by the Opponent.[16]
[15] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).
[16] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [57].
The Opponent submits that the evidence establishes that since well before the Relevant Date, the Opponent has enjoyed a very substantial reputation in Australia in the Opponent’s Marks. In my opinion, the Opponent’s evidence shows significant use of the following marks for many years:
LEGACY
I am satisfied that each of these marks had a substantial and well established reputation at the Relevant Date. As s 60 requires I consider one earlier mark (or at least, one mark at a time), for present purposes, it is sufficient that I focus the enquiry on the word mark LEGACY (‘Word Mark’).
On the basis of the evidence provided by the Opponent, I am satisfied that at the Relevant Date, the Word Mark had acquired a reputation in Australia amongst a significant number of the Australian public in respect of, inter alia, charitable services, psychological counselling and educational services. The significant reputation enjoyed by the Word Mark can be readily inferred from the extensive use of the Word Mark since the 1920s including the many different forms of promotional activities detailed in the Opponent’s evidence such as celebrations, campaigns, media, special events, sponsorships, dinners, bequests, and various other initiatives for fund raising such as Legacy Week. I agree with the Opponent that the trade mark LEGACY is a household name and an Australian icon.
Accordingly, as I am satisfied that the Word Mark has a reputation in relation to charitable services, psychological counselling and educational services in Australia before the Relevant Date. Pursuant to s 60(b), consideration must now be given to whether, because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.
Likely to deceive or cause confusion
The concepts of ‘deceived’ and ‘confusion’ were considered in the New Zealand case of Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd wherein Richardson J observed:
“Deceived” implies the creation of an incorrect belief or mental impression and causing “confusion” may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.[17]
[17] [1979] RPC 410, 423 (citation omitted).
The likelihood of deception or confusion must be real and tangible.[18] The test for confusion under s 60 is not limited to whether consumers might think that the respective marks are the same. It is sufficient ‘if people would have cause to wonder’ whether the Applicant’s Services appearing in relation to the Trade Mark were being provided by the same person as the owner of the Word Mark.[19] To this end, it has been observed that ‘the threshold for confusion is not high’[20] and confusion can be established even if it ‘is unlikely to persist up to the point of, and contribute to, inducing sale’.[21] There is no limit to the nature of the confusion, and it is sufficient to cause confusion if the minds of the public are merely perplexed or mixed up as to the relationship between the two.[22]
[18] Southern Cross (n 5).
[19] Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd [2016] FCA 1406, [76] (Davies J).
[20] Australian Postal Corporation v Digital Post Australia [2013] FCAFC 153, [70] (North, Middleton and Barker JJ).
[21] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, [105] (Dodds-Streeton J).
[22] Coca-Cola Company v All-Fect Distributors Ltd [1999] FCA 1721, citing Pioneer Hi-Bred v Hy-Line Chicks [1979] RPC 410, 423.
The question is one purely of prior reputation. There is no requirement to demonstrate that the trade marks in question are substantially identical or deceptively similar within the meaning of the Act but the degree of similarity between the respective marks is a material consideration. It has been observed that:
Confusion cannot arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.[23]
[23] Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd [2010] ATMO 5 (Hearing Officer Lyons), [39] (emphasis in original). See also Qantas Airways (n 11), [142].
Thus, even if the respective marks are not deceptively similar, the s 60 objection may be established if the reputation of the Word Mark is such that use of the Trade Mark is likely to result in a real risk of confusion in the trade mark sense.
46. The notional person for the purposes of s 60 will be someone who is assumed to have an awareness of the Word Mark and the extent of the reputation in it.[24] The relevant comparison is between the reputation of the Word Mark derived from actual use of that mark, and a notional normal and fair use of the Trade Mark in respect of charitable services, psychological counselling and educational services.
[24] Delfi Chocolate Manufacturing SA v Mars AustraliaPty Ltd [2015] FCA 1065, [27] (Jessup J); Singtel Optus Pty Ltd v Optum Inc [2018] FCA 575, [205] (Davies J).
47. Also, of relevance is whether an applicant had an intention to deceive or cause confusion. Justices Dickson and McTiernan in Australia Woollen Mills Ltd v F S Walton & Co. Ltd stated:
The rule that if a mark or get-up for goods is adopted for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse, no doubt, is as just in principle as it is wholesome in tendency. In a question how possible or prospective buyers will be impressed by a given picture, word or appearance, the instinct and judgment of traders is not to be lightly rejected, and when a dishonest trader fashions an implement or weapon for the purpose of misleading potential customers he at least provides a reliable and expert opinion on the question whether what he has done is in fact likely to deceive. Moreover, he can blame no one but himself, even if the conclusion be mistaken that his trade mark or the get-up of his goods will confuse and mislead the public.[25]
[25] [1937] HCA 51; (1937) 58 CLR 641, 657.
The Opponent submits that there is a real tangible danger of deception or confusion in relation to the use of the Trade Mark having regard to:
·the inherent distinctiveness of the Word Mark when used in relation to charitable fundraising and collections, education and psychological counselling services;
·the close association of the Word Mark with the Opponent and the wide range of programs and services it offers and provides to the Australian community;
·Australian consumers who see the Trade Mark are likely to regard it as a variant, sub-brand or tag line of or otherwise associated with the Word Mark;
·the close resemblance and impression of similarity between the parties’ marks;
·the identical nature of the parties’ services;
·the clear suggestion in the evidence that the Applicant adopted the Trade Mark intending to take advantage of the Opponent’s reputation in the Word Mark including filing other trade mark applications containing terminology or themes associated with Anzacs, Australian veterans, and the Opponent and its work; and
·the Applicant’s clear intention to ‘trade off’ the reputation that the Opponent enjoys in its Word Mark such that it is reasonable to conclude that the Applicant had an intention to deceive or cause confusion.
49. I agree with the Opponent that the Word Mark is inherently distinctive when used in relation to charitable fundraising and collections, education and psychological counselling services and that there is a close association of the Word Mark with the Opponent and the wide range of programs and services it offers and provides to the Australian community. I also agree with the Opponent that the nature of the parties’ services are identical.
50. The Opponent states that the evidence clearly suggests that the Applicant adopted the Trade Mark intending to take advantage of the Opponent’s reputation in the Word Mark. I do not agree. The Applicant’s actions after the Relevant Date, namely filing a trade mark application and a business name application for a different trade mark, albeit one including the word LEGACY, a year after the Relevant Date, do not bear upon the Applicant’s reasons and state of mind for filing the Applications. Nor do I agree, on the evidence, that the Applicant had a clear intention to ‘trade off’ the reputation that the Opponent enjoys in the Word Mark or that it is reasonable to conclude that the Applicant had an intention to deceive or cause confusion.
51. Nonetheless, given the impressive reputation evidenced by the Opponent in the Word Mark, I am satisfied that it is likely that people seeing the Trade Mark used in relation to the Applicant’s Services would at least be caused to wonder whether those services were connected in some way with the Opponent and/or its Word Mark. While both marks only share the word LEGACY, that word has significance in the Trade Mark. It is an important word in the Trade Mark and an important word in the meaning of the Trade Mark.[26] One may question the level of resemblance between the respective marks, however in my view a sufficient level of resemblance exists, particularly as the Opponent has shown use of the Word Mark with other wording such as ‘Legacy in the Park’,[27] ‘Legacy Park’,[28] ‘Our challenge, their Legacy’[29] and The Legacy Challenge Ride’.[30] When you add to this the fact that the services are the same and the immense size and character of the Opponent’s reputation in the Word Mark, when considered on the balance of probabilities, instances of deception or confusion are likely to occur.
[26] Hamilton page 4.
[27] Boyd [21] Exhibit 6.
[28] Boyd [18] Exhibit 5.
[29] Boyd [21] Exhibit 6.
[30] Boyd [28] Exhibit 8.
52. I consider that there is a real and tangible risk of a substantial number of consumers recognising a connection between the Trade Mark and the Word Mark and that at least some of that number will be likely to be deceived or confused in the requisite sense, including consumers believing that the Trade Mark is a variant, sub-brand or tag line of, or otherwise associated with, the Word Mark. When regard is given to the element of reputation in the strongly distinctive Word Mark, that factor is sufficient to overcome the obvious points of difference which exist between the respective marks and to have the effect that it is likely that instances of deception or confusion would occur.
53. Accordingly, I find that the ground of opposition under s 60 has been established.
54. Having found the s 60 ground of opposition established, it is unnecessary that the remaining grounds under ss 42(b), 44 and 58A be considered.
Decision
Section 55 relevantly provides:
Decision
(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note: For limitations see section 6.
56. The Opponent has established on the balance of probabilities the ground of opposition under s 60. I accordingly refuse to register the Trade Mark. 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 Applications should be in accordance with the Court’s order or direction.
Costs
57. The Opponent has sought costs. I see no reason to depart from the general rule that costs follow the event. Accordingly, with respect to the opposition to trade mark 2358951, I award costs against the Applicant under s 221 in accordance with the relevant amounts in Schedule 8 of the Regulations and for the opposition to trade marks 2358953 and 2358594, I award reduced costs against the Applicant in the same manner as Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd.[31]
[31] [2001] ATMO 78 (Hearing Officer Williams).
Anne Makrigiorgos
Hearing Officer
Delegate of the Registrar of Trade Marks
23 September 2025
Annexure A
Number
Goods and services
58. 709845
Class 24: Flags, pennants; towels, including tea-towels
Class 30: Puddings, including Christmas puddings
Class 36: Charitable collections; organising charitable collections; fundraising activities; the provision of financial advice
Class 42: The provision of medical care and rehabilitation programmes; retirement home services; hostel services; nursing home services; and the provision of will kits
59. 1303840
Class 14: Badges, pins and brooches; coffee and tea mugs and cups, in this class; leather and silver key rings
Class 24: Flags, pennants; towels, including tea-towels
Class 26: Badges, pins and brooches not of precious metal, including badges, pins and brooches made of gun metal, bronze and enamel
Class 30: Puddings, including Christmas puddings
Class 36: Charitable collections; organising charitable collections; fundraising activities; the provision of financial advice
Class 42: The provision of medical care and rehabilitation programmes; retirement home services; hostel services; nursing home services; and the provision of will kits
1320910
Class 14: Jewellery, badges, pins and brooches; coffee and tea mugs and cups, in this class; leather and silver key rings; clocks
Class 16: Paper goods; printed matter; books and other publications, posters; photographs; wristbands of rubber or silicone
Class 24: Flags, pennants; towels, including tea-towels
Class 26: Badges, pins and brooches not of precious metal, including badges, pins and brooches made of gun metal, bronze and enamel
Class 30: Puddings, including Christmas puddings; biscuits; cakes; chocolate; confectionery; tea; coffee
Class 36: Charitable collections; organising charitable collections; fundraising activities; the provision of financial advice; distribution of funds; provision and funding of scholarships
Class 43: Retirement home services; hostel services; nursing home services
Class 44: Provision of medical care and rehabilitation programmes, counselling services
Class 45: Personal and social services rendered by others to meet the needs of individuals including assistance with pension applications and advocacy, providing outreach programmes for the disabled, providing fellowship and social activities; providing assistance with home safety and security measures; provision of will kits
1393495
Class 36: Charitable collections; organising charitable collections; fundraising activities; the provision of financial advice; distribution of funds; provision and funding of scholarships
Class 43: Retirement home services; hostel services; nursing home services
Class 44: Provision of medical care and rehabilitation programmes, counselling services
Class 45: Personal and social services rendered by others to meet the needs of individuals including assistance with pension applications and advocacy, providing outreach programmes for the disabled, providing fellowship and social activities; providing assistance with home safety and security measures; provision of will kits
1576475
Class 36: Real estate services including management of residential and commercial property, rental of residential and commercial property, financing and leasing of residential and commercial property; real estate services relating to property development; the provision of financial advice
1678602
Class 36: Charitable collections; fundraising activities; distribution of funds
Class 45: Personal and social services rendered by others to meet the needs of individuals including provision of outreach programmes, provision of fellowship and social activities
1713092
Class 36: Charitable collections; organising charitable collections; fundraising activities; the provision of financial advice
1798004
Class 41: Education and training services; organisation of competitions; organisation of exhibitions; organisation and conduct of charitable fundraising events in the nature of entertainment, sporting and cultural events; organisation of holiday camps and activities for children; provision of recreational facilities including public parks and playgrounds
2124418
Class 41: Education and training services; organisation of competitions; organisation of exhibitions; organisation and conduct of charitable fundraising events in the nature of entertainment, sporting and cultural events; organisation of holiday camp entertainment services and activities for children; provision of recreational facilities including public parks and playgrounds
2166416
Class 41: Education and training services; entertainment; sporting and cultural activities; organisation of competitions; organisation of exhibitions; organisation and conduct of charitable fundraising events in the nature of entertainment, sporting and cultural events; organisation of holiday camp entertainment services and activities for children; provision of recreational facilities including public parks and playgrounds; advisory, consultancy and information services in relation to the all of the foregoing including such services provided on-line
2199802
Class 14: Badges, pins and brooches; leather and silver key rings; key rings of precious metals; key fobs; key tags; key rings; Jewellery; charms for jewellery or key rings; clocks; watches; watch straps and bands for watches; cufflinks; coins; decorative articles of precious metals for personal use; wristbands of rubber or silicone
Class 16: Wrapping materials made of paper; stationery paper, cardboard sheets; wrapping materials made of cardboard, calendars; tag labels of paper or cardboard; advertisement boards of paper or cardboard; luggage identity labels of paper or cardboard; mailing labels of paper or cardboard; printed packaging materials of paper; printed packaging materials of cardboard; bottle envelopes of paper or cardboard; labels of paper or cardboard; printed luggage labels of paper or cardboard; cards; prints; cardboard and paper; printed matter; books and other publications, posters; photographs; paper (except paperhangings) stationery, and bookbinding; greeting cards; printed publications; magazines; instructional and teaching materials
Class 21: Tankards, including pewter tankards; holders for drinking vessels; water bottles; cups and mugs; household or kitchen utensils and containers; cookware and tableware, except forks, knives and spoons; combs and sponges; brushes, except paintbrushes; articles for cleaning purposes; glassware, porcelain and earthenware
Class 24: Flags, pennants; towels, including tea-towel; household linen
Class 25: Clothing, including aprons, t-shirts, polo tops, ties, scarves; headgear, including caps; footwear; belts, ties and other clothing accessories in this class
Class 26: Badges, pins and brooches not of precious metal, including badges, pins and brooches made of gun metal, bronze and enamel; buttons; lace, braid and embroidery, and haberdashery ribbons and bows
Class 28: Golf balls; soft toys, including teddy bears; games; toys; playthings; sporting articles; decorations for Christmas trees
Class 30: Puddings, including Christmas puddings; biscuits; cakes; chocolate; confectionery; tea; coffee; cocoa and artificial coffee; flour and preparations made from cereals; bread, pastries and confectionery; chocolate; ice cream, sorbets and other edible ices; sugar, honey, treacle; yeast, baking-powder; salt, seasonings, spices, preserved herbs; vinegar, sauces and other condiments; ice (frozen water)
Class 36: Charitable collections; organising charitable collections; fundraising activities; the provision of financial advice; distribution of funds; provision and funding of scholarships; Real estate services including management of residential and commercial property, rental of residential and commercial property, financing and leasing of residential and commercial property; real estate services relating to property development; the provision of financial advice; financial affairs; monetary affairs; advisory, consultancy and information services in relation to the foregoing; all of the foregoing including such services provided on-line
Class 41: Education and training services; coaching (training); career advisory, career counselling and career information services (educational and training advice); charitable services, namely education, training and academic mentoring; organisation of competitions; organisation of exhibitions for cultural, recreation or educational purposes; organisation and conduct of charitable fundraising events in the nature of entertainment, sporting and cultural events; organisation of holiday camps and activities including for children; organisation of recreational activities; provision of recreational facilities including public parks and playgrounds; provision of online electronic publications, not downloadable; provision of online videos, not downloadable; publication of educational materials, texts, books, and printed matter; publication of multimedia material online; provision of entertainment, sports and education facilities; entertainment; sporting and cultural activities; advisory, consultancy and information services in relation to the foregoing; all of the foregoing including such services provided on-line
Class 43: Retirement home accommodation services; retirement homes; hostel services; Services for providing food and drink; temporary accommodation services; advisory, consultancy and information services in relation to the foregoing; all of the foregoing including such services provided on-line
Class 44: Provision of medical care and rehabilitation programmes; nursing care; medical services; medical assistance; health care services; health counselling; counselling services; advisory, consultancy and information services in relation to the foregoing; all of the foregoing including such services provided on-line; Hospital nursing home services; Nursing homes; Aged care services (medical and nursing services); Respite care (medical and nursing services); Palliative care services (medical and nursing services)
Class 45: Personal and social services rendered by others to meet the needs of individuals; assistance with pension applications and advocacy, providing outreach programmes including for the disabled, providing fellowship and social activities; personal and social services regarding individual needs; providing assistance with home safety and security
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