Lord Howe Island Brewing Co. Pty Ltd v The Lord Howe Island Brewery Holdings Pty Ltd

[2025] ATMO 74

TRADE MARKS ACT 1995

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

Re:Opposition by Lord Howe Island Brewing Co. Pty Ltd to registration of trade mark application 2169019 (25, 32, 33, 40, 43) – LORD HOWE ISLAND BREWERY (Figurative) – in the name of The Lord Howe Island Brewery Holdings Pty Ltd

Delegate:	Nicholas Smith
Representation:	Opponent: Sonia Stewart of Counsel, instructed by FB Rice Pty Ltd Applicant: James Omond of By George Legal
Decision:	2024 ATMO 74 Trade Marks Act 1995 (Cth) - section 52 opposition: ss 42(b), 44, 58, 58A, 60, 62(b) and 62A considered – none established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Lord Howe Island Brewing Co. Pty Ltd (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of The Lord Howe Island Brewery Holdings Pty Ltd (‘Applicant’): 

Application Number:

2169019

Filing Date[1]:

14 Apr 2021

Goods and Services:

Class 25: Apparel (clothing, footwear, headgear)
Class 32: Alcohol-free beer; Alcoholic beers; Beer; Fruit beers; Ginger beer; Ginger beer (alcoholic); Ginger beer (non-alcoholic); Non-alcoholic beverages; Seltzers (beverages); Lager
Class 33: Hard seltzer (alcoholic); Alcoholic beverages (except beer); Distilled alcoholic beverages; Pre-mixed alcoholic beverages, other than beer-based; Carbonated beverages (alcoholic, except beers); Spirits (beverages)
Class 40: Brewing of beer; Brewing services
Class 43: Hospitality services (accommodation); Hospitality services (food and drink); Providing food and drink; Bar services; Restaurant services

(‘Applicant’s Goods and Services’)

Trade Mark:

(‘Trade Mark’)

Endorsements:

It is a condition of registration that the trade mark will only be used in respect of beverages originating from Lord Howe Island.
Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.

[1] Also known in this decision as the ‘relevant date’.

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

2. For completeness I note that the parties to this opposition are also the parties in a related matter in which the present Applicant successfully opposed the registration of trade mark number 2143310 for a figurative mark containing the words LORD HOWE ISLAND BREWING CO in the name of the Opponent.  This is one of the marks the Opponent particularises for the purposes of the s 44 ground (discussed later in this decision). The decision in that matter, The Lord Howe Island Brewery Holdings Pty Ltd v Lord Howe Island Brewing Co. Pty Ltd [2025] ATMO 60 (Hearing Officer Makrigiorgos) (‘Earlier decision’) issued on 19 March 2025 after the oral hearing of the present opposition.

3. Following the advertisement of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars, later amended (‘SGP’) on 14 August 2023.  The SGP raised grounds of opposition under ss 42(b), 43, 44, 58, 58A, 60, 61, 62(b) and 62A.  The Applicant filed a Notice of Intention to Defend on 8 September 2023. 

   Evidence

4. The parties filed the following evidence in this matter:

Declarant and Position	Date	Annexures or Exhibits
Evidence in support
Anthony Riddle, co-founder and owner of the Opponent (‘Riddle 1’)	13 December 2023	AR-1 to AR-36
Evidence in answer
Timothy Maxwell, director of the Applicant (‘Maxwell declaration’)	22 March 2024[2]	TM-1 to TM-19
Evidence in reply
Anthony Riddle (‘Riddle 2’)	3 June 2024	AR-37 to AR-41

[2] The declaration is dated 22 March 2023 but there is a Docusign record confirming that this is an error and the document was actually e-signed by the declarant on 22 March 2024.

1. Once the time allowed for filing evidence had ended, the parties were given an opportunity to request an oral hearing or a hearing by written submissions.  On 8 July 2024 the Opponent requested a hearing by video-conference.  The matter was set down for a hearing on 11 March 2025 and the matter was allocated to me.  In line with usual practice, a letter was sent to the parties on 23 December 2024 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 25 February 2025 (‘Opponent’s Submissions’).  The Applicant filed written submissions on 3 March 2025 (‘Applicant’s Submissions’).  At the hearing Sonia Stewart of Counsel represented the Opponent and James Omond of By George Legal represented the Applicant.   At the hearing, noting that the Earlier decision had not been released but was likely to issue shortly, I gave directions that the parties would have until 4 April 2025 to provide written submissions of not more than 5 pages on the relevance of this decision to this opposition.  On 4 April 2025 both the Opponent and Applicant filed the additional submissions contemplated, which I have treated as part of the Opponent’s Submissions and Applicant’s Submissions defined above.

2. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the   application was opposed has been established. 

   In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs and any oral submissions made by the parties.

   The Opponent

3. The Opponent is a brewing and distilling company established in May 2019 which is operated by Anthony Riddle and his business partner Christian Young.  

4. The Opponent has sought to apply for the trade marks listed below (‘Opponent’s Trade Marks’). 

Number	Trade Mark	Priority Date	Goods or Services
2143310 (‘310 Mark’)	15 Dec 2020	Class 32: Alcohol-free beer; Barley wine (beer); Beer; Beer-based cocktails; Extracts of hops for making beer; Ginger beer; Ginger beer (alcoholic); Homebrew kit concentrate of hopped wort for making beer; Low alcohol beer; Malt-containing beverages (beers); Non-alcoholic spirits; Cider, non-alcoholic; Seltzers (beverages); Alcohol-free wine; Non-alcoholic beverages Class 33: Alcoholic beverages (except beer); Carbonated beverages (alcoholic, except beers); Spirits (beverages); Digesters (liqueurs and spirits); Low alcohol spirits; Perry; Hard seltzer (alcoholic); Wine; Drinks containing wine (wine predominating); Sparkling cider (alcoholic) Class 35: Retailing of goods (by any means); Discount services (retail, wholesale, or sales promotion services); Advertising; Sales promotion services; Organisation and management of customer loyalty programmes; The bringing together, for the benefit of others, a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase the goods Class 40: Brewing of beer; Preservation of drink; Food and drink processing (for others) Class 41: Education services; Training; Entertainment; Hospitality services (entertainment) Class 43: Hospitality services (accommodation); Hospitality services (food and drink); Providing food and drink; Provision of information relating to the preparation of food and drink
2143311[3]	(‘Distilling Mark’)	15 Dec 2020	Class 32: Alcohol-free beer; Barley wine (beer); Beer; Beer-based cocktails; Extracts of hops for making beer; Ginger beer; Ginger beer (alcoholic); Homebrew kit concentrate of hopped wort for making beer; Low alcohol beer; Malt-containing beverages (beers); Non-alcoholic spirits; Cider, non-alcoholic; Seltzers (beverages); Alcohol-free wine; Non-alcoholic beverages Class 33: Alcoholic beverages (except beer); Carbonated beverages (alcoholic, except beers); Spirits (beverages); Digesters (liqueurs and spirits); Low alcohol spirits; Perry; Hard seltzer (alcoholic); Wine; Drinks containing wine (wine predominating); Sparkling cider (alcoholic) Class 35: Retailing of goods (by any means); Discount services (retail, wholesale, or sales promotion services); Advertising; Sales promotion services; Organisation and management of customer loyalty programmes; The bringing together, for the benefit of others, a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase the goods Class 40: Brewing of beer; Preservation of drink; Food and drink processing (for others) Class 41: Education services; Training; Entertainment; Hospitality services (entertainment) Class 43: Hospitality services (accommodation); Hospitality services (food and drink); Providing food and drink; Provision of information relating to the preparation of food and drink (‘Opponent’s Goods and Services’)

[3] This mark carries the endorsement “It is a condition of registration that the trade mark will only be used in respect of goods produced in or originating from LORD HOWE ISLAND.”

1. The application to register the 310 Mark was rejected in the Earlier decision and hence it cannot be relied upon in respect of the s 44 ground, but it is appropriate to set it out above as the Opponent still relies on that mark in respect of the other grounds particularised and gives evidence on its use of that mark.[4]

   [4] I accept the Opponent’s submissions at paragraph 4 of their additional submissions filed on 2 April 2025 on this point.

2. The relevant claims/statements in Riddle 1 and 2 can be summarised as follows.  I note that much of Riddle 2 appears to be submissions on the EIA that are unnecessary to summarise in any great detail:

   ·     On 8 June 2019 the co-founders of the Opponent met with the CEO of the Lord Howe Island Board to present their business plan to launch a series of beer and spirit products under the LORD HOWE ISLAND BREWING CO mark.  The Board then issued a business licence on 19 September 2019 which sets out the activities the Opponent is permitted to participate in being the collection of native and endemic flowers and seeds in Lord Howe Island for human consumption, production of (off island) beverages for importation, production of on island beverages and onsite sampling and tasting.

   ·     The Opponent then announced its brand and logo through social media on its social media on 15 July 2019, launched its beer and spirit products on 2 August 2019 and launched its business on Lord Howe Island on 20 September 2019.  It commenced selling its goods through other retailers from October 2019.

   ·     The Opponent and its products were promoted on the Lord Howe Island Tourism Association official website from 2021 onwards and the declarant has some recollection of promotion occurring after it became a member on 15 October 2019.  The Opponent also offers and promotes its goods under the LORD HOWE ISLAND BREWING CO and LORD HOWE ISLAND DISTILLING CO marks and Opponent’s Trade Marks (collectively ‘Opponent’s Marks’) on its websites, social media and on the websites of other retailers that sell the Opponent’s products.

   ·     The Opponent’s business involves the production of beverage products branded with the Opponent’s Marks that contain or are finished with botanicals which are endemic and/or native to Lord Howe Island. 

   ·     In 2020 Opponent became aware of attempts by a third party, Kentia Fresh Pty Ltd, to register a number of trade marks similar to its marks in 2019, which have now lapsed.  With respect to the Trade Mark, the Opponent has obtained a copy of the declaration of Timothy Maxwell dated 9 May 2023 (‘Maxwell Declaration May 2023’) and considers that it makes a number of false statements about the declarant and its connection to the Lord Howe Island community.  In particular the declarant states that the Applicant does not hold any licence that would enable it to gather and use the unique botanica on the island for the production of the goods.  Furthermore, the supposed launch date for the Applicant stated in the Maxwell Declaration May 2023 to be 11 December 2019 was in fact 11 December 2020.  The declarant considers that the neither the Maxwell Declaration nor the Maxwell Declaration May 2023 shows any use of the Trade Mark in respect of the Applicant’s Goods and Services before the Opponent’s use of the Opponent’s Marks.

   ·     The Applicant is not the proper owner of the marks, with the proper owner being Kentia Fresh Pty Ltd who applied for a number of related marks in 2019.  The declarant states that the evidence supplied from the Applicant regarding a claimed assignment from Kentia Fresh Pty Ltd to the Applicant consists of a document dated 16 March 2024 backdated to 19 July 2019 (the date the Applicant was incorporated) and refers to the Trade Marks applied for in 2019.

   ·     The Applicant also appears to have undertaken a strategy of deliberately copying the Opponent’s business activities, including applying to use native botanicals from Lord Howe Island for its products.

3. The annexures to the Riddle 1 and 2 declarations display various marketing material that use the Opponent’s Marks and provide support to the Opponent’s statements above.  I note that a significant majority of the evidence of marketing material provided by the Opponent postdates the date of filing the Trade Mark .  Some evidence from before the filing date was disclosed in the EIR, where the Opponent annexes various material indicating use of the Opponent’s Marks in 2019 and 2020 for certain merchandise as well as limited social media promotion.  The Opponent also provides confidential evidence of sales income and advertising spend which, noting the nature of the products traded in by the Opponent (beer and spirit products), is exceptionally low prior to the date of filing the Trade Mark.  The Opponent also provides limited evidence of media coverage, celebrity endorsement and awards and accolades for its beer and spirit products.

   The Applicant

4. The Applicant is an Australian company, incorporated on 19 July 2019, that operates a microbrewery that trades under the name Lord Howe Island Brewery on Lord Howe Island.  

5. The relevant claims/statements in the Maxwell declaration can be summarised as follows:

   ·     The Applicant has a related entity called Kentia Fresh Pty Ltd that along with the Applicant, operates the Applicant’s business and indeed operated the brewery business prior to the Applicant’s incorporation.  All intellectual property and goodwill in the brewery business has been assigned by deed from Kentia Fresh Pty Ltd to the Applicant.

   ·     The Applicant’s brewery is located at a site originally used to cultivate and sell Kentia palms.  Following the failure of that business in 2014 Kentia Fresh was incorporated and took over the lease of the site. As a result of the process of obtaining approval from the Lord Howe Island Board the site was initially opened up as a nursery and after approval, as a broader development including a brewery. On 19 June 2019 the Applicant registered various business names corresponding to its trading name and sought to register other trade marks, which have now lapsed.

   ·     The Applicant designed its plant and treatment facility in 2018 but was subject to extensive delays before it opened its brewery business under the Trade Mark on 28 May 2022.  Notwithstanding this the Applicant held a ‘beer launch’ on 11 December 2020 with various visual aids that used the wording THE LORD HOWE ISLAND BREWERY at a local bar.

   ·     The Applicant has been subject to various media coverage from as early as 2020 and has received awards for its products. 

6. The annexures to the Maxwell declaration display various material showing the history of the Applicant and the process of starting up the Lord Howe Island Brewery, as well as evidence of the ‘beer launch’ on 11 December 2020 and subsequent uses of the Trade Mark.   

   Grounds of Opposition, Onus and Standard of Proof

7. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 43, 44, 58, 58A, 60, 61, 62(b) and 62A but in its written submissions indicated that it no longer pressed the ss 43 or 61 grounds.  To successfully oppose the application the Opponent needs to establish one of the nominated grounds.  

8. The onus of proof in an opposition rests upon the Opponent.[5]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[6]  The date at which the rights of the parties are to be determined is the relevant date, which is also the priority date for the purposes of ss 44 and 60.[7]

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

   [6] Following Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [7] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [4] (Kitto J) (‘Southern Cross’), see also s 29(1) Trade Marks Act 1995 (Cth).

   Discussion

   Substantially identical marks

9. In considering this application, a threshold issue that is relevant to a number of the identified grounds of opposition is whether the Trade Mark is substantially identical to marks consisting of the word elements that comprise the Trade Mark (LORD HOWE ISLAND BREWERY) or the Opponent’s Marks.  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’) Windeyer J said:

   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.[8]

   [8] [1963] HCA 66, [12].

10. The Full Federal Court in Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd stated that:

    although everything depends on the particular circumstances of the case, some caution needs to be exercised before characterising words in a complex composite registered trade mark as an ‘essential feature’ of that mark in assessing the question of deceptive similarity. If such a characterisation is made too readily, it effectively converts a composite mark into something quite different.[9]

    [9] [2004] FCAFC 196, [100] (Moore, Sackville and Emmett JJ).

11. While this statement was made in respect of deceptive similarity, it is equally relevant when considering substantial identity.  The Trade Mark consists of the words LORD HOWE ISLAND BREWERY, being a geographical term and a descriptive term, in a stylised form.  It also contains a distinctive device containing two palm trees and two mountains[10].  In the absence of the distinctive device and stylisation the Trade Mark would be utterly descriptive.  Hence, I consider that the essential features of the Trade Mark includes both the word elements and the device element.  In the absence of such a device I do not find that there is a total impression of resemblance that emerges from the comparison between the Trade Mark and the words LORD HOWE ISLAND BREWERY.  For similar reasons the Trade Mark is not substantially identical to marks consisting of the word elements that comprise the Opponent’s Trade Marks (LORD HOWE ISLAND BREWING CO or LORD HOWE ISLAND DISTILLING CO) or the Opponent’s Trade Marks which themselves consist of the descriptive word elements alongside additional stylisation and device elements that further distinguish themselves from the Trade Mark.   Finally, for the same reasons, I find that the Trade Mark is not substantially identical to the trade marks applied for on 17 July 2019 by Kentia Fresh Pty Ltd, discussed later in the decision,  namely LORD HOWE ISLAND LARGER, THE LORD HOWE ISLAND BREWERY and THE LORD HOWE ISLAND BEER COMPANY.

    [10] It may be that the device is a stylised image of Mt Gower and Mt Lidgebird being two significant volcanic mountains in Lord Howe Island, but I do not consider that the ordinary reasonable consumer of the Applicant’s Goods and Services to have sufficient familiarity with the geography of Lord Howe Island to identify them as such; rather they would simply be seen as a device consisting of palm trees, water and two mountains.

    Section 62

1. Section 62 of the Act is reproduced below:

   62 Application etc. defective etc.

   The registration of a trade mark may be opposed on any of the following grounds:
   (a) that the application, or a document filed in support of the application, was amended contrary to this Act;
   (b) that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars.
   Note: For file see section 6.

2. The Opponent does not rely on the ground under s 62(a). The ground under s 62(b) of the Act is particularised in the SGP as follows:

   The Opposed Mark obtained acceptance under the section 44(4) of the Trade Marks Act 1995 which provides for acceptance on the basis of prior continuous use in the face of cited marks.

   Under the provisions of section 217A of the Trade Marks Act and the Freedom of Information Act 1982 (Cth) (together, FOI Request), the Opponent obtained a copy of the IP Australia file for the Opposed Mark.

   The materials provided by IP Australia in response to the FOI Request (the Materials) included a redacted copy of the evidence filed by the Applicant to support acceptance under section 44(4), namely, the Declaration of Timothy Maxell dated 9 May 2023 with Annexures TM-1 to TM-12 (Maxwell Declaration) and an accompanying letter dated 9 May 2023 addressed to Ms Clara Witheridge of IP Australia (Letter).

   The Opponent has reviewed the Materials and believes there are a number of errors and/or instances of false information contained in the evidence and/or representations submitted to the Registrar by way of the Maxwell Declaration and the Letter. By way of example, at paragraph [33] in the Maxwell Declaration, a statement about a “beer launch” held by the Applicant at the Crooked Post Bar on Lord Howe Island on “11 December 2019” is false. This date of 11 December 2019 is also referred to in the Letter on page 4. The event did not occur until 11 December 2020 which is well after the priority date of the Opponent’s Logo Marks and the images contained at Annexure TM-10 of the Maxwell Declaration show this 2020 date clearly. The evidence also contains false statements about the Opponent, for example, that the Opponent does not hold a liquor license on Lord Howe Island. There are numerous other statements in the Letter and content in the Maxwell Declaration which are incorrect or false and which the Opponent will address in detail by way of evidence in support of its opposition to the Opposed Mark.

   The Registrar therefore accepted the application in the face of the Opponent’s earlier filed marks on the basis of evidence or representations that were false in material particulars, within the meaning of s 62(b).

3. Section 62(b) requires that representations were false in material particulars and that there was a causal connection between those false representations and the acceptance of the application for the trade mark by the delegate of the Registrar.[11] It is not sufficient that the representation be false in a respect that is relevant to the application of the Act, properly construed and applied, rather the falsity must be in a way that was material to the decision to accept the application for registration.[12]  A representation must be false at the time that it was made in order to be relevant.[13] Section 62(b) can encompass all manner of falsehoods, be they deliberate or innocent.[14]  It is not enough that a statement relied upon by a delegate during examination is imprecise or vague.[15] There are decisions of this office where reliance on inaccuracies about an applicant’s use, including as it relates to s 44, has resulted in s 62(b) being established.[16]

   [11] Dunlop Aircraft Tyres Ltd v Goodyear Tire & Rubber Co [2018] FCA 1014, [230]-[231] (Nicholas J)

   [12] Caporaso Pty Ltd v Mercato Centrale Australia Pty Ltd [2024] FCAFC 156, [96] (Katzmann, Wheelahan and Hespe JJ).

   [13] Levi Strauss & Co v Bon Levi (1999) 44 IPR 431, 434 (Hearing Officer Thompson).

   [14] Analyses Conseils Informations ACI v Iguassu (No 16) Pty Ltd & Al Gray Nominees Pty Ltd [2001] ATMO 4 (Hearing Officer Nancarrow); Laboratoires La Prairie v Wendy Stockden-Brock [2005] ATMO 80 (Hearing Officer Nancarrow) (‘Laboratoires’).

   [15] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2003] FCA 1502, [61]-[62] (Wilcox J); Inventions Marketing Pty Ltd v Aqualoc Pty Ltd (2002) 55 IPR 600, 615 (Hearing Officer Thompson); and GAP (ITM) Inc v General Pants Co Pty [2004] ATMO 12, [45]-[52] (Hearing Officer McDonagh).

   [16] Arbormasters Pty Ltd v Arbormaster Training Inc [2007] ATMO 7 (Hearing Officer Thompson); Laboratoires (n 6); Link Recruitment Pty Ltd v Link Employment and Training Inc [2006] ATMO 39 (Hearing Officer Nancarrow).

4. The Application was accepted pursuant to s 44(4) on the basis of the material in the Maxwell Declaration May 2023 and accompanying submissions. For clarity I extract the relevant provision of s 44(4) of the Act below.

   Section 44 - Identical etc. trade marks

   (1)…

   (2)…

   (3)…

   (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.

5. Section 44(4) only concerns the question as to whether an applicant can demonstrate that it used its trade mark for a period beginning from before the priority date of the cited trade mark for similar/closely related goods/services. Evidence or representations other than those specifically related to s 44(4) are not relevant as they have no causal connection to the decision by the Registrar to accept the application for registration. For example, in reference to a representation referred to in the SGP, regardless of whether the Applicant made the representation that the Opponent does not hold a liquor licence or the veracity of the representation, there can be no causal connection between this and the decision of the Examiner to accept the Trade Mark pursuant to s 44(4), which solely concerns the use of the Trade Mark.

6. Equally while the Opponent correctly identifies that paragraph 33 of the Maxwell Declaration dated 9 May 2023 is false in that it specifies an incorrect launch date for the Applicant (11 December 2019 when was in fact 11 December 2020) no causal connection between that falsehood and the decision to accept the Trade Mark can be demonstrated, as the Examiner (in their Evidence Summary Sheet discussed below) correctly identified this statement as an error and (based on the signage in Exhibit 28 of Maxwell Declaration dated 9 May 2023) correctly identifies the “beer launch” as occurring in December 2020.

7. The Examiner prepared an Evidence Summary Sheet summarising the material said to be relevant to the Examiner’s application of s 44(4) in the face of a citation of the 310 Mark (with a priority date of 15 December 2020) pursuant to s 44(1) and (2)). A number of these statements appear to refer to material that could not support the application of s 44(4) which solely concerns prior use of the Trade Mark. As s 62(b) only applies to evidence or representations that materially impact on the decision of the Examiner to accept the mark under s 44(4), I only need to consider whether the evidence identified below relied upon by the Examiner in reaching the conclusions on the evidence were false in material particulars (lettering has been added for easier identification):.

   A.Exhibit TM-10 shows the brand promoted for a beer tasting launch in December 2020 prior to the conflicting mark’s filing date of 15 December of that year.

   B.The exhibits of the mark in use in the course of trade is in relation to beer (cl 30) and by extension, brewing services (cl 40).

   C.The evidence demonstrates use and recognition of the mark prior to the filing date of the cited trade mark.

   D.The evidence demonstrates that the subject mark has been used in the course of trade in connection with brewing and brewed goods.

8. Looking at the relevant notations made by the examiner, did the Applicant make representations or file evidence that it used the Trade Mark prior to 15 December 2020 that were false in material particulars?

9. I have reviewed the Maxwell Declaration dated 9 May 2023. I consider that it does not establish prior use of the Trade Mark sufficient for 44(4) of the Act. Specifically, neither the Maxwell Declaration nor the accompanying submissions state, submit or assert that there was use of the Trade Mark prior to 15 December 2020. I entirely accept the Opponent’s Submissions on this point and note that at the oral hearing the Applicant did not make any submissions to the contrary.

10. The Applicant’s submissions in support of the application before the Examiner did not assert use of the Trade Mark, but rather asserted use of the words LOWE HOWE ISLAND BREWERY prior to the 15 December 2020 date (as discussed in paragraphs 18-20 above, LORD HOWE ISLAND BREWERY is not substantially identical to the Trade Mark).

11. Similarly, the Maxwell Declaration dated 9 May 2023 asserts use of the words LORD HOWE ISLAND BREWERY and not the Trade Mark.

12. The Application should not have been accepted under s 44(4) because that evidence does not show any use of the Trade Mark prior to 15 December 2020. Indeed, at no point did the Applicant provide any evidence or make any submissions on that point; rather they appear to relate to, at their highest, material that may be relevant to an application under 44(3)(a) or (b). Specifically, they assert use of the word mark LORD HOWE ISLAND BREWERY in planning stages and at a ‘beer launch’ (which again is irrelevant to consideration of s 44(4)). In the absence of any representations or submissions relevant to s 44(4) properly applied, I cannot identify any representation causally connected to the decision to accept the Trade Mark that was itself false in material particulars.

13. The Opponent in its submissions identifies various other statements in the Maxwell Declaration dated 9 May 2023 that are said to support a ground of opposition under s 62(b). However, regardless of the veracity of those statements (which I do not need to decide) those statements are again plainly not causally connected to the decision by the Examiner to accept the Trade Mark under s 44(4). These include, for example, the statements referred to in paragraphs 99 and 100 of the Applicant’s Submissions relating to whether the Opponent holds a liquor permit or the absence of a connection between the Opponent and Lord Howe Island. For completeness, I do not accept the Opponent’s Submissions at paragraphs 92 and 98 that the Applicant’s evidence was ‘misleading by that omission’ (the stated omissions being that the beer launch on 11 December 2020 was 15 months after the Opponent supposedly commenced use of the Opponent’s Marks and that the applications for trade marks by Kentia Fresh Pty Ltd occurred after the Opponent launched its product on social media) .

14. Section 62(b) concerns evidence or representations that were themselves false in material particulars which led to the decision by the examiner to accept the Trade Mark; the Opponent has identified no cases, and I am unaware of any, that extend the operation of s 62(b) to misleading statements or failure to include evidence; it solely concerns evidence or representations that are actively false in material particulars.

15. In summary, the trade mark proceeded to acceptance under s 44(4) on the basis of material that, properly analysed, should not have supported acceptance, and the Applicant, in the Maxwell Declaration May 2023 and related submissions, does not assert or contain any evidence said to support prior use of the Trade Mark for the purposes of s 44(4). As such, I cannot identify any evidence or representations that were false in material particulars that caused the acceptance of the Trade Mark pursuant to s 44(4). Section 62(b) requires a causal connection between the false representations and the decision to accept.

16. Consequently, I find that the Opponent has failed to establish the ground of opposition under s 62(b).

    Section 44

17. The relevant provisions of s 44 and s 10 are reproduced below:

    Section 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)it 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.

    Note 1: For deceptively similar see section 10.
    Note 2: For similar goods see subsection 14(1).

    (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.

    Note 1: For deceptively similar see section 10.
    Note 2: For similar services see subsection 14(2).
    Note 3: For priority date see section 12.

    Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A. …

    (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. 

    Note:  For limitations see section 6.

    (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:

    (c)beginning before the priority date for the registration of the other trade mark in respect of:

    (iii)          the similar goods or closely related services; or

    (iv)           the similar services or closely related goods; and

    (d)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.

    Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
    Note 2: For predecessor in title see section 6.
    Note 3: For priority date see section 12.

    Section 10 - Definition of deceptively similar

    For the purposes of this Act, 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.

18. To successfully oppose the application pursuant to s 44 the Opponent must establish the requirements of s 44(1) and (2), i.e. that at least one of the trade marks upon which it relies, being a trade mark registered or sought to be registered[17] by a person other than the Applicant:

    ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

    ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

    ·     is in respect of similar goods/services, and/or services/goods which are closely related to, the Applicant’s Goods and Services (‘the third requirement’).

    [17] or an international registration designating Australia protected or sought to be protected

19. In the event that each of these requirements is satisfied by the Opponent it may still be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4), that there has been honest concurrent use of the Trade Mark, there are other circumstances which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark. 

20. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Marks but as Trade Mark No. 2143310 has been rejected by this office in the Earlier decision, I only need to consider the Distilling Mark.  The Opponent’s Submissions do not address the Distilling Mark, rather they are limited to the 310 Mark, but as the Distilling Mark has been particularised, it is appropriate to address it under this ground.

21. The Distilling Mark has a priority date that is earlier than the priority date of the Trade Mark.  In addition, both the Trade Mark and Distilling Mark are registered or sought to be registered for a variety of corresponding goods and services in classes 32, 33, 40 and 43. The third requirement is also satisfied.

    Substantially identical and/or deceptively similar

22. Having already concluded in paragraph 20 above that the Trade Mark and the Distilling Mark are not substantially identical, I will now consider whether the Trade Mark and Distilling Mark are deceptively similar.

23. The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell:

    On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. 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 [trade mark].[18]

    [18] Ibid [13].

24. The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[19] conveniently stated the relevant principles, which were summarised in The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd[20] as follows:

    [19] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

    [20] [2023] FCA 482, [55] (Jackman J).

    (a)the resemblance between the two marks must be the cause of the likely deception or confusion;[21]

    [21] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69] (Yates, Abraham and Rofe JJ).

    (b)in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[22]

    [22] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).

    (c)the marks should not be compared side by side;[23]

    (d)the effect of spoken description must be considered; if a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods (or services), then similarities both of sound and of meaning may play an important part;[24]

    (e)the focus is upon the effect or impression produced on the mind of potential customers of the goods (or services) in relation to which the two marks are used and in the case of the registered mark, allowing for ‘imperfect recollection’;[25]

    (f)the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the marks prior to filing, or any reputation associated with the registered mark;[26]

    (g)the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods or services covered by the registration), with the impression that the notional buyer would have of notional and normal fair use of the opposed mark;[27]

    (h)“deceived” implies the creation of an incorrect belief or mental impression; “causing confusion” may merely involve “perplexing or mixing up the minds” of potential customers; [28]

    (i)the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected, having regard to the character of the customers who would be likely to buy the goods in issue;[29]

    (j)it is not necessary to establish actual probability of deception or confusion, but a mere possibility of confusion is not enough. There must a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be “a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source”;[30]

    (k)evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[31] and

    (l)any intention to deceive or cause confusion may be a relevant consideration but is not required.[32]

    [23] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).

    [24] Ibid.

    [25] Ibid.

    [26] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [70], [77]-[80] (Yates, Abraham and Rofe JJ).

    [27] Shell, [12].

    [28] Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, 122 [39] (Black CJ, Sundberg and Finkelstein JJ) quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62 (Richardson J).

    [29] Campomar Sociedad Limitada v Nike International Limited (2000) 202 CLR 45, 79 [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).

    [30] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50(ii)] (‘Woolworths’) (French J) restating principles from Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-595 (Kitto J).

    [31] Australian Woollen Mills Ltd, 658.

    [32] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) (‘Hashtag Burgers’) citing Australian Woollen Mills, 657.

1. Furthermore the High Court, in the same case, noted the following[33]:

   In considering the likelihood of confusion or deception, "the court is not looking to the totality of the conduct of the defendant in the same way as in a passing off suit"[34]. In addition to the degree of similarity between the marks, the assessment takes account of the effect of that similarity considered in relation to the alleged infringer's actual use of the mark[35], as well as the circumstances of the goods, the character of the likely customers, and the market covered by the monopoly attached to the registered trade mark[36]. Consideration of the context of those surrounding circumstances does not "open the door" for examination of the actual use of the registered mark, or, as will be explained, any consideration of the reputation associated with the mark.[37]

   [33] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [33] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

   [34] New South Wales Dairy Corporation v Murray-Goulburn Co‑operative Co Ltd [1989] FCA 124; (1989) 86 ALR 549, 589 (emphasis added) (Gummow J), approved in Henschke (2000) 52 IPR 42, 62 [44] (Ryan, Branson and Lehane JJ), Hashtag Burgers,  [64], Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel [2021] FCAFC 8, [27], PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (2021) 285 FCR 598, [97] (see also 626 [111]) and Swancom (2022) 168 IPR 42, [73].

   [35] Act, s 68.

   [36] New South Wales Dairy [1989] FCA 124; (1989) 86 ALR 549, 589.

   [37] Swancom (2022) 168 IPR 42, 59 [89]. See also Henschke (2000) 52 IPR 42, 62 [44].

2. As stated above, for the purposes of considering deceptive similarity, the reputation of the Distilling Mark is not a relevant factor.[38]  Distinctiveness is a factor that can legitimately be taken into account when considering deceptive similarity.[39]

   [38] See Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [93] (Yates, Abraham and Rofe JJ) and, albeit in the s120(1) context Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [49] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

   [39] Stone & Wood Group Pty Ltd v Intellectual Property Development Corporation Pty Ltd (2018) 129 IPR 238, [66] (Allsop CJ, Nicholas, Katzmann JJ).

3. In the present case, the only similarity between the marks is the shared use of the geographic term LORD HOWE ISLAND.  The marks otherwise contain different additional wording (albeit descriptive) as well as significantly different device elements and stylisation. 

4. Justice Stephen observed[40] in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd that:

   There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor’s trade name will render the latter immune from action (Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39, at p 42, per Lord Simonds). As his Lordship said (1946) 63 RPC, at p 43, the possibility of blunders by members of the public will always be present when names consist of descriptive words - “So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be.” The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe.[41]

   [40] Albeit in relation to trade practices.

   [41] 140 CLR 216, 229.

5. A finding of deceptive similarity in this case would in effect infer that the Opponent has a monopoly on the use of the descriptive geographic term ‘Lord Howe Island’ in respect of Opponent’s Goods and Services. The Opponent does not have such a monopoly. Any confusion that might occur stems from the use of the descriptive term in the respective marks and not from the deceptive similarity of the parties’ trade marks within the meaning of the requirements under the Act.

6. The Opponent directed me to the decision of this office in The BBQ Store Pty Ltd v BBQ Factory Pty Ltd[42] in which the marks depicted below were found to be deceptively similar.  However, in that case the Hearing Officer noted the similarity of the respective devices as well as the wording, as they shared the same conceptual motif and indeed the flame element merely reinforced the wording.  In the present case each of the devices is visually and conceptually different and that, combined with the differences in stylisation and wording, results in an outcome different to the one in the above case.

   [42] [2019] ATMO 132 (Hearing Officer Richards)

7. I find that the Opponent has failed to establish the ground of opposition under s 44.

   Section 58

8. Section 58 is reproduced below:

   Section 58. Applicant not owner of trade mark

   The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

   Note:For applicant see section 6.

9. The owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier.  It is now well established at law that in order to succeed under this ground of opposition the Opponent must establish three factors.  These are:

   · that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first factor’);[43]

   · that the Applicant’s Goods are the ‘same kind of thing’ as the goods for which the trade mark(s) relied upon by the Opponent was used (‘the second factor’);[44] and

   ·     that a person other than the Applicant has the earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark by the Applicant (‘the third factor’).[45]

   [43] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375 (Gummow J)..

   [44] Re Hicks’ Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).

   [45] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).

10. The ground based on s 58 was particularised in the SGP as follows:

    The Opposed Mark is substantially identical to the following trade marks which have been used continuously in Australia before the priority date of the Opposed Mark and in relation to the same or similar goods/services in relation to which the Opposed Mark is sought to be registered:

    (i) LORD HOWE ISLAND BREWING CO

    (ii) LORD HOWE ISLAND DISTILLING CO (marks (i) and (ii) being the “Opponent’s Word Marks”)

    (iii) LORD HOWE ISLAND BREWING CO & Device (application 2143310)

    (iv) LORD HOWE ISLAND DISTILLING CO (application 2143311)

    (Marks (iii) and (iv) being the “Opponent’s Logo Marks”)

    The Opponent’s Word Marks were first used in Australia as early as May 2019 and use of the marks has been continuous since that date.

    The Opponent’s Logo Marks were first used in Australia as early as July 2019 and use of the marks has been continuous since that date.

    The Opponent’s Word Marks and the Opponent’s Logo Marks have been used in relation to alcoholic beverages including distilled spirits and beers and associated services as well as merchandise including clothing, headwear and glassware.

    Further or in the alternative to the above, the Applicant was not the owner of the Opposed Mark at the date of its application (14 July 2021), because the owner of the Opposed Mark was Kentia Fresh Pty Ltd, within the meaning explained by the Full Federal Court in Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83

11. With respect to the first four paragraphs of the SGP, given that I have found that the marks referred to in the SGP are not substantially identical to the Trade Mark the Opponent has failed to establish the first factor, I find that the Opponent has failed to establish the ground of opposition pursuant to s 58 in respect of these paragraphs.

12. The particulars raised in the final paragraph are more complex and must be considered separately.  The Opponent’s submits that the proper owner of the Trade Mark at the relevant date was Kentia Fresh Pty Ltd.  This is because on 17 July 2019 Kentia Fresh Pty Ltd (through business names owned by it) applied to register the following as trade marks (‘Kentia Marks’):  trade mark number 2023541 for LORD HOWE ISLAND LAGER, trade mark number 2023543 for THE LORD HOWE ISLAND BREWERY and trade mark number 2023545 for THE LORD HOWE ISLAND BEER COMPANY.

13. The Applicant then submits that as of 17 July 2019, Kentia Fresh Pty Ltd was the owner of the Kentia Marks and that it held the intention to use the Kentia Marks for the Applicant’s Goods and Services.  The applications for the Kentia Marks were ongoing at the relevant date and hence Kentia Fresh Pty Ltd was the owner of the Trade Mark at the relevant date.  The retrospective assignment by Kentia Fresh Pty Ltd to the Applicant of the Kentia Marks does not change the status of the ownership of the Trade Mark as at the relevant date, and indeed amounts to a concession by the Applicant that at the relevant date the Applicant was not the owner of the Trade Mark.

14. It is not necessary to discuss the Applicant’s Submissions when addressing the arguments above.  The first factor (referred to above) is that the Trade Mark must be identical, or substantially identical, to the trade mark(s) relied upon by the Opponent, in this case the Kentia Marks.  To reiterate my findings in paragraph 20 in the present context, each of the Kentia Marks consist of highly descriptive phrases for their claimed goods/services. Each application has since lapsed, presumably because of that lack of inherent distinctiveness. Each was plainly not registrable in the absence of evidence of acquired distinctiveness (evidence that has not been offered in the present proceedings). The mere fact that the Trade Mark includes similar descriptive phrasing does not render it similar, let alone substantially identical to any of the Kentia Marks.   There is no other evidence before me of any use or intention to use the Trade Mark (or a substantially identical mark) by Kentia Fresh Pty Ltd prior to the relevant date.  As the first factor is not satisfied, I find that the Opponent has failed to establish the ground of opposition pursuant to s 58 in respect of the final paragraph as particularised.

    Section 58A

15. Section 58A is reproduced below:

    Section 58A – Opponent’s earlier use of similar trade mark

    (1)This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:

    (a)subsection 44(4); or

    (b)a similar provision of the regulations made for the purposes of Part 17A.

    Note: Subsection 44(4) prevents rejection of an application for registration of a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark whose registration is being sought where the first-mentioned trade mark has been continuously used since before the priority date of the other trade mark.

    (2)The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:

    (a)first used the similar trade mark in respect of:

    (i)    similar goods or closely related services; or

    (ii)   similar services or closely related goods;

    before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and

    (b)has continuously used the similar trade mark in respect of those goods or services since that first use.

    Note:  For predecessor in title see section 6.

16. For s 58A to apply, the trade mark must have been accepted by the decision maker (be it an examiner in the examination process or a hearing officer in an opposition) under the provisions of s 44(4). In this matter, when considering the s 44 ground of opposition, I have found that the Trade Mark is not substantially identical with, or deceptively similar to, the Distilling Mark and hence I have not accepted the mark under s 44(4). As such, this ground of opposition is not available to the Opponent.

    Section 60

17. Section 60 is reproduced below:

    Section 60 - 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.

18. To establish a ground of opposition under s 60, an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.

19. Some of the relevant principles of s 60 are summarised in the recent case of Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods as follows:

    The first of these elements calls for a factual inquiry into the extent and nature of the reputation that had been acquired by the existing trade mark – here, the Aachi mark – in Australia. The second element calls for an assessment of the likelihood of deception or confusion arising from use of the new trade mark as a consequence of that reputation.

    The existing trade mark need not even be registered for s 60 to be engaged (Fry Consulting Pty Ltd v Sports Warehouse Inc [2012] FCA 81; 201 FCR 565 (Fry Consulting) at [121] (Dodds-Streeton J); Qantas Airways Ltd v Edwards [2016] FCA 729 (Qantas Airways) at [144] (Yates J)). The classes of goods and/or services in respect of which the existing trade mark has been used, and those in which the new trade mark is intended to be used, may be very relevant to the likelihood of confusion (see Qantas Airways at [143] and GAIN Capital UK Limited v Citigroup Inc (No 4) [2017] FCA 519 at [148] (Markovic J)), but the fact that the classes are not the same cannot be determinative. The reputation of the existing trade mark need not relate specifically to the goods or services that are the subject of the proposed application (Qantas Airways at [143]; Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923 (Rodney Jane Racing) at [87] (O’Bryan J)). The question is simply whether the reputation of the existing trade mark in Australia is such that the use of the new trade mark is “likely” to be deceptive or cause confusion.[46]

    [46] [2023] FCA 487, [20]-[21] (Kennett J)

20. In McCormick & Co Inc v McCormick[47], Kenny J considered what is intended by the word ‘reputation’ as used in s 60.  Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[48]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

    [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[49]

    [47] [2000] FCA 1335.

    [48] Ibid, [81].

    [49] (1992) 33 FCR 302, 343.

21. On the subject of reputation, Kenny J also referred to Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG, where the Registrar’s delegate observed:

    [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

    As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

    It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[50]

    [50] (1999) 47 IPR 423, 436 (Hearing Officer Thompson).

22. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered.  The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[51] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955 (Cth). That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’. Nevertheless, the words of Heerey J provide some guidance:

    What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[52]

    [51] [2000] FCA 1587.

    [52] Ibid [91] (emphasis in original). Justice Heerey’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

23. The Opponent has particularised the ground of opposition in the SGP in the manner set out below: 

    The trade mark/s had acquired reputation before the priority date of the trade mark being opposed

    The Opposed Mark is substantially identical with or deceptively similar to the following trade marks which have been used continuously in Australia before the priority date of the Opposed Mark and in relation to the same or similar goods/services in relation to which the Opposed Mark is sought to be registered:

    (i) LORD HOWE ISLAND BREWING CO

    (ii) LORD HOWE ISLAND DISTILLING CO

    (marks (i) and (ii) being the “Opponent’s Word Marks”)

    (iii) LORD HOWE ISLAND BREWING CO & Device (application 2143310)

    (iv) LORD HOWE ISLAND DISTILLING CO (application 2143311)

    (marks (iii) and (iv) being the “Opponent’s Logo Marks”)

    The Opponent’s Word Marks were first used in Australia as early as May 2019 and use of the marks has been continuous since that date.

    The Opponent’s Logo Marks were first used in Australia as early as July 2019 and use of the marks has been continuous since that date.

    The Opponent’s Word Marks and the Opponent’s Logo Marks have been used in relation to alcoholic beverages including distilled spirits and beers and associated services as well as merchandise including clothing, headwear and glassware.

    As a result of the aforementioned use, as at the filing date of the Opposed Mark, each of the Opponent’s Word Marks and the Opponent’s Logo Marks had jointly and/or severally acquired a significant reputation in the Australian marketplace.

    Use of the Opposed Mark by the Applicant (or any other person) in relation to the same or similar goods/services in relation to which the Opposed Mark is sought to be registered would be likely to deceive or cause confusion contrary to section 60.

1. As of the relevant date, the Opponent had been trading under the Opponent’s Marks for under two years.  While it had obviously engaged in a degree of social media promotion and had promoted its products on its website and through its distributors, the fact of the matter is that its beer and distilling sales were, in the context of the market for the Applicant’s Goods and Services, essentially negligible.  The Opponent’s products were available at a limited selection of pubs on and off island as well a certain major retailers (though given the very limited sales, I am not satisfied that the Opponent’s products were available at all outlets or for any significant length of time at those retailers- indeed the evidence of invoices in Confidential Exhibit AR-27 indicates that the sales by the Opponent to retailers other than the Lord Howe Island Board were, in the context of the market, almost de minimis). While accepting that much of the Opponent’s advertising expenditure was spent on free advertising, I note that the total advertising expenditure engaged in by the Opponent prior to the relevant date was again minimal.  I do not find that the limited array of awards and nominations (some self-nominated) received by the Opponent for its products in the two-year period prior to the relevant date demonstrates a level of esteem in the very broad market sufficient to demonstrate a reputation in any of the Opponent’s Marks. As for inferring a reputation from market presence and success, the Opponent has demonstrated only very limited sales, limited advertising and a short trading period prior to the relevant date. Even taken cumulatively, with these accolades alongside actual marketplace performance, this all falls short of the threshold required for s 60(a). Finally, I note that while the Opponent’s products may have established a reputation among the Lord Howe Island resident population of approximately 400 people, what is required under s 60(a) is a reputation amongst a significant or substantial number of persons in the relevant market.  In the context of the goods for which the Opponent particularises its use of the Opponent’s Marks being ‘alcoholic beverages including distilled spirits and beers and associated services as well as merchandise including clothing, headwear and glassware’ the market is a significant majority of the adult population in Australia.  Given the size of the relevant market, the Opponent’s evidence falls well short of establishing that any of the Opponent’s Marks had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market, sufficient for the requirements under s 60(a). 

2. Even if I had found that any of the Opponent’s Marks had established I reputation I would not be satisfied that, by reason of this reputation, the use of the Trade Mark would be likely to deceive or cause confusion.  In the present case, to the extent that the Trade Mark and Opponent’s Marks are similar, it is largely due to the presence of the common element ‘Lord HOWE ISLAND’ which is a geographic term that would be viewed as descriptive in respect of the Applicant’s Goods and Services and the any goods and services for which the Opponent was able to establish a reputation.  I refer to the statements made by Stephen J in Hornsby Building Information Centre Pty Limited v Sydney Building Information Centre Limited[53] extracted at paragraph 23 above regarding the risk of confusion that must be accepted as a price to be paid for the advantages of a descriptive trade name.  In the present case I am not satisfied that any confusion that might arise between the Trade Mark and the Opponent’s Marks would arise because of any reputation in the particularised marks. It is far more likely that resultant confusion would be due to the shared use of the geographic term ‘Lord Howe Island’ in respect of the same or similar goods and services.

   [53] (1978) 140 CLR 216, 229.

3. I find that the Opponent has failed to establish the ground of opposition pursuant to s 60.

   Section 42

4. Section 42 is reproduced below:

   42 - Trade mark scandalous or its use contrary to law

   An application for the registration of a trade mark must be rejected if:
   (a) the trade mark contains or consists of scandalous matter; or
   (b) its use would be contrary to law.

5. The Opponent pressed this ground of opposition solely on the basis that the use of the Trade Mark would be contrary to law (s 42(b)).  The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[54]  The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[55]

   [54] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).

   [55] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353 (Wilcox J).

6. The Opponent has particularised the ground of opposition in the SGP as follows: 

   Tort of passing off; Competition and Consumer Act 2010

7. The Opponent has not particularised a specific ground of the Competition and Consumer Act but refers to ss 18 and 29 of the Australian Consumer Law (‘ACL’) in its submissions. As previously stated, the Opponent has failed to establish a ground of opposition under s 60. The test for misleading or deceptive conduct under s 18 of the ACL is a more stringent one than that for deception or confusion under s 60,[56] and consequently I find that the Opponent has also failed to establish that the Applicant’s use of the Trade Mark would be contrary to s 18 of the ACL.

   [56] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36] (Hearing Officer Williams); Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).

8. Paraphrasing the statement of the Registrar’s delegate in A G Professional Hair Care Products Ltd v Geagroup Invest SRL[57], where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Justice Beaumont considered—in connection with the superseded Trade Practices Act1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[58] Sections 52 and 53 of the TPA were, respectively, the equivalent provisions to ss 18 and 29 of the ACL. Justice Hill in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:

   The scope for the operation of s. 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s. 52 or s. 53 will invariably mean that proceedings for passing off would likewise fail.[59]

   [57] [2014] ATMO 65, [50] (Hearing Officer Wilson).

   [58] [2003] FCA 104, [107] (Beaumont J).

   [59] [1989] FCA 506, [40] (citations omitted).

9. For these reasons I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law.  Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).

   Section 62A

10. Section 62A is reproduced below:

    62A Application made in bad faith

    The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

11. The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith:

    ·persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;

    ·persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;

    ·persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.

12. The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a current leading Australian authority on s 62A. In that case, Dodds-Streeton J made the following comments, quoting from Harrison’s Trade Mark Application[60]:

    Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.

    … The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[61]

    [60] [2004] EWCA Civ 1028; [2005] FSR 10 (Lord Justice Pill, Lady Justice Arden, Sir William Aldous).

    [61] [2012] FCA 81, [147].

13. Her Honour continued later in the same decision:

    The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.

    Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[62]

    [62] Ibid [165]-[166].

14. The Opponent has particularised this ground of opposition in the SGP as follows:

    The Opponent repeats the particulars set out in relation to its grounds of opposition under sections 58, 58A, 60 and 42.

    By reason of reputation in the Opponent’s Marks of which the Applicant was fully aware, the filing of the Opposed Mark is a filing in bad faith being an application that is substantially identical with or deceptively similar to the Opponent’s Marks, in relation to the same or similar goods/services as covered by the Opposed Mark.

15. The onus is on the Opponent to establish bad faith and it will not be found easily given the serious nature of the allegation.[63]  Based on the evidence before me I cannot conclude that the decision of the Applicant to adopt and seek to register a mark containing the words ‘LORD HOWE ISLAND BREWERY’ in respect of the Applicant’s Goods and Services, was a decision made to take advantage of the alleged reputation of the Opponent’s Marks. A far simpler explanation is apparent where the evidence shows, since 2014, the Applicant had been taking preparatory steps to launch a brewery (and offer related services) on Lord Howe Island. Electing to incorporate the words ‘Lord Howe Island’ into the Trade Mark, so as to describe the geographical location of the goods and services to be provided under the mark is, in such a context, quite unremarkable.  I note my comments under the s 60 ground as to the negligible reputation held by the Opponent in the Opponent’s Marks at the relevant date.  I also note that the Trade Mark contains additional stylisation and device elements to further distinguish itself from any of the Opponent’s Marks. 

    [63] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12] (Hearing Officer Nancarrow).

16. I accept the Opponent’s evidence that the Opponent used its marks on 8 June 2019 in a presentation to the Lord Howe Island Board and made a social media posting on 10 July 2019 prior to the registration of the Kentia Marks.  I also accept that the Applicant was aware of the Opponent at the relevant date however it bears repeating here that ‘mere knowledge before the relevant date of another person’s trade marks, without more, does not in itself constitute the basis for a finding of bad faith.’ [64]

    [64] 1872 Holdings VOF v Havana Club Holding SA [2017] ATMO 12, [64] (Hearing Officer Thompson).

17. In circumstances where the evidence in support of the s 62A ground of opposition is limited and the Opponent bears the onus, I am not satisfied the Applicant’s conduct in filing the application was unscrupulous, underhanded or unconscientious in character. Consequently, I find that the Opponent has failed to establish the ground of opposition under s 62A.

    Decision and Costs

18. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application number 2169019 may proceed to registration not less than one month from the date of this decision.  If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

19. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

    Nicholas Smith
    Hearing Officer
    Delegate of the Registrar of Trade Marks

    29 April 2025