Mars Australia Pty Ltd v Katong Club Pty Ltd

[2025] ATMO 72

TRADE MARKS ACT 1995

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

Re:Opposition by Mars Australia Pty Ltd to registration of trade mark application number 2333577 (class 29, 30 and 43) – Katong House device - in the name of KATONG CLUB PTY LTD

Delegate:

Anne Makrigiorgos

Representation:

Opponent: Jessie McKenzie of Counsel instructed by Baker McKenzie

Applicant: Enzo Belperio of Counsel instructed by of H & O Lawyers

Decision:

2025 ATMO 72

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition pressed ss. 42(b), 44 and 60 – s 44 ground established in respect of the goods – opportunity to amend the goods and services not accepted by the applicant – no other grounds established – trade mark refused registration

Background

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] (‘Act’) by Mars Australia Pty Ltd (‘Opponent’) to registration of the following trade mark:

   [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 is a reference to a regulation in the Trade Marks Regulations 1995 (Cth).

   Trade mark number:  2333577 (‘Application’)

   Trade mark:   (‘Trade Mark’)

   Applicant:  KATONG CLUB PTY LTD (‘Applicant’)

   Filing date:  9 February 2023 (‘Relevant Date’)

   Specification:               Class 29: Chicken products; Fried chicken; Prepared meals consisting principally of chicken; Lamb (prepared meat); Prepared foods consisting principally of fish; Prepared meals consisting principally of fish; Prepared meals consisting principally of game; Prepared meals consisting principally of meat; Prepared meals consisting principally of mushrooms; Prepared meals consisting principally of poultry; Prepared meals consisting principally of tofu; Prepared meals consisting principally of vegetables; Prepared meals made from meat (meat predominating); Prepared meals made from poultry (poultry predominating); Prepared meat dishes; Prepared soups; Prepared meals consisting principally of seafood; Seafood substitutes prepared from soybeans (textured soy protein); Seafood substitutes prepared from vegetables (textured vegetable protein); Cooked chicken; Cooked meals consisting principally of seafood; Cooked dishes with vegetables (vegetables predominating); Cooked meals consisting principally of fish; Cooked meals consisting principally of meat; Cooked meals consisting principally of meat and vegetables; Cooked meals consisting principally of poultry; Cooked meals consisting principally of vegetables; Cooked meat dishes; Seafood based stock; Chicken stock; Beef stock; Fish stock; Liquid stock; Meat based stock; Stock (prepared); Vegetable stock; Broth; Prepared desserts (milk-based)

   Class 30: Sauces for chicken; Canned sauces; Curry sauces; Flavourings in the form of concentrated sauces; Mixes for preparing sauces; Satay sauces; Sauce (edible); Sauces containing nuts; Sauces flavoured with nuts; Sauces for frozen fish; Sauces for pasta; Sauces for use with pasta; Savoury sauces; Spicy sauces; Stir fry sauces; Laksa; Flour-based dumplings; Savoury pancakes; Noodle-based prepared meals; Noodle-based prepared meals for toddlers; Noodles; Soba noodles; Udon noodles; Sauces for rice; Rice-based dumplings; Meals made predominantly from rice, pasta or noodles; Creamed rice; Flavoured rices; Foodstuffs predominantly made of rice; Fried rice; Prepared meals containing (principally) rice; Prepared rice dishes; Cooking sauces; Meat dumplings (cooked meat in a pastry envelope); Prepared desserts (pastries); Chai tea; Beverages made of tea; Beverages with tea base; Tea beverages with milk; Tea-based beverages; Beverages made from coffee; Beverages with coffee base; Beverages consisting principally of coffee; Coffee drinks

   Class 43: Restaurant reservation services; Restaurant services; Restaurant services for the provision of fast food; Restaurants; Take-away restaurant services; Udon and soba restaurant services; Washoku restaurant services; Cafe services; Cafes; Tea cafe services; Catering services; Catering services for the provision of coffee for offices; Business catering services

   (‘Applicant’s Goods and/or Services’)

   Endorsement:              The applicant has advised that the Chinese characters 加東厝 appearing in the trade mark may be transliterated as JIADONG CUO which may be translated into English as KATONG HOUSE

2. The Trade Mark was examined and advertised as accepted for possible registration on 10 July 2023.

3. On 8 September 2023, the Opponent filed a Notice of Intention to Oppose the Application. On 6 October 2023, the Opponent filed a Statement of Grounds and Particulars (‘SGP’). The Applicant filed a Notice of Intention to Defend the opposition on 19 November 2023.

4. The Opponent filed Evidence in Support (‘EIS’) on 20 February 2024. The Applicant filed Evidence in Answer (‘EIA’) on 23 May 2024. The Opponent did not file Evidence in Reply.

5. The parties were given the opportunity to either request an oral hearing or to file written submissions. Both parties elected to be heard by video conference. As a delegate of the Registrar of Trade Marks, I heard this matter via video conference on 12 March 2025. Prior to the hearing, both parties filed a written summary of their submissions. At the hearing, Jessie McKenzie of Counsel instructed by Colette Downie of Baker McKenzie appeared on behalf of the Opponent. Enzo Belperio of Counsel instructed by Cheryl Ho of H & O Lawyers appeared on the Applicant’s behalf. I have decided this matter based on the particulars set out in the SGP, the evidence of the parties and the written and oral submissions of the parties.

   Grounds and onus

6. The SGP nominates grounds of opposition under ss 42(b), 44 and 60.

7. The Opponent carries the burden of establishing at least one ground of opposition[2] on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is the Relevant Date.[4]

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

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

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J) (‘Southern Cross’).

   Evidence

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

Declarant and Position	Date	Annexures or Exhibits
EIS
Rachel Humphrey, marketing director of the Opponent (‘Humphrey’)	20 February 2024	RH-1 to RH-14 including Confidential RH-10 and RH-11
EIA
Chong Han Lim, director of the Applicant (‘Lim’)	23 May 2024	CHL-1 to CHL-14

Summary of evidence

EIS

1. Humphrey attests that the Opponent is a major manufacturer and distributor of a wide range of products including snack foods, confectionary, pet food, rice, preprepared meals, gravies and sauces since around 1954. One of the Opponent’s key brands is KAN TONG.

2. Humphrey provides details of the Opponent’s registrations (‘Opponent’s Marks’) in Australia which appear below:

Number	Mark	Goods	Priority Date
494850	KAN TONG (‘Word Mark’)	Class 29: All goods in class 29 Class 30: All goods in class 30 (‘Word Mark Goods’)	7 September 1988
1170654	[5] (‘Device Mark’)	Class 29: Meat, fish, poultry and game, sea foods, fruit and vegetables, all being preserved, dried, cooked or processed, canned fruits and canned vegetables, stir fry vegetables, prepared entrees and meals including meat balls, Thai fish cakes, prawn cutlets, olives, cheese, dairy products, desserts, chilled desserts, dessert toppings, drinks made from dairy products, soups, pasta, sauces made predominantly from goods in this class, sweet spreads, jams, marmalade, savoury spreads, vegetable extract spreads, pickles, salads, drinks, fillings, snack foods, prepared meals and constituents for meals, broth and broth concentrates, vegetable stock, meat stock, chicken stock, proteinaceous substances, dips, herbs, all included in this class Class 30: Rice, pasta, noodles; meals made predominantly from rice, pasta or noodles; cereals and cereal preparations; prepared entrees and meals including spring rolls, curry puffs, dim sims, samosas, wontons, wonton skins; rice cakes, rice crackers; tea, coffee, cocoa; coffee essence, coffee extracts, mixtures of coffee and chicory, chicory and chicory mixtures, all for use as substitutes for coffee; non-medicated confectionery; pastries, cakes, biscuits, crackers, crispbread; icing for cakes, icing powder, icing sugar; ices, ice cream, ice cream products, frozen confections, frozen yoghurt; desserts, chilled desserts, mousses, sorbets; dessert toppings; bread; pastry; drinks in this class; capers; fillings in this class; flavourings (other than essential oils); sweet spreads, honey, treacle, maple syrup, savoury spreads, mustards, relishes, yeast extract spreads; snack foods, prepared meals and constituents for meals; chocolate, sauces, ketchup; tomato sauce, worcestershire sauce, mint sauce, barbecue sauce; gravy; pizza, pizza bases; cooking sauces; sauces and toppings for pizzas; sauces for pasta and rice; salad dressings; vinegar, vinaigrette, mayonnaise; dips; spices and seasonings, marinades, condiments, couscous; salsa; all included in this class (‘Device Mark Goods’)	12 April 2007

[5] The Device Mark is a series of two marks and carries the endorsement ‘The Applicant claims the colours BLACK, YELLOW and RED as elements of the first mark in the series as depicted in the representation attached to this application.’

1. Humphrey claims that the Opponent’s Marks have been used by the Opponent (or its predecessor companies and/or licensees) in Australia since the 1970s in relation to various pre-packaged Asian cuisine inspired sauces, pastes, pre-prepared meals, meal bases and/ or noodle products (‘Used Goods’). Humphrey provides examples of use of the Opponent’s Marks on the Used Goods obtained from the Opponent’s website at (‘Opponent’s Website’) including Wayback Machine extracts dated in 2003. Examples of use include:

   .  .

   These extracts also show the Opponent’s Marks in use on the Used Goods with other trade indicia such as ‘Inspirations’, ‘Wok Star’ and ‘Simply Stir Fry’.

2. Humphrey states that the Used Goods are sold through many food retailers nationally in store and online including major supermarket chains such as Woolworths, Coles and IGA.

3. Humphrey provides an approximate confidential sales figure per annum for the Used Goods sold in the Australian marketplace for the years 2002 to 2023 which is substantial. Humphrey also provides an approximate confidential Australian advertising and marketing figure per annum for each year from 2002 to 2017 and an approximate aggregate of spend for the period 2018 to 2023. These figures are also substantial.

4. Humphrey declares that there has been extensive advertising and promotion of the Used Goods through a variety of channels and formats including:

   ·      the Opponent’s Website since as early as 2003;

   ·     the Opponent’s Australian website at advertisements, trade leaflets and promotional materials to retailers and trade customers;

   ·      television advertising on free-to-air television channels with examples from the 1990s and 2002 which are available on YouTube together with screenshots from television commercials aired on free-to-air television between the 1970s to the 1990s in Australia.

   Humphrey annexes examples of advertising and promotional materials from 1989 to 1996.

   EIA

5. Lim declares that KATONG HOUSE is the business name of the Applicant’s restaurant in Adelaide which specialises in Singaporean food (‘Restaurant’) and that the Applicant has plans to sell sauces, frozen meals and prepacked food from the Restaurant. Lim annexes an extract from the Australian Securities & Investments Register showing the business name was registered on 11 November 2020.

6. Lim states at length why the Trade Mark was chosen, including that KATONG is a residential area in Singapore where Mr Lim grew up.

7. Lim claims the Restaurant is renowned for its food, having been featured in Glam Adelaide magazine once in 2021, a video on YouTube with 1600 views 2 years ago, an entry in the online guide named Localista, a stall at ‘Singapore Bazaar 2022’ at a local community centre in Adelaide, and reviews on the website Restaurant Guru.

8. Lim attests that he is not aware of any of his customers mistaking KATONG HOUSE for KAN TONG.

   Discussion and Reasons

   Section 44

9. Section 44 relevantly provides (notes omitted):

   Identical etc. trade marks

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

   (a)         the applicant’s trade mark is substantially identical with, or deceptively similar to:

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

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

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

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

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

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

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

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

   (3)         If the Registrar in either case is satisfied:

   (a)         that there has been honest concurrent use of the 2 trade marks; or

   (b)         that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

10. The SGP nominates the Opponent’s Marks in support of this ground.

11. As a starting point, to successfully oppose the Application pursuant to s 44, the Opponent must establish that:

    ·at least one of the Opponent’s Marks has a priority date which is earlier than the Relevant Date and is held in a name other than that of the Applicant (‘the first requirement’);

    ·the Applicant’s Goods and Services are similar or closely related to the goods of at least one of the Opponent’s Marks that also satisfies the first requirement (‘the second requirement’); and

    ·the Trade Mark is substantially identical with or deceptively similar to at least one of the Opponent’s Marks that also satisfies the first and second requirements (‘the third requirement’).

12. I am satisfied that the priority date of each of the Opponent’s Marks is earlier than the Relevant Date and that the Opponent’s Marks are in a name other than the Applicant. Therefore, the first requirement is satisfied.

13. The second consideration is whether the Applicant’s Goods are similar to the goods of at least one of the Opponent’s Marks or the Applicant’s Services are closely related to the goods of at least one of the Opponent’s Marks.

    Applicant’s Goods

14. Goods are ‘similar to other goods’ if they are the same or of the same description as the other goods.[6] The factors relevant to the consideration of whether goods are similar include their nature including their origin and characteristics, uses made of the goods including their intended purposes, source of manufacture, respective trade channels and whether the ordinary consumer of the goods would regard the goods as being from a single source.[7] These can be conveniently summarised as: whether the respective goods are of the same nature; whether they are used by the same people for the same purposes; and whether the trade channels are the same. No single consideration is conclusive in itself.[8]

    [6] Section 14(1).

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

    [8] Southern Cross (n 4), 606.

15. Given that the breadth of the Word Mark Goods covers all goods in classes 29 and 30, I am satisfied that the Applicant’s Goods fall within the Word Mark Goods and are therefore the same as or at least similar to the Word Mark Goods. I am also satisfied that all the Applicant’s Goods fall within the Device Mark Goods. To this end, the following table is a list of the Applicant’s Goods considered to be similar to the Device Mark Goods:

Device Mark Goods	Applicant’s Similar Goods
Meat, fish, poultry and game, sea foods, fruit and vegetables, all being preserved, dried, cooked or processed, canned fruits and canned vegetables, stir fry vegetables, prepared entrees and meals including meat balls, fillings, snack foods, prepared meals and constituents for meals	Chicken products; Fried chicken; Prepared meals consisting principally of chicken; Lamb (prepared meat); Prepared foods consisting principally of fish; Prepared meals consisting principally of fish; Prepared meals consisting principally of game; Prepared meals consisting principally of meat; Prepared meals consisting principally of mushrooms; Prepared meals consisting principally of poultry; Prepared meals consisting principally of tofu; Prepared meals consisting principally of vegetables; Prepared meals made from meat (meat predominating); Prepared meals made from poultry (poultry predominating); Prepared meat dishes; Prepared meals consisting principally of seafood; Seafood substitutes prepared from soybeans (textured soy protein); Seafood substitutes prepared from vegetables (textured vegetable protein); Cooked chicken; Cooked meals consisting principally of seafood; Cooked dishes with vegetables (vegetables predominating); Cooked meals consisting principally of fish; Cooked meals consisting principally of meat; Cooked meals consisting principally of meat and vegetables; Cooked meals consisting principally of poultry; Cooked meals consisting principally of vegetables; Cooked meat dishes
Broth and broth concentrates, vegetable stock, meat stock, chicken stock, soups	Prepared soups; Seafood based stock; Chicken stock; Beef stock; Fish stock; Liquid stock; Meat based stock; Stock (prepared); Vegetable stock; Broth; Laksa
Desserts, chilled desserts, dessert toppings,	Prepared desserts (milk-based); Creamed rice; Prepared desserts (pastries)
Rice, pasta, noodles; meals made predominantly from rice, pasta or noodles	Noodles; Soba noodles; Udon noodles; Noodle-based prepared meals; Noodle-based prepared meals for toddlers; Meals made predominantly from rice, pasta or noodles; Flavoured rices; Foodstuffs predominantly made of rice; Fried rice; Prepared meals containing (principally) rice; Prepared rice dishes
Sauces made predominantly from goods in class 29, sauces, ketchup; tomato sauce, Worcestershire sauce, mint sauce, barbecue sauce; gravy; cooking sauces; sauces and toppings for pizzas; sauces for pasta and rice	Sauces for chicken; Canned sauces; Curry sauces; Flavourings in the form of concentrated sauces; Mixes for preparing sauces; Satay sauces; Sauce (edible); Sauces containing nuts; Sauces flavoured with nuts; Sauces for frozen fish; Sauces for pasta; Sauces for use with pasta; Savoury sauces; Spicy sauces; Stir fry sauces; Sauces for rice; Cooking sauces
Tea, coffee, cocoa; coffee essence, coffee extracts, mixtures of coffee and chicory, chicory and chicory mixtures, all for use as substitutes for coffee, drinks, drinks in class 30	Chai tea; Beverages made of tea; Beverages with tea base; Tea beverages with milk; Tea-based beverages; Beverages made from coffee; Beverages with coffee base; Beverages consisting principally of coffee; Coffee drinks
Prepared entrees and meals including spring rolls, curry puffs, dim sims, samosas, wontons, wonton skins	Flour-based dumplings; Rice-based dumplings; Meat dumplings (cooked meat in a pastry envelope); Savoury pancakes; Thai fish cakes, prawn cutlets

1. Therefore, the second requirement is satisfied in respect of all the Applicant’s Goods.

   Applicant’s Services

2. The Act does not define the words ‘closely related’. In Registrar of Trade Marks v Woolworths Ltd, French J stated that the relationship between goods and services, ‘may, and perhaps in most cases will, be defined by the function of the service with respect to the goods’.[9] The nature, function and circumstances of the trade, such as trade channels, are also relevant. The likelihood of consumer association of the services with the goods, because they are generally offered by the same people also may be a relevant factor.[10] It can also be relevant as to whether the services are performed directly upon or by the means of the goods and whether the goods and services are generally regarded by the ordinary consumer as originating in, or as being part of, the one industry or trade, or, a closely related industry or trade.[11]

   [9] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [38] (‘Woolworths’).

   [10] Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods [2023] FCA 487, [40] (Kennett J). See also Enagic Co Ltd v Horizons (Asia) Pty Ltd (No 3) [2021] FCA 1512, [33] (Charlesworth J) (‘Enagic’).

   [11] Re Aussat Pty Ltd [1993] ATMO 55 (Hearing Officer Thompson).

3. In Enagic Co Ltd v Horizons (Asia) Pty Ltd (No 3), Charlesworth J noted:

   Section 44(2) is plainly intended to address the mischief that may be created where two marks are the same or deceptively similar. It recognises the potential for confusion in the minds of consumers as to the origin of goods in respect of which a mark is registered or sought to be registered and the origin of services in which an identical or a deceptively similar mark is registered, or sought to be registered as the case may be.[12]

   [12] Enagic (n 10), [33].

4. In considering the Applicant’s Services and the goods of the Opponent’s Marks, I should look to the ordinary meaning of the words and the notional normal and fair use, not restricting myself to how or in what goods or services the Opponent or Applicant actually trade. I should consider the context in deciding whether ordinary consumers of the goods and services would see the goods and services as having the same trade origin[13] and judge the goods and services on the basis of business realities and common sense - and not on the basis of abstract reasoning.[14]

   [13] Southern Cross (n 4), 606; E & J Gallo Winery v Lion Nathan Australia Pty Limited [2009] FCAFC 27, [73] (Moore, Edmonds and Gilmour JJ).

   [14] Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd [1993] FCA 265, 240 (Burchett J).

5. The Applicant’s Services can broadly be categorised as restaurant and café services, take-away restaurant services and catering services.

6. The Opponent’s submissions only relate to the Applicant’s restaurant services. The Opponent submits that the Applicant’s restaurant services are closely related to the goods of the Opponent’s Marks stating that this is particularly so because of the Applicant’s intention to produce and sell authentic Singaporean sauces, frozen meals and prepacked food from the Restaurant. The Opponent submits that in these circumstances, a conclusion that restaurant services are closely related to the goods of the Opponent’s Marks is consistent with the decision in Rowntree PLC v Rollbits Pty Ltd.[15]

   [15] (1988) 10 IPR 539 (Needham J) where the comparison was between confectionery and restaurant, take-away and retail food services.

7. The Applicant submits that the Trade Mark is intended to be used strictly for Singaporean cuisine and therefore the Applicant’s Goods and Services can be distinguished from the goods of the Opponent’s Marks on the basis that the goods of the Opponent’s Marks are generic Asian sauces and pre-packaged food. I disagree with the Applicant’s submission as the Applicant’s Goods and Services are not limited to any particular type of cuisine.

8. There are a number of decisions which are relevant in determining whether services such as restaurant, take away food and café services are closely related to food and beverage products including:

   ·Winton Shire Council v Lomas,[16] where Spender J considered that operational outlets for the supply and provision of meals and refreshments were not closely related to beverages.

   ·Aromas Pty Ltd (formerly Intercof Pty Ltd) v Aroma Coffee & Tea Co Pty Ltd,[17] where Hearing Officer Zars found that coffee, tea, choco (sic), sugar and drinking chocolate were closely related to, amongst other services, cafe services, catering services, restaurant and bar services, coffee shop services and take away food and drink services.

   ·McDonald’s Inc v Future Enterprises Pte Ltd,[18] where Hearing Officer Williams found that coffee products were not closely related to restaurant and café services.

   ·Kicking House Coffee Co Ltd,[19] where Hearing Officer Brown found coffee, coffee beans and other coffee goods to be closely related to café services, noting that it was now common for cafes to sell ground coffee and coffee beans alongside coffee beverages.

   [16] [2002] FCA 288.

   [17] [1997] ATMO 82.

   [18] [2007] ATMO 22.

   [19] [2018] ATMO 193.

9. While I can draw on the comments of his Honour and the Hearing Officers in these cases, these individual findings that goods and services are or are not closely related are likely to be affected by the evidence and surrounding circumstances of each case and therefore, the consideration of whether particular kinds of goods and services are closely related is an evaluative exercise whose outcome is likely to depend on the evidence presented.

10. In Sizzler Restaurants International Inc v Sabre International Pty Ltd,[20] Hearing Officer Hardie found that ‘restaurant services not including takeaway food or drink services’ were not closely related to ‘coffee, tea and all other goods in Class 30’ stating:

    The nature of the class 30 food products is that they are edible commodities, either fresh, frozen, dried, or otherwise preserved.  The nature of a restaurant service (excluding any takeaway services) is that it is a catering service whereby food is prepared and made available to be eaten on the premises.

    The class 30 food products are purchased for domestic need or restaurant use.  They may be processed or not; ready to eat or not.  Restaurant services, excluding takeaway services, provide the purchasers with food in its finally prepared state, the premises in which to partake of that food, and the various ancillary functions needed to present and enjoy the service.

    The trade channels through which the goods, as opposed to the services, pass are the primary producer, the manufacturer, the wholesaler, (perhaps an importer) and then the various retail outlets.  Restaurant services excluding takeaway restaurant services, are not available through these outlets.  They are available at establishments dedicated to the services of preparing and serving meals.  Conversely, the restaurant services specified in the subject application are not available from food outlets.  They are available only at establishments whose sole business is the preparation and serving of meals in situ.  Such restaurants are not outlets where class 30 food products may be purchased.

    [20] (1990) 20 IPR 331, 344-345.

11. In Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods,[21] Kennett J held that various food products in classes 29 and 30 were not closely related to restaurant services particularly on the basis that the trade channels differed. In respect of take away food services including fast food, Kennett J stated:

    Converting foodstuffs (including those of the kinds included in classes 29 and 30) into a form suitable to be sold as “fast food”, and offering it for sale freshly prepared and appropriately packed, are the essential elements of the service.  The food thereby supplied is either eaten on the premises or taken away to be eaten, rather than taken home to be used as an ingredient or otherwise prepared for consumption. It is in a quite different category from the foods included in classes 29 and 30. Thus, to adapt what Yates J said in Qantas Airways at [126], what is it that makes the goods which are the subject of the Aachi mark goods that are “related to” restaurant or fast food services beyond the fact that they are, along with a vast range of other goods, capable of being used in the provision of those services? Nothing in the nature or function of the goods does so.[22]

    [21] [2023] FCA 487.

    [22] Ibid [45] (citations omitted).

12. The Opponent’s evidence does not allow any informed conclusion about how commonly the goods of the Opponent’s Marks and the Applicant’s Services are provided through the same trade channels nor that customers expect that food products in classes 29 and 30 and the provision of the Applicant’s Services typically originate from the same source. The Opponent’s evidence also does not show that common experience indicates that the services claimed by the Applicant are services which would also provide for the sale of food products. I find it telling that the Opponent, which is claimed to be a global manufacturer and distributor of a wide range of food products, has not provided any example of its own use of any of its food brands, including the Opponent’s Marks, on any of the Applicant’s Services.

13. I am not satisfied that the Applicant’s Services are closely related to the goods of the Opponent’s Marks. Therefore, the second requirement is not satisfied in respect of the Applicant’s Services and the Opponent has failed to make out the ground of opposition under s 44 for the Applicant’s Services.

14. For the Applicant’s Goods, the next consideration is whether I am satisfied that the Trade Mark is substantially identical with or deceptively similar to the Opponent’s Marks.

    Comparison of trade marks

15. The SGP claims that the Trade Mark is similar to the Opponent’s Marks. The Opponent’s submissions only refer to the Trade Mark being at least deceptively similar to the Opponent’s Marks and not substantially identical. For the sake of completeness, I do not consider the Trade Mark to be substantially identical to either of the Opponent’s Marks. Compared side by side as a whole, the Trade Mark has obvious visual and aural differences to the Opponent’s Marks and as a consequence, there is a total impression of dissimilarity.

16. I move then to consider whether the Trade Mark and the Opponent’s Marks are deceptively similar. It is convenient to confine this discussion to a comparison of the Trade Mark with the Word Mark as if the Trade Mark is determined not to be deceptively similar to the Word Mark, logic dictates that the same conclusion will apply to the Device Mark, given the importance of the words KAN TONG in the Device Mark.

17. Section 10 provides a definition of deceptively similar being that ‘a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion’.

18. Justice Windeyer outlined the following approach for the assessment of deceptive similarity in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘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 [mark].[23]

    [23] [1963] HCA 66, [13] (‘Shell’).

19. The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[24] conveniently stated the relevant principles, which were summarised in The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd[25] as follows:

    [24] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

    [25] [2023] FCA 482, [55] (Jackman J).

    (a)the resemblance between the two marks must be the cause of the likely deception or confusion;[26]

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

    (b)in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[27]

    [27] 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;[28]

    (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;[29]

    (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’;[30]

    (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;[31]

    (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;[32]

    (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; [33]

    (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;[34]

    (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’;[35]

    (k)evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[36] and

    (l)any intention to deceive or cause confusion may be a relevant consideration but is not required.[37]

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

    [29] Ibid.

    [30] Ibid.

    [31] Swancom (n 26), [70], [77]-[80].

    [32] Shell (n 23), [5].

    [33] 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).

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

    [35] Woolworths (n 9), [50(ii)] restating principles from Southern Cross (n 4), 594-595.

    [36] Australian Woollen Mills (n 28), 658.

    [37] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) (‘Hastag Burgers’) citing Australian Woollen Mills (n 28), 657.

20. Distinctiveness of the compared trade marks is a factor that can legitimately be taken into account when considering deceptive similarity.[38]

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

21. Justice French expressed the view in Woolworths[39] that the determination of whether, and to what degree, an applicant’s goods or services are similar to, or closely related to, the relevant goods or services of the earlier trade mark owner is ‘logically antecedent to’ assessing the similarity of the parties’ trade marks. In particular, French J explicitly approved the observation in Wilcox J’s first instance decision in the Woolworths Ltd v Registrar of Trade Marks matter that, ‘[t]he closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive’.[40]

    [39] Woolworths (n 9), [39].

    [40] (1998) 42 IPR 615, 624.

22. In light of the authorities, I must decide whether there is a real tangible risk that the result of the use of the Trade Mark will be that a reasonable person will be caused to wonder whether it might not be the case that food products in classes 29 and 30 bearing the Trade Mark are from the same source as such goods bearing the Word Mark. I must compare the respective wholes with regard to their essential or distinguishing features, and consider them visually and aurally, in the context of the relevant surrounding circumstances. I should account for imperfect recollection of the reasonable person. The addition of even a single word can in the right circumstances relevantly differentiate one remembered mark from another in the minds of those consumers.[41]

    [41] Jockey International Inc v Darren Wilkinson [2010] ATMO 22 (Hearing Officer Spence).

23. The Opponent submits that:

    ·     there is a clear aural similarity between KAN TONG, being the only element of the Word Mark and therefore the essential element, and the Katong word element of the Trade Mark;

    ·     there are a number of visual similarities between Katong and KAN TONG/KanTong;

    ·     the word ‘house’ is descriptive; and

    ·     the Applicant’s Goods are the same and/or almost identical to the Opponent’s claim to all goods in classes 29 and 30 (‘Opponent’s Goods’).

24. The Applicant submits that:

    ·even though the second element of the marks is the same, namely the word TONG, there are clear phonetical differences in the respective marks as the first element of the Trade Mark is KA which is pronounced as ‘car’ and the first element of the Word Mark is KAN which is pronounced as ‘can’. There are also further distinguishing features in the Trade Mark namely the Chinese characters;

    ·the Trade Mark is intended to be used only for Singaporean cuisine food products designed for home cooking; and

    ·the notional customers of the Opponent’s Goods and the Applicant’s Goods have a level of sophistication.

25. In my opinion the Word Mark is highly distinctive in respect of the Opponent’s Goods. I believe the impression or recollection to be carried away and retained by the notional consumer with an imperfect recollection of the Word Mark will be the distinctive words KAN TONG, which words have a Chinese linguistic flavour and are the only components of the Word Mark.

26. An aurally and visually similar element in the Trade Mark is the word KATONG, which occupies a prominent first word position in the Trade Mark,[42] is an essential element of the Trade Mark and also has a Chinese linguistic flavour. Both words KATONG and KAN TONG end in the word TONG and begin with the letters KA. The difference in pronunciation between KATONG, a two-syllable word pronounced KA – TONG, and KAN TONG is minor, as KAN TONG is also pronounced as if it was one word of two syllables. In my view, there is minimal difference in pronunciation of the words KA and KAN when followed by TONG.

    [42] London Lubricants (1920) Ltd’s Application (1924) 42 RPC 264, 279 (Sargant LJ); Enoch’s Application (1947) 64 RPC 119.

1. However, the Trade Mark is not only the word KATONG. It also contains the word HOUSE and three very small Chinese characters, all being encased within a circle device. The Opponent submits that the word HOUSE is not distinctive but provides no supporting evidence for this submission. While house is a common English word, there is no evidence that it is in any way descriptive of food products. I also note that while the Macquarie Dictionary (Online) has a number of definitions for the word house, as does the Australian Oxford Dictionary (2^nd edition Online), none support the Opponent’s submission that house is descriptive for food products.[43] Nevertheless, I consider the HOUSE element would likely be considered by the ordinary consumer as a place and the words KATONG HOUSE as the name of the place. Thus, while the word HOUSE does have some impact on the visual and aural impression provided by the Trade Mark, I am not satisfied that the word HOUSE, nor the three small Chinese characters and the device of a circle, result in the Trade Mark being conceptually distinct from the Word Mark. Rather I consider the impression produced by the entirety of the marks given the effect of the similarity of the key feature KATONG in the Trade Mark, would cause consumers viewing the Trade Mark who are aware of the Word Mark, to be caused to wonder whether it might not be the case that food products bearing the Trade Mark are from the same source as food products bearing the Word Mark.

   [43] Although both support one meaning of house being an inn or public house (Macquarie Dictionary) or a place of public refreshment, a restaurant or hotel (Australian Oxford Dictionary).

2. In Starr Partners Pty Ltd v Dev Prem Pty Ltd, the Full Court of the Federal Court said in relation to the comparison of marks:

   The first step in the analysis is to identify the impression produced by the registered mark considered in its entirety. Similarity is not based on only part of the registered mark. On the other hand, when one decides upon the impression produced by that mark it is not improper to give more or less weight to particular features of it, provided the ultimate conclusion is based on a consideration of the mark in its entirety. This approach does no more than recognise that one word or feature of a mark can be more striking and memorable than another.[44]

   [44] [2007] FCAFC 42, [22] (Lindgren, Emmett and Finkelstein JJ).

3. Further, here the respective trade marks will be used for the same and similar food products in classes 29 and 30. These food products are likely to be purchased in store or online by consumers in large and small food retailers including supermarkets which consumers, contrary to the Applicant’s submissions, will not be restricted to those with a level of sophistication. Food products are generally fast moving consumer goods with a low price point. Therefore, less attention will be paid when purchasing such products, whether the consumer is sophisticated or not, making the risk of confusion greater.

4. In conclusion, allowing for the imperfect recollection of consumers of ordinary memory and intelligence, I consider the trade marks are likely to be mistaken one for the other. Thus, as a matter of impression and common sense, I believe that a person of ordinary intelligence would be likely to be confused or deceived by the Trade Mark. I therefore find that the Trade Mark is deceptively similar to the Word Mark and that the Opponent has made out the ground of opposition under s 44 for the Applicant’s Goods.

5. While the Opponent has established the opposition on the basis of the Word Mark under s 44 for the Applicant’s Goods, I also add that I am satisfied that the Trade Mark is also deceptively similar to the Device Mark as the Trade Mark and the Device Mark are likely to be mistaken one for the other. In the Device Mark the words Kan Tong are stylised as they are in the Trade Mark. In my view this can only heighten the similarity between the Device Mark and the Trade Mark. Further, the bowl with chopsticks element in the Device Mark merely reinforces a manner in which food products, generally Asian inspired, can be consumed and does not negate the likelihood that a person of ordinary intelligence would be confused or deceived by the Trade Mark.

6. In respect of the Applicant’s Goods, it remains possible for the application to be accepted for these goods under ss 44(3) and/or 44(4) which make provision for the Applicant to overcome a s 44 ground of opposition on the basis of prior use, honest concurrent use or other circumstances. The Applicant’s evidence indicates that it had not commenced use of the Trade Mark prior to the Relevant Date in respect of the Applicant’s Goods and the Applicant has not argued that there are other circumstances justifying acceptance of the Application for the Applicant’s Goods, hence, there is no need for me to consider the provisions of ss 44(3) or (4).

7. I now need to consider whether the Opponent has established any of the other grounds of opposition in relation to the Applicant’s Services.

   Section 60

8. 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.

9. 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.

10. The SGP identifies the Opponent’s Marks and marks incorporating the words Kan Tong as the trade marks supporting this ground of opposition.

    Reputation

11. 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’.[45]

    [45] [2000] FCA 1335, [81].

12. 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.[46]

    [46] Ibid [86].

13. 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.[47] Here the nature of the Opponent’s goods are the Used Goods, namely pre-packaged Asian cuisine inspired sauces, pastes, pre-prepared meals, meal bases and/ or noodle products. The Opponent submits that the relevant market is members of the Australian public frequenting supermarkets and I agree. This relevant market is likely to include many Australian households. Meanwhile, the ‘existence and extent of reputation’ must be established as a matter of fact by the Opponent.[48]

    [47] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

    [48] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [57].

14. 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.[49]

    [49] [2019] 142 IPR 275, [83] (O’Bryan J).

15. Section 60 does not require that the Used Goods be similar to the Applicant’s Services, nor that the relevant trade marks be substantially identical or deceptively similar. However, where the marks are similar and/or there is a connection between the services claimed and the goods in which the relevant reputation lies, confusion is more likely.

16. While the Opponent bases the s 60 ground on the Opponent’s Marks, notably, each is considered a separate trade mark for the purposes of s 60.[50] However, the Opponent’s evidence shows significant use of both the Word Mark and the Device Mark. Further, in respect of the Device Mark, the evidence shows it is used on all the product packaging of the Used Goods, either alone or with other secondary trade marks such as Inspirations, Wok Star and Simply Stir Fry. As such, I am satisfied each of the Opponent’s Marks had the necessary 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 Device Mark.

    [50] Ibid [89]; Qantas Airways Ltd v Edwards (2016) 338 ALR 134, [160] (Yates J) (‘Qantas’).

17. On the basis of the evidence provided by the Opponent, I am satisfied that at the Relevant Date, the Device Mark had acquired a reputation in Australia amongst a significant number of consumers in respect of the Used Goods. The reputation enjoyed by the Device Mark can be readily inferred from the extensive sales and advertising expenditure figures disclosed together with the extensive marketing and advertising activities detailed in the Opponent’s evidence.

18. Further, I consider the Opponent’s online and print advertising and marketing over many years has led to public awareness of the Device Mark.

19. Accordingly, as I am satisfied that the Device Mark had a reputation in relation to the Used Goods 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

20. 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.[51]

    [51] [1979] RPC 410, 423 (citation omitted).

21. The likelihood of deception or confusion must be real and tangible.[52] 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 owner of the Device Mark.[53] To this end, it has been observed that ‘the threshold for confusion is not high’[54] and confusion can be established even if it ‘is unlikely to persist up to the point of, and contribute to, inducing sale’.[55]

    [52] Southern Cross (n 4) 595.

    [53] Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd (2016) 122 IPR 232, [76] (Davies J).

    [54] Australian Postal Corporation v Digital Post Australia [2013] FCAFC 153, [70] (North, Middleton and Barker JJ).

    [55] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, [105] (Dodds-Streeton J).

22. The likelihood of deception or confusion from the use of the opposed mark must arise because of the reputation of the other mark and the use to which the opposed mark has actually been put is of limited relevance. That is because it is the notional normal and fair use of the opposed mark in respect of each of the goods or services covered by the specification that is relevant, and the mark with the reputation might only have been used in relation to a very limited number of those goods or services. Here the relevant comparison is between the reputation of the Device Mark derived from actual use of that mark, and a notional normal and fair use of the Trade Mark in respect of each of the Applicant’s Services.

23. There is no requirement to demonstrate that the trade marks in question are substantially identical or deceptively similar within the meaning of Act. Nevertheless, 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.[56]

    [56] Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd [2010] ATMO 5 (Hearing Officer Lyons), [39] (emphasis in original). See also Qantas (n 50) [142] (Yates J).

24. In summary, here the assessment of the likelihood of deception or confusion is informed by the strength of the reputation of the Device Mark, the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and services of the parties. Each of these is a variable.

25. The Opponent submits that the use of the Trade Mark for the Applicant’s Goods and Services is likely to lead to deception or confusion having regard to:

    ·the aural and visual similarity of the Trade Mark to the Device Mark, including the stylisation of the font of the words KAN TONG and Katong House;

    ·the use of yellow and red, being the Opponent’s marketing scheme; and

    ·the nexus in the Applicant’s Services and the Used Goods based on the Applicant’s intention to sell Singaporean sauces, frozen meals and prepackaged foods from the Applicant’s restaurant.

26. In reply the Applicant submits that:

    ·     the respective marks are clearly distinct in font and colour, the Opponent predominately using a background of yellow with black writing and the Applicant yellow highlighting, with blue and text in red;

    ·     a consumer with imperfect recollection would not confuse yellow and black with blue and red; and

    ·     the Opponent’s evidence shows no use of the Device Mark in respect of restaurant services.

27. On the Applicant’s submission that the respective marks are clearly distinct in font and colour, as stated above, the relevant comparison is between the reputation of the Device Mark and a notional normal and fair use of the Trade Mark. The Trade Mark contains no limitations as to colour and therefore under s 70, the Trade Mark is taken to cover all colours. Thus, the colour scheme of the Trade Mark can be exactly the same as the colour scheme used by the Opponent. The Applicant’s submissions on colour scheme are therefore not persuasive.

28. Further, the font of the Trade Mark is stylised as is the font of the Device Mark. In my view the slight differences in stylisation of the words in the respective marks does little if anything to distinguish the respective marks. Therefore again, the Applicant’s submissions on font are not persuasive.

29. The Device mark is inherently distinctive and its reputation is strong. With respect to the degree of similarity between the respective trade marks, as I have indicated in my discussion under s 44 above, the Trade Mark is deceptively similar to the Device Mark.

30. ‘It is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that there will be a likelihood of deception or confusion even where there is very little, if any, nexus or connection between the goods and/or services under consideration’.[57] However, in circumstances where the parties trade in ‘quite different markets’ and the nature of the goods or services is ‘vastly different’ such deception or confusion will generally be unlikely.[58] 

    [57] Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124, [40] (Hearing Officer Thompson).

    [58] Woodman Labs Inc v Walmsley [2015] ATMO 81, [50] (Hearing Officer McDonagh).

31. Although s 60 does not require the Device Mark to have acquired a reputation relevant to the Applicant’s Services, the differences between the Used Goods for which there is a reputation and the Applicant’s Services is one factor to consider when deciding whether confusion is likely.[59] For reasons stated above under the s 44 ground and following, I am not satisfied that there is a close nexus between the Applicant’s Services and the Used Goods and therefore the risk of confusion is less than it may have been if there was a close nexus.

    [59] GAIN Capital UK Ltd v Citigroup Inc (No 4) [2017] FCA 519, [148] and [169] (Markovic J), citing Hill Industries Ltd v Bitek Pty Ltd [2011] FCA 94, [208] (Lander J). See also, Monster Energy Company v Mixi Inc [2020] FCA 1398 (Stewart J) (‘Monster’) and Qantas (n 50) [142].

32. The reputation in the Device Mark is in relation to the Used Goods which are Asian inspired food products. I am not satisfied that this reputation extends to the offering for sale and sale of the Used Goods other than through retail channels. I do not consider the evidence establishes that the Opponent has provided, or has ever intended to provide, restaurant, café services, take-away restaurant services or catering services under the Device Mark. The Used Goods and Applicant’s Services have different natures, purposes and trade channels such that it is unlikely that consumers would assume that there is any connection between the Applicant’s Services and the Opponent. I am therefore not satisfied that there is a real tangible danger that use of the Trade Mark for the Applicant’s Services would be likely to deceive or cause confusion amongst a significant number of relevant consumers.

33. Taking into account the distinctiveness of the Device Mark, the nature of the Used Goods in which the Device Mark has a reputation, the lack of nexus of these goods with the Applicant’s Services and the degree of similarity between the Device Mark and the Trade Mark, I do not believe there is a real and tangible risk of consumers of the Applicant’s Services, knowing of the Device Mark, being induced, left in doubt or caused to wonder whether the Applicant’s Services have the same origin or are connected in some way to the Used Goods.

34. As I am not satisfied that there is a real and tangible danger that use of the Trade Mark would be likely to deceive, or cause confusion amongst, a significant or substantial number of relevant consumers, the s 60 ground of opposition has not been established in respect of the Applicant’s Services.

    Section 42(b)

35. Section 42(b) provides that a trade mark must be rejected if its use would be contrary to law.

36. The SGP simply states Competition and Consumer Act 2010; Tort of passing off. The Opponent’s submissions state that use of the Trade Mark will be unlawful for the purposes of ss 18 and 29 of the Australian Consumer Law, Schedule 2 of the Competition and Consumer Act 2010 (Cth) (‘ACL’) if that use is likely to mislead or deceive and will also be unlawful under the tort of passing off.

37. Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading. These are stricter requirements than s 60 which can be established if the use is likely to cause confusion or wonderment.[60]

    [60] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ); Monster (n 59) [33].

1. Where use of a trade mark does not contravene s 18 of the ACL neither will it amount to the tort of passing off.

2. Justice Hill in ReEquity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the Trade Practices Act 1974 (Cth) (the equivalent provision to s 18 of the ACL) 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.[61]

   [61] [1989] FCA 506, [40] (citations omitted).

3. For the s 42(b) ground of opposition, the Opponent seeks to rely on the reputation in the Opponent’s Marks which I have already discussed in relation to the s 60 ground of opposition. Further, as already indicated in respect of s 60, I am not satisfied that use of the Trade Mark for the Applicant’s Services is likely to cause deception or confusion. It follows that on the stricter test of the ACL,[62] I am not satisfied that use of the Trade Mark is likely to mislead or deceive or amount to a false or misleading representation under ss 18 or 29 of the ACL. As I am not satisfied that ss 18 and 29 of the ACL would be contravened, it also follows that I am not satisfied that use of the Trade Mark would amount to passing off.[63] Therefore, I am not satisfied that use of the Trade Mark would not be contrary law under the ACL or passing off and the Opponent has not established the ground of opposition under s 42(b) in respect of the Applicant’s Services.

   [62] Weili Mu v Guotai Huang [2021] ATMO 113, [35]-[36] (Hearing Officer Smith).

   [63] ReEquity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506, [40] (Hill J).

   Resolution of Opposition

4. In Apple Inc. v Registrar of Trade Marks Yates J stated that:

   My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[64]

   [64] [2014] FCA 1304, [232].

5. In circumstances where an opposition has been established in respect of some, but not all of an applicant’s goods or services, the Registrar may proceed to reject the application in its entirety, under the principles outlined above, but also has a discretion to offer an amendment to an applicant, allowing it to amend the application to remove goods and services for which a ground of opposition has been established.

6. Given the Opponent has only been successful in respect of the Applicant’s Goods and the lack of nexus between the Applicant’s Services and the goods of the Opponent’s Marks, I consider it appropriate to offer the Applicant the opportunity to amend the Applicant’s Goods and Services to delete the Applicant’s Goods.

7. On 1 April 2025 I advised the Applicant that I intended to refuse the Application unless the Applicant amended its trade mark application 2333577 to delete the Applicant’s Goods, being all the goods in classes 29 and 30.

8. The Applicant did not avail itself of the opportunity to amend the Application. On that basis, the Opponent has established on the balance of probabilities the ground of opposition under s 44 and 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 application should be in accordance with the Court’s order or direction.

   Costs

9. Both parties have sought its costs in this matter. I see no reason to depart from the general rule that costs follow the event. As the Opponent has established a ground of opposition, I award costs against the Applicant in accordance with the amounts in Schedule 8 of the Regulations.

   Anne Makrigiorgos

   Hearing Officer

   Oppositions and Hearings

   Trade Marks and Designs

   23 April 2025