McAppion Enterprises Pty Ltd

[2025] ATMO 34

TRADE MARKS ACT 1995

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

ReTrade Mark application number 2271623 (33) – THORNY DEVIL – in the name of McAppion Enterprises Pty Ltd

Delegate:	Nicholas Smith
Representation:	Applicant: Self-represented
Decision:	2025 ATMO 34 Request to be heard under section 33(4) of the Trade Marks Act 1995 (Cth) in relation to grounds for rejection under section 44 of the Act – section 44 considered and established – trade mark application rejected

Background

1. On 22 May 2022 respectively, McAppion Enterprises Pty Ltd (‘Applicant’) applied to register the trade mark detailed below under the Trade Marks Act 1995 (Cth).

Application Number:

2271623

Priority Date:

22 May 2022

Goods:

Class 33: Fermented spirit; Grain spirit produced from wheat; Digestifs [liqueurs and spirits]; Spirit based cocktails (spirits predominating); Spirits (beverages); Still spirits

(‘Applicant’s Goods’)

Trade Mark:

THORNY DEVIL

2.   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.

1. The application was duly examined under s 31 and a ground for rejection was identified by the examiner under s 44. The examiner identified trade mark 1747073 set out below which closely resembled the Trade Mark and was registered for similar goods. As this is a request to be heard under s 33(4) of the Act the owner of the Thistledown Mark does not appear in this proceeding.

Number	Trade Mark	Priority Date	Services
1747073	Thistledown Thorny Devil (‘Thistledown Mark’)	19 Jan 2016	Class 33: Beverages containing wine (alcohol content 1.15% or more by volume); Beverages containing wine (wine predominating); Blended wine; Cooking wine; Dessert wine; Drinks containing wine (wine predominating); Dry fortified wine; Dry red wine; Dry sparkling wines; Dry white wine; Dry wine; Fortified wines; Ginger Wine; Mulled wines; Non-sparkling wines; Red wine; Still wines; Sweet fortified wine; Sweet red wine; Sweet sparkling wine; Sweet white wine; Sweet wine; Vintage wines; White wine; Wines

1. A relevant factor, which will be discussed later in the proceeding, is that the Thistledown Mark was registered in the face of two earlier marks (‘Earlier Marks’) registered by the Applicant both for the mark THORNY DEVIL (identical to the Trade Mark), but for (in essence) beer (No. 1666109) and cider (No. 1731940). A review of the file indicates that the Earlier Marks (with a priority date of 2014 and 2015 respectively) were cited in examination against the Thistledown Mark. The owner of the Thistledown Mark then provided sufficient evidence of continuous prior use to allow the Thistledown Mark to be registered pursuant to s 44(4)[1].

   [1] There was one additional mark cited in the examination of the Thistledown Mark, however the owner of the Thistledown Mark provided a letter of consent from the owner of the cited mark.

2. On 27 September and 8 November 2024 the Applicant provided submissions and evidence in response to this office. In response, this office issued two further adverse reports each maintaining the ground for rejection under s 44 for the Trade Mark.

3. On 9 December 2024, the Applicant requested to be heard by the Registrar of Trade Marks under s 33 of the Act by way of written submissions. As a delegate of the Registrar of Trade Marks I heard this matter on 25 January 2025. In accordance with the pre-hearing directions I had given the Applicant filed written submissions on 20 January 2025 and confirmed that I should rely on those submissions, and the submissions filed on 27 September and 8 November 2024 and the following declaration:

   ·     Declaration of Peter Heaton McAppion, Sole director of the Applicant, dated 27 September 2024 with Exhibits PHM-1 to PHM-58 (‘McAppion declaration’).

4. The present matter is a hearing under s 33(4) of the Act. As noted in MHFC Holdings Pty Ltd[2] as well as other decisions of the Registrar (Teraglow Pty Ltd[3] and TOM Organic Pty Ltd[4]), the purpose of such a hearing is not a review of the examiner’s decision but rather a fresh consideration of the grounds for rejection, in this case the ground for rejection under s 44 of the Act. Any decision I shall make is not a review of the examiner’s approach and I am not bound in any way to follow it. Rather this proceeding will consider afresh the s 44 ground for rejection under the Act as it applies to the Trade Mark. In arriving at my decision, I have taken into account the material identified above.

   [2] [2016] ATMO 96, [9] (Hearing Officer Wilson).

   [3] [2016] ATMO 32, [5] (Hearing Officer Worth).

   [4] [2018] ATMO 46, [5] (Hearing Officer Worth).

   Legislative framework

   8. Under s 33(1)(b) of the Act, the Registrar must accept the application for registration of a trade mark unless satisfied there exists a ground under the Act for rejecting it. The Registrar must be satisfied on the balance of probabilities that a ground for rejection exists, otherwise an application will be presumed registrable.[5]   The date at which the Trade Mark must be assessed  is the filing date, being 22 May 2022 (‘relevant date’) however evidence of use after that day may be relevant, to the extent that such evidence can illustrate factors in place at the particular relevant date.[6]

   [5] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891, [16] (Sundberg J).

   [6] Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd (2004) 61 IPR 257, [32] (Finn J).

   Section 44

5. The relevant provisions of Section 44 of the Act are:

   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)…

   (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:

   (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.

   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.

6. In order for s 44 to apply the requirements of s 44(1) must be satisfied, i.e. that at least one of the trade marks identified by the examiner, being a trade mark registered or sought to be registered[7] by a person other than the Applicant:

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

   ·     has a priority date which is earlier than that of the applied-for mark (‘the first requirement’);

   ·     is substantially identical with or deceptively similar to the applied-for mark (‘the second requirement’); and

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

7. In the event that each of these requirements are satisfied 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 applied-for mark, other circumstances which would make registration of the applied-for mark proper, or that the Applicant has continuously used the applied-for mark beginning before the priority date of the prior trade mark.

8. I am satisfied that the Thistledown Mark has a priority date that is earlier than the priority date of the Trade Mark

9. With respect to the third requirement, the Applicant has submitted that the respective marks are not registered or sought to be registered for similar goods, given that the Trade Mark is sought to be registered for spirits and the Thistledown Mark is registered for wine. While the Applicant’s arguments are not unreasonable, this issue has been considered before by this office and in Jack Daniel's Properties Inc v Warren Scott Harvey[8] (‘Jack Daniel’s’) this office found that wine and whisky (a form of spirit) were similar goods.  The Delegate in that case, after considering previous cases, found that a substantial number of consumers seeing the subject mark, being a mark consisting of a mildly stylised form of the word JACK DOOLAN’S (along with additional descriptive terms) used for whisky would be caused to wonder whether that whisky comes from the same trade source as the wine being produced under the word mark JACK DOOLAN.  This also reflects the statements made by the Full Court in E & J Gallo Winery v Lion Nathan Australia Pty Limited[9] which noted at [73] (in connection with the similarity between beer and wine) that while the manner in which the goods are produced and sold is relevant, what is particularly relevant is the question of whether consumers might see the goods as having the same origin.  In the alcoholic beverages market it is common for producers of alcoholic beverages to produce a range of goods and hence the fact that wine might be sold in a slightly different way to other spirits would not be of significance to the consuming public when considering the trade origin of the goods. 

   [8] [2010] ATMO 47, (Hearing Officer O’Brien)

   [9] 2009] FCAFC 27 (Moore, Edmonds and Gilmour JJ)

10. There is no evidence before me that the state of the market has changed since the Jack Daniel’s decision was issued, indeed there is a possibility that brand expansion has become more common in the alcoholic beverage industry.  Noting that the Applicant’s Goods are indeed broader than the whisky referred to in the Jack Daniel’s case, I find that the third requirement is satisfied; that the Trade Mark is sought to be registered for similar goods to the goods for which the Thistledown Mark is registered.

    Substantially identical and/or deceptively similar

11. I will now consider whether the Trade Mark is substantially identical to the Thistledown Mark.  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd 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.[10]

    [10] [1963] HCA 66, [12] (‘Shell’).

12. The Trade Mark and the Thistledown Mark are set out below:

Trade Mark	Thistledown Mark
17.  THORNY DEVIL	Thistledown Thorny Devil

1. On a side-by-side comparison the addition of ‘Thistledown’ creates a clear difference which mean that a total impression of dissimilarity emerges from a comparison of the Thistledown Mark and the Trade Mark.  I move then to consider whether the Trade Mark and the Thistledown Mark are deceptively similar.

2. 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].[11]

   [11] Ibid [13].

3. The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd (‘Self Care’)[12] conveniently stated the relevant principles, which may be summarised as follows:

   [12] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

   (a)the resemblance between the two marks must be the cause of the likely deception or confusion;[13]

   [13] 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;[14]

   [14] 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;[15]

   (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;[16]

   (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’;[17]

   (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;[18]

   (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;[19]

   (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; [20]

   (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;[21]

   (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”;[22]

   (k)evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[23] and

   (l)any intention to deceive or cause confusion may be a relevant consideration but is not required.[24]

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

   [16] Ibid.

   [17] Ibid.

   [18] Swancom (n 11), [70], [77]-[80] (Yates, Abraham and Rofe JJ).

   [19] Shell (n 10), 415.

   [20] 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).

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

   [22] 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).

   [23] Australian Woollen Mills Ltd (n 15).

   [24] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) citing Australian Woollen Mills (n 15), 658.

4. Furthermore the Court, in the same case, noted the following[25]:

   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"[26]. 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[27], 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[28]. 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.[29]

   [25] Self Care (n 12), [33].

   [26] New South Wales Dairy Corporation v Murray-Goulburn Co‑operative Co Ltd [1989] FCA 124; (1989) 86 ALR 549 at 589 (emphasis added), approved in Henschke (2000) 52 IPR 42 at 62 [44], Hashtag Burgers [2020] FCAFC 235; (2020) 385 ALR 514 at 532 [64], Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel [2021] FCAFC 8; (2021) 157 IPR 230 at 238 [27], PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (2021) 285 FCR 598 at 622 [97] (see also 626 [111]) and Swancom (2022) 168 IPR 42 at 56 [73].

   [27] Act, s 68.

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

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

5. As stated above, for the purposes of considering deceptive similarity, the reputation of the Trade Mark is not a relevant factor.[30]

   [30] 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 (n 12), [49].

6. Justice French expressed the view in Registrar of Trade Marks v Woolworths Ltd[31] (‘Woolworths’) 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 matter that, ‘[t] he closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive’.[32]

   [31] Woolworths (n 22), [39].

   [32] Ibid. See also Enagic Co Ltd v Horizons (Asia) Pty Ltd (No 3) [2021] FCA 1512, [33] (Charlesworth J).

1. The Applicant’s submissions focus on the straightforward (though not without merit) argument that the presence of the word THISTLEDOWN in the Thistledown Mark is sufficient to distinguish the respective marks on a visual, aural and conceptual level.  One matter that I should note: when comparing the two marks I must assume notional use of each mark, so the Applicant’s submissions focusing on the actual use of the Thistledown Mark (such as the fact that the owner of the Thistledown Mark uses THISTLEDOWN in a number of other contexts) are of limited relevance.  I do accept the Applicant’s definition of thistledown as a mass of feathery plumed seeds produced by a thistle though I note the term is not in common use in Australia and hence consumers in the market may not be aware of the precise meaning of the word and instead see it as a compound word composed of the common words ‘thistle’ and ‘down’, though nothing turns on this conclusion.

2. The Thistledown Mark wholly incorporates the Trade Mark.  Such marks are often deceptively similar such as the marks MY MELODY DREAMS and MY MELODY[33] however in some cases, a trade mark conveys an overall conceptual meaning sufficiently different from another trade mark which is contained within it, such that the trade marks are not deceptively similar.  This was found to be the case in, for example, REBELLION vs SOUL REBELLION[34] and JOCKEY vs THROTTLE JOCKEY.[35]  The Applicant in its submissions has identified other cases where two trade marks were held not to be deceptively similar notwithstanding that one incorporated the other.   

   [33] Eau De Cologne’s Application (1990) 17 IPR 540 (Hearing Officer Thompson).

   [34] Kingsley v Scott [2011] ATMO 20 (‘Kingsley’).

   [35] Jockey International Inc v Wilkinson [2010] ATMO 22 (‘Jockey’).

3. The question therefore is whether, notwithstanding the removal of the Thistledown element, the Trade Mark, taken as a whole, is sufficiently similar to the Thistledown Mark that there is a a real likelihood that some people will wonder or be left in doubt about whether the alcoholic beverages offered under the Thistledown Mark and the Trade Mark come from the same source.

4. The market for the Applicant’s Goods is a broad one.  I am satisfied on the balance of probabilities that there is a real likelihood that some people, viewing the Applicant’s Goods bearing the Trade Mark, would entertain a reasonable doubt as to whether the absence of the Thistledown element in the Trade Mark simply referred to a shortening of the existing mark or a brand extension of the Thistledown Mark from wine into spirits and hence spirits offered under the Trade Mark came from the same source as the wine offered under the Thistledown Mark.  To put it another way, a consumer familiar with wine branded with the Thistledown Mark could see spirits branded with the Trade Mark and easily be caused to wonder if both products were produced by a company known as ‘THORNY DEVIL’ and the addition of the Thistledown element was simply a brand extension from spirits to wine.  While the absence of the Thistledown element creates a certain visual and aural difference this is not a case, such as REBELLION vs SOUL REBELLION[36] and JOCKEY vs THROTTLE JOCKEY[37] where the absence of the Thistledown elements results in a different conceptual meaning; rather the impression provided by both the marks is of related products offered under the THORNY DEVIL element.  I am unpersuaded by the Applicant’s submissions about the absence of actual confusion, noting that the evidence of use provided by the Applicant is use of the Trade Mark for beer and cider, not for the Applicant’s Goods.

   [36] Kingsley [n 34].

   [37] Jockey [n 35].

5. I also note the Applicant’s submissions in respect of Part 32B, Paragraph 2.4 of the Trade Marks Manual of Practice and Procedure. This section, particularly paragraph 2.4.1, deals with the comparison of trade marks in respect of marks registered for wine. The Applicant submits that the effect of this section is to recognise that a very high degree of similarity between two marks is required before there is a real and tangible danger of confusion in the mind of consumers (and hence the addition of the Thistledown element creates a sufficient distinction). I do not share the Applicant’s interpretation of this section. This section acknowledges that in the wine industry that there are certain marks that describe geographical features (such as ‘estate’, ‘vineyard’ or ‘hill’) that are commonly used on wine labels and as part of trade marks. As such consumers are likely to discount those words (and other common words such as personal names) for the purposes of comparison and pay closer attention to the other words on the label and hence merely sharing elements such as estate or hill would not lead to confusion. The section is of little relevance to the present case which involves two or three words (‘Thistledown’, ‘thorny’ and ‘devil’) none of which are geographic features, personal names or commonly used on wine labels. In this case the differences between the marks and the possibility for consumer confusion should be assessed according to the standard principles under s 44.

6. I find that the Trade Mark is deceptively similar to the Thistledown Mark and the requirements under s 44(1) are satisfied. It is then necessary to consider the application of s 44 (3) and (4). The requirements under ss 44(3)(a) and 44(4) are dependent on a finding that the Trade Mark has been used in Australia. The McAppion declaration provides extensive evidence of use of the Earlier Marks (for the goods for which the Earlier Marks are registered, namely beer and cider) but no evidence of use of the Trade Mark for the Applicant’s Goods prior to the relevant date.

7. The Applicant submits that the use of the Earlier Marks (which are registered for similar goods to the Applicant’s Goods) for similar goods to the Applicant’s Goods satisfies the requirements of s 44(4) and s 44(3)(a). This is a misreading of the legislation. The reference in s 44(4)(a)(i) and (ii) to the use of the mark for similar/closely related goods/services refers to the goods and services in the Applicant’s Goods that have been found to be similar/closely related to the goods for which the Thistledown Mark is registered for (i.e. spirits). This can be explained by reference to the term (emphasis added) ‘the similar goods’ which refers to the goods that have been identified as similar under s 44(1). It does not operate to allow registration of a mark merely on the basis that it has been used for similar goods that are not the goods that the Applicant seeks to register the mark for. Referring to the Applicant’s submissions about Part 28.6 of the Trade Marks Manual of Practice and Procedure (with emphasis added), the Manual is explicit that one of the elements that must be satisfied is that the use has been continuous in respect of ‘the goods/services that are similar and/or closely related to the goods/services in the earlier similar mark/s.’

8. In the absence of evidence of any use of the Trade Mark for the Applicant’s Goods prior to the relevant date it is not appropriate to allow the application to proceed to registration by means of the application of s 44(4) or s 44(3)(a).

   Subsection 44(3)(b): Other Circumstances

9. Section 44(3)(b) permits registration where ‘because of other circumstances, it is proper to do so’. This involves ‘an exercise of discretion in the circumstances as they exist at the time the discretion is exercised rather than as at the priority date of the application’.[38]

   [38] Trident Seafoods Corporation v Trident Foods Pty Ltd [2019] FCAFC 100, [83].

10. The Applicant submits that a relevant other circumstance under s 44(3)(b) is the existence of the Earlier Marks, which are identical to the Trade Mark and registered for similar goods (namely wine and cider) which is a relevant factor that can be considered under this ground. However, the weight to be given to the earlier registration will differ according to the circumstances of each case. Ultimately, the Registrar must reach a conclusion based on whether there are commercial realities which, in the Registrar’s opinion, make the acceptance of an application proper notwithstanding a real risk of deception or confusion.

11. Generally, an applicant seeking to rely on ‘other circumstances’ will have a more compelling case where they have the earliest rights compared to the owner of the cited mark.  Other factors that should be considered include:

    ·     the degree of similarity between the trade marks and/or goods/services;

    · whether the applicant’s earlier registration is subject to non-use proceedings by the owner of the earlier trade mark. In this situation, it may be inappropriate to apply ‘other circumstances’ as the applicant’s earlier registration may eventually be removed from the register. Applying ‘other circumstances’ may subvert the purpose of the non-use provisions of the Act;

    · whether the cited trade mark was registered on the basis of ‘prior use’ under s 44(4). In this situation, the owner of the cited trade mark has a claim to the earliest rights and it may be appropriate for the applicant to seek a new letter of consent; and

    ·     whether the earlier registered trade mark owned by the applicant has recently been assigned to them. The fact that the owner of a cited trade mark has previously provided consent to another person doesn’t necessarily mean they would provide consent to the present applicant.

12. I do not consider it appropriate to allow registration of deceptively similar marks for the same or similar goods and services to those of the Opponent on the basis of ‘other circumstances’ unless there is a compelling case. I do not consider that the Applicant has made out such a case. The Applicant has obtained protection of THORNY DEVIL for beer and cider on the basis of the Earlier Marks. In the present case there is evidence that the owner of the Thistledown Mark has a claim to the earliest rights as it appears that this mark was registered pursuant to s 44(4). Furthermore, given the absence of any evidence of use of the Trade Mark for the Applicant’s Goods I am not satisfied that there are commercial realities which, in the Registrar’s opinion, make the acceptance of an application proper notwithstanding a real risk of deception or confusion.

13. I find that the ground for rejection under s 44 of the Act has been established for the Trade Mark.

    Decision

    37. Section 33 of the Act relevantly provides:

    33Application accepted or rejected

    (1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:

    (a)the application has not been made in accordance with this Act; or

    (b)there are grounds under this Act for rejecting it.

    (2)The Registrar may accept the application subject to conditions or limitations.

    (3)If the Registrar is satisfied that:

    (a)the application has not been made in accordance with this Act; or

    (b)there are grounds under this Act for rejecting it;

    the Registrar must reject the application.

14. As I am satisfied that there is a ground for rejection under s 44 of the Act, I reject the application to register the Trade Mark.

    Nicholas Smith
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    18 February 2025