Muscle Nation IP Pty Ltd v Worldwide Sports Nutrition Pty Ltd

[2023] ATMO 10

TRADE MARKS ACT 1995

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

Re:Opposition by Muscle Nation IP Pty Ltd to registration of trademark application number 2115220 (class 25) -  - in the name of Worldwide Sports Nutrition Pty Ltd.

Delegate:	Timothy Brown
Representation:	Opponent: Justine Beaumont of Counsel instructed by Bartier Perry Lawyers. Applicant: Dominique Grigg of Counsel instructed by Gadens Lawyers.
Decision:	2023 ATMO 10 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under ss 44, 58, 60 and 42(b) – no grounds established – trade mark to proceed to registration.

Background

1. This decision concerns an opposition under section 52 of the Trade Marks Act 1995 (Cth)[1] to the registration of the following trade mark:

   [1] Unless stated otherwise, each reference to a section or regulation is a reference to the Trade Marks Act 1995 (Cth) (‘Act’) or Trade Marks Regulations 1995 (Cth) (‘Regulations’).

   Trade Mark Number: 2115220

Trade Mark:               (‘Trade Mark’)

Owner:                     Worldwide Sports Nutrition Pty Ltd (‘Applicant’)

Priority Date:           4 September 2020

Specification:            Class 25: Apparel (clothing, footwear, headgear)

(‘Applicant’s Goods’)

1. The Trade Mark was advertised for acceptance on 5 February 2021.

2. On 18 March 2021 Muscle Nation IP Pty Ltd (‘Opponent’) filed a Notice of Intention to Oppose registration of the Trade Mark, followed by a Statement of Grounds and Particulars (‘SGP’) on 16 April 2021.

3. On 20 May 2021 the Applicant filed a Notice of Intention to Defend the opposition.

4. The Opponent filed Evidence in Support of the opposition on 24 August 2021. The Applicant filed Evidence in Answer on 26 November 2021. The Opponent then filed Evidence in Reply on 27 January 2022.

5. Following the conclusion of the evidence stages, both parties were given the opportunity to be heard. The matter was heard before me, a delegate of the Registrar of Trade Marks, on the 3 November 2022. The Opponent was represented by Justine Beaumont of Counsel, accompanied by Melissa McGrath of Counsel with instruction from Isabelle Stillman of Bartier Perry Lawyers. The Applicant was represented by Dominique Grigg of Counsel with instruction from Sandra Camilleri and Candice Noring of Gadens Lawyers.

Grounds, Onus, and Relevant Date

1. The grounds of opposition nominated in the SGP were sections 44, 58, 58A, 60 and 42(b). At the hearing the Opponent did not press section 58A.

2. The Opponent bears the onus of establishing one or more of the grounds of opposition.[2] The required standard of proof is on the balance of probabilities.[3] The date at which the rights of the parties will be determined is the priority date of the Trade Mark, being 4 September 2020 (‘Relevant Date’).

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

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

Evidence

1. The following evidence was filed:

   Evidence in Support

   ·Statutory Declaration of Nathaniel Anthony, Director of the Opponent, made on 24 August 2021 (‘Anthony Declaration’) with Exhibit NA-1.

   Evidence in Answer

   ·Statutory Declaration of Grant Mayo, Director of the Applicant, made on 25 November 2021 (‘Mayo Declaration’) with Exhibits GAM-1 to GAM-15.

   Evidence in Reply

   ·Statutory Declaration of Nathaniel Anthony made on 27 January 2022 (‘Second Anthony Declaration’) with Exhibit NA-2.

Opponent

1. The Opponent is one of a collection of companies associated with the ‘Muscle Nation’ brand. Mr Anthony declares that he incorporated Muscle Nation Pty Ltd (‘Muscle Nation’) in or around 2003. The company was formed to sell gym apparel via various online platforms, such as Facebook, eBay, Instagram and through its own online store. In 2016, Mr Anthony went into business with Chris Anastasi to both manufacture and sell gym apparel, which later led to the incorporation of several companies under the ‘Muscle Nation’ name.  As of 4 September 2020, Muscle Nation’s business has expanded to the manufacture and sale of gym equipment, dietary supplements, and fitness education material.

2. The Opponent is the owner of the following trade mark registration (‘Opponent’s Trade Mark’):

   Trade Mark Number: 1997368

Trade Mark:               

Priority Date:             21 March 2019

Specification:             See Annexure A

1. Mr Anthony claims that he commissioned the design of the Opponent’s Trade Mark in or around 2014. The Opponent’s Trade Mark was first used as a profile picture on Muscle Nation’s Facebook page on 9 November 2014.

2. Mr Anthony declares that from 2014 to 2019 he directed use of the Opponent’s Trade Mark through Muscle Nation, which licensed the use of the Opponent’s Trade Mark to other entities within the Muscle Nation group of companies, including the Opponent. On 24 May 2019 Muscle Nation entered into an Intellectual Property Assignment Deed with the Opponent in which Muscle Nation assigned the Opponent’s Trade Mark to the Opponent. Exhibited to the Anthony Declaration is a copy of this agreement.

3. Mr Anthony declares that as of 4 September 2020, the Opponent’s Trade Mark has been widely used in relation to apparel, containers and packaging for dietary supplements, hats, gym bags, and gift cards. Mr Anthony explains that the Opponent’s Trade Mark is used substantially on its social media platforms and through goods sold on the Opponent’s website, (‘Opponent’s Website’). Screenshots of the Opponent’s Website showing pages from 2016 to 2019 have been exhibited to the Anthony Declaration.

4. Mr Anthony declares that Muscle Nation sells its products to approximately 250 retailers across Australia. Disclosed in the Anthony Declaration are the total sales orders from the period of 1 September 2018 to 31 August 2020. Mr Anthony explains that 90% of the orders made during this period were for Muscle Nation’s apparel goods.

5. The Opponent promotes the Opponent’s Trade Mark via Instagram, Facebook, YouTube, and TikTok. Examples of use of the Opponent’s Trade Mark on these platforms is exhibited to the Anthony Declaration.

Applicant

1. Mr Mayo declares that the Applicant was incorporated in March 2009. Mr Mayo is also the Director of the company OneMoreRep Pty Ltd (‘OneMoreRep’), a company that licenses use of the Trade Mark from the Applicant.

2. Mr Mayo declares that the Trade Mark was developed in or about August 2020. The Trade Mark is intended to feature the three elements of the name ‘OneMoreRep’ in the form of ‘1’, ‘M’ and ‘R’.

3. The first use of the Trade Mark commenced on or about August 2020. The Trade Mark has been used on a range of apparel goods. Exhibited in the Mayo Declaration are examples of use of the Trade Mark on hats, beanies, sports bras, jackets and men’s and women’s shorts and leggings.

4. The Trade Mark has been promoted via the Applicant’s website, (‘Applicant’s Website’), and various social media platforms including OneMoreRep’s Facebook account, Instagram account, LinkedIn account, and TikTok account. The Applicant also engages influencers to promote its Trade Mark. Mr Mayo declares that 37 influencers over the period of February 2021 were engaged to promote the Trade Mark. Exhibited to the Mayo Declaration are the names and cost of each influencer.

5. The Applicant’s Goods bearing the Trade Mark are available from the Applicant’s Website, and through the third party retailer Nutrition Warehouse Pty Ltd (‘Nutrition Warehouse’). Revenue figures from the Applicant’s Website, Nutrition Warehouse’s website, and Nutrition Warehouse’s instore sales are exhibited to the Mayo Declaration.

6. Mr Mayo opines that the Applicant and Opponent have different target markets with the Applicant’s marketing focusing on fashion and the Opponent’s marketing focusing on fitness and bodybuilding.

Discussion and Reasons

Section 44

1. Section 44 relevantly provides:

   (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.

1. To succeed under this ground, the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, which is in the name of a person other than the Applicant, and in respect goods that are similar to the Applicant’s Goods, or services that are closely related to the Applicant’s Goods.

2. In the SGP the Opponent identified the Opponent’s Trade Mark as the basis for this ground of opposition.

3. The Opponent’s Trade Mark has an earlier priority date than the Trade Mark and is held in the name of a person other than the Applicant.

4. I am also satisfied that the Applicant Goods, being apparel, are the same as the various clothing goods specified in Class 25 of the Opponent’s Trade Mark.

Comparison of Trade Marks

1. For reference, both of the trade marks are reproduced below:

Trade Mark Opponent’s Trade Mark

1. In Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell & Esso’) Windeyer J explained the test for determining substantial identity:

   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.[4]

   [4] [1963] HCA 66, [12].

2. The Opponent submits that the trade marks are substantially identical due to the visual similarity that arises from the essential elements of the trade marks. In the Opponent’s view, each trade mark is comprised of a slanted single stroke followed by a letter that resembles an ‘N’ or, taken together, an ‘M’. Conversely, the Applicant submits that the stylised letters used in both trade marks are phonetically and visually different. In the Applicant’s view, the initial single stroke in the Trade Mark is a stylized number ‘1’ followed by a ‘M’ and a ‘R’, which would likely be pronounced by consumers as ‘1MR’.

3. In my view, when compared side by side the differences between the two trade marks are readily apparent. The first element of the trade marks, whether characterised as the letter ‘I’, the numeral ‘1’, or a more ambiguous sign, noticeably differ in length. The font and the angles of the respective trade marks, when viewed side by side, are also clearly different. I am satisfied that due to these differences there is not a total impression of resemblance between the trade marks.

4. Section 10 of the Act defines ‘deceptively similar’ as:

   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.

1. The approach for assessing whether trade marks are deceptively similar was outlined by Windeyer J in Shell & Esso:

   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].[5]

   [5] [1963] HCA 66, [13].

2. For trade marks to be considered deceptively similar there must be a real and tangible danger of deception or confusion occurring.[6] This will be the case where there is a real likelihood that an ordinary person would be caused to wonder whether the goods come from the same trade source.[7]

   [6] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J); Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French J).

   [7] Ibid.

3. The basis for any deception or confusion is the impression or recollection of the trade marks that is carried away and retained.[8] Accordingly, an allowance is made for imperfect recollection of the trade marks.[9] The impression derives from the trade marks in their entirety,[10] and is informed by the look, sound and ideas conveyed by the trade marks.[11]

   [8] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ).

   [9] Crazy Ron's Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [77] (Moore, Sackville, and Emmett JJ).

   [10] Clarke v Sharp (1898) 15 RPC 141, 146 (Byrne J).

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

4. The Opponent reiterates its submission that visual differences between the trade marks are minor with the Trade Mark only having a slightly more forward sloping angle. The Opponent also submits that confusion between the trade marks is more likely when used in relation to clothing goods because parts of the trade marks will often be occluded or seen from a variety of angles. The Applicant contends that there are no common elements between the trade marks.  In the Applicant’s view, the visual differences alone are sufficient to differentiate the trade marks. The Applicant also notes that there is no aural or conceptual similarity between the trade marks.

5. In my assessment, the Trade Mark is not deceptively similar to the Opponent’s Trade Mark. Whilst both trade marks are comprised of two letters or symbols, there are a number of visual differences between the trade marks. First, the trade marks are represented in different fonts. Although both trade marks are represented in an angular font, the visual impression conveyed by the respective trade marks is different. The Applicant describes the Opponent’s Trade Mark as oblique in its overall shape in contrast to the more triangular shape of the Trade Mark. The second noticeable difference concerns the first element of the trade marks. I reiterate my comments from the discussion on substantial identity.  Whether characterized as the letter ‘I’, or, the numeral ‘1’, the first element of the trade marks noticeably differ in length. While I acknowledge the second element of both trade marks resembles the letter ‘N’, I do not consider this similarity sufficient to result in any tangible danger of visual confusion when considered in the context of the other differences.

6. The significance of these visual differences is increased when regard is given to the lack of any clear identifiable meaning inherent to the trade marks. While the trade marks may bear some resemblance to the letter ‘M’, the letter ‘N’ or the word ‘in’, in my view, there is no obvious meaning inherent in either trade mark. The Anthony Declaration indicates that the Opponent’s Trade Mark is intended to be an acronym for ‘Muscle Nation’. Similarly, the Mayo Declaration indicates the Trade Mark is a representation of the brand ‘One More Rep’. However, without further context neither meaning is conveyed by the trade marks. In my view, it is unlikely that either trade mark would convey an inherent meaning to ordinary consumers. It is unlikely that consumers would draw any similarities between the trade mark based on the meaning of the trade marks. This also means that consumers would be unlikely to distinguish the trade marks based on different ideas being conveyed. Furthermore, the ambiguity surrounding the meaning of the trade marks mitigates any potential confusion that might stem from an aural comparison of the trade marks. The trade marks are open to significant interpretation and it is likely that they would be subject to various pronunciations by consumers.

7. The Anthony Declaration refers to an incident on 19 March 2021 in which a manager of Muscle Nation was informed by a customer that the customer had mistaken the Trade Mark for the Opponent’s Trade Mark. I do not consider the evidence of this incident probative considering that there is no evidence from either of the individuals involved or evidence that otherwise substantiates the comments in the Anthony Declaration.

8. For the reasons discussed above, I am satisfied that there would not be a real or tangible danger of confusion between Trade Mark and the Opponent’s Trade Mark. The section 44 ground of opposition is not established.

Section 58

1. Section 58 relevantly provides:

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

2. Ownership of a trade mark can be established through authorship and use of a trade mark,[12] or, in the absence of use, a combination of authorship, the filing of an application or an intention to use the trade mark.[13] To succeed in this ground of opposition, the Opponent must establish the following:

   ·     The Trade Mark are identical, or substantially identical, to an earlier trade mark;

   ·     The earlier trade mark has been used in respect of good or services that are ‘the same kind of thing’ as the Applicant’s Goods; and

   ·     Another person has an earlier claim of ownership based on use of the earlier trade mark before the Relevant Date.[14]

   [12] Moorgate Tobacco Co Ltd v Philip Morris Ltd (no 2) 156 CLR 414 (Deane J); Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [49], [55] (Keane CJ, Stone and Jagot JJ).

   [13] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [50] (Greenwood, Jagot and Beach JJ) (‘Pham’); Shell Co of Australia Ltd v Rohm and Haas Co (1948) 78 CLR 601, 627 (Dixon J).

   [14] Pham (n 13) [50].

3. In its SGP the Opponent particularised this ground of opposition as follows:

   The Opponent's Registered Trade Mark is substantially identical to the Opposed Trade Mark and was first used by the Opponent’s predecessor in title, Muscle Nation in Australia in or about 2014.

   It has been continually used since that time in respect of a range of goods and services including apparel (clothing, footwear, headgear) within Class 25, including since May 2019 by Muscle Nation as the authorised user of the Opponent's Registered Trade Mark.

4. With respect to their claim for ownership of the Trade Mark, the Opponent submits that the Trade Mark is substantially identical to the Opponent’s Trade Mark. As discussed in relation to the section 44 ground of opposition, I am satisfied that the Opponent’s Trade Mark is not substantially identical to the Trade Mark. Accordingly, I am not satisfied that the Opponent’s predecessor in title, or any other party, has an earlier claim of ownership to the Applicant’s Trade Mark.

5. The ground of opposition under section 58 has not been established.

Section 60

1. Section 60 provides:

   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.

2. To succeed in this ground of opposition, the Opponent must establish:

• A reputation existing in another trade mark in Australia before the Relevant Date; and

• That because of the reputation of the other trade mark, use of the Trade Mark would be likely to deceive or cause confusion.

1. Reputation, in the context of section 60, refers to the ‘recognition of [the mark] by the public generally’.[15] It is not a factor that is assumed and must be established by the Opponent as a matter of fact.[16]

   [15] McCormick & Co Inc v McCormick [2000] FCA 1335, [81] (Kenny J) (‘McCormick’).

   [16] Conagra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J).

2. There are a variety of ways the reputation of a trade mark may be established, including by demonstrating a significant number of people have been exposed to the trade mark,[17] or providing evidence of high volume of sales,[18] advertising expenditure or other promotion of goods or services to which the trade mark applies.[19] There are also qualitative aspects to the reputation of a trade mark, which concern the value or esteem that the public hold for the trade mark.[20]

   [17] Ibid [118].

   [18] McCormick (n 15) [86].

   [19] Ibid.

   [20] Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [83] (O’Bryan J).

3. The reputation relied on by the Opponent must be amongst a significant or substantial number of persons.[21] What amounts to a significant or substantial number of people is informed by the relevant market and the nature of the goods or services in question.[22]

   [21] Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin, Goldberg JJ).

   [22] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).

4. The Opponent relies on the claimed reputation of the Opponent’s Trade Mark. The Opponent claims that the Opponent’s Trade Mark was first used in or about 2014 and has since developed a reputation in Australia in respect of a range of goods and services, including apparel.

5. The Applicant submits that the evidence falls short of establishing the reputation of the Opponent’s Trade Mark in Australia. In particular, the Applicant emphasises the lack of supporting documentation regarding the Opponent’s marketing expenditure. The Applicant also contends that the Opponent has consistently used the Opponent’s Trade Mark in conjunction with or in near proximity to the trade mark ‘MUSCLE NATION’, and that there is no evidence that the Opponent’s Trade Mark has accrued any reputation separately to the ‘MUSCLE NATION’ trade mark.

6. Information on sales figures and advertising expenditure is not determinative. However, an absence of these metrics or limitations in the metrics provided can make it challenging for the Opponent to demonstrate the extent of any reputation that may have developed from the use of the Opponent’s Trade Mark. In this case, there is limited evidence regarding the quantitative aspects of the claimed reputation in the Opponent’s Trade Mark. The Anthony Declaration provides a cumulative gross sales figure for the period of 1 September 2018 to 31 August 2020. While this sale figure is not itemised to indicate the amount of relevant goods sold, Mr Anthony did declare 90 per cent of the goods sold during this period were apparel. The Second Anthony Declaration seeks to remedy this issue by including sales figures of leggings and sports bras from 1 January 2018 to the Relevant Date. Whilst a reasonable amount of apparel was sold over this period by the Opponent, a two-year period before the Relevant Date is a very limited time in which to demonstrate the existence of a reputation amongst a significant or substantial number of persons.

7. The social media metrics provided in the Anthony Declaration do indicate that the Opponent has gained a significant number of followers on its social media accounts. For example, Muscle Nation’s Instagram account has 687,000 followers and its Facebook account has over 1,200,000 followers. However, the evidence of the Opponent’s marketing activities is also limited. No marketing expenditure has been provided, nor has the Opponent detailed its marketing activities beyond its various social media activities.

8. The Opponent’s Trade Mark has been used in relation to clothing and apparel since 2014. The market for these goods includes the Australian purchasing public, retail businesses and the fashion industry. Accordingly, the relevant class of consumers is a broad demographic of the Australian public. Based on the limited information provided, I cannot be satisfied that the Opponent’s Trade Mark has accrued a reputation that is prominent amongst a significant amount of Australian consumers. Whilst I acknowledge that the evidence demonstrates that the Opponent has used the Opponent’s Trade Mark since 2014, use of a trade mark does not demonstrate that a trade mark has garnered a reputation that may result in deception or confusion.

9. As the evidence is not sufficient to establish that the Opponent’s Trade Mark had a reputation in Australia, the ground of opposition under section 60 is not established.

Section 42(b)

1. Section 42(b) provides:

   An application for the registration of a trade mark must be rejected if:

   …

   (b)    its use would be contrary to law.

2. The Opponent relies on sections 18 and 29(1)(g) and 29(1)(h) of the Australian Consumer Law (‘ACL’) of Schedule 2 of the Competition and Consumer Act 2010 (Cth) and the tort of passing off as the basis for the ground of opposition under section 42(b) of the Act.

3. In order to succeed in an opposition under section 42(b) of the Act, the Opponent must demonstrate on the balance of probabilities that use of the Trade Mark would contravene sections 18 or 29 of the ACL or constitute passing off. [23]

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

4. The Opponent submits that use of the Trade Mark would contravene ss 18 and 29 of the ACL or constitute passing off for the following reasons:

• The similarities between the Trade Mark and the Opponent’s Trade Mark;

• The Opponent’s reputation in the Opponent’s Trade Mark;

• The Applicant and Opponent promote and sell their goods through the same or similar channels to the same class of customer;

• The Applicant applies its Trade Mark in the same position on its garment as the Opponent; and

• The nature of the goods means that the trade marks are likely to be seen from different perspectives, obscuring the view of some parts of the trade marks.

Australian Consumer Law

1. Section 18 of the ACL requires there to be a likelihood that the relevant consumer would be misled or deceived as to the origin of the Applicant’s Goods due to the conduct of the Applicant. Section 29 of the ACL concerns representations that are false or misleading. There is no material difference between the expression ‘mislead or deceive’ in section 18 of the ACL and ‘false or misleading’ in section 29 of the ACL.[24] The requirement to mislead or deceive the relevant consumer imports a stricter requirement than section 60 of the Act.[25]

   [24] Australian Competition and Consumer Commission v Coles Supermarkets Australia Pty Ltd [2014] FCA 634, [40] (Allsop CJ).

   [25] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44, [8] (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [32]-[33] (Stewart J).

2. For the reasons outlined in relation to both section 44 and section 60 grounds of opposition, in my view it is not likely that use of the Trade Mark would be likely to mislead or deceive an ordinary or reasonable consumer of the relevant goods into believing that the Trade Mark and the Opponent’s Trade Mark are related.

Passing Off

1. Where a trade mark does not contravene section 18 of the ACL, it is unlikely to amount to passing off.[26] Justice Hill  noted in Re Equity Access Pty Ltd v WestpacBanking Corporation [1989] FCA 771 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: Taco Company of Australia Inc v. Taco Bell Pty Ltd (1982) 42 ALR 177, 206; Telmak Teleproducts (Aust) Pty Ltd v. Coles Myer Ltd (unreported) 21 July 1989 Full Federal Court at p 18.[27]

   [26] Monster Energy v USA Nutraceuticals Inc [2017] ATMO 22, [58] (Hearing Officer Robert Wilson).

   [27] Re Equity Access Pty Ltd v WestpacBanking Corporation [1989] FCA 771, [40] (French J).

1. Sections 52 and 53 of the Trade Practice Act 1974 (Cth) were the antecedents of sections 18 and 29 of the ACL. Given my findings in relation to sections 18 and 29 of the ACL, I am also satisfied that use of the Trade Mark would not constitute passing off.

2. In consideration of the above reasons, the ground of opposition under section 42(b) has not been established.

Decision

1. Section 55(1) relevantly provides:

   Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

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

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

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

2. The Opponent has not established any of the nominated grounds of opposition. Accordingly, trade mark 2115220 may proceed to registration one month from the date of this decision.

3. Should the Registrar be served with a notice of appeal before the registration of the Trade Marks, I direct that the registration of the Trade Mark not occur until the appeal has been decided or discontinued, and that any disposition of the application be in accordance with the Court’s orders or direction.

Costs

1. Both parties sought an award of costs. As the Opponent was not successful in the opposition, I award costs against the Opponent under s 221 of the Act in accordance with the amounts detailed in Schedule 8 of the Regulations.

Timothy Brown
Hearing Officer
Delegate of the Registrar of Trade Marks
2 February 2023

Annexure A

Specification of Trade Mark Registration 1997368

Class 5: Dietary protein supplements; Dietary supplements; Nutritional supplements; Vitamin supplements; Dietary nutritional supplements; Dietary food supplements

Class 18: Athletics bags; Bags for sports; Casual bags; Gym bags

Class 21: Containers for household or kitchen use; Domestic containers for food; Drinking containers; Food storage containers; Heat insulated containers for drinks; Insulated containers; Kitchen containers; Thermally insulated containers for food; Thermally insulated domestic containers; Drinking bottles for sports; Plastic water bottles; Drinking receptacles

Class 24: Towels (textile); Pillow cases

Class 25: Apparel (clothing, footwear, headgear); Clothing for sports; Footwear for men; Footwear for women; Sporting footwear; Bras; Gym shorts; Gym suits; Leisure wear; Sports caps; Sportswear; Sweat-absorbent underwear; Sports jumpers; Sports singlets; Jumpers (sweaters); Underwear; Footless tights; Tights

Class 28: Apparatus for use in sports; Back supports (belts) for weightlifters; Rucksacks adapted to carry specific sporting articles; Belts for weightlifting; Gloves specifically adapted for sporting purposes; Weight training apparatus (other than for medical use)

Class 41: Instruction in physical fitness; Physical fitness tuition; Physical health education; Providing information, including online, about education, training, entertainment, sporting and cultural activities