Opposition by Athleta (ITM) Inc. to extension of protection under regulation 17A.33 of the - [2025] ATMO 196

TRADE MARKS ACT 1995

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

Re:Opposition by Athleta (ITM) Inc. to extension of protection under regulation 17A.33 of the Trade Marks Regulations 1995 of trade mark number 2380871 (International Registration number 1703449) (classes 25 and 35) - ATHLECIA - in the name of Sports Group Denmark A/S

Delegate:

Anne Makrigiorgos

Representation:

Opponent: AJ Park

Holder: Laminar IP Pty Ltd

Decision:

2025 ATMO 196

Trade Marks Act 1995 (Cth) – opposition to extension of protection under regulation 17A.33 – ground of opposition under s 44 established – extension of protection refused.

Background

This is a decision in respect of an opposition by Athlete (ITM) Inc (‘Opponent’) under reg 17A.33 of the Trade Marks Regulations 1995 (Cth)[1] to the extension of protection of the following International Registration Designating Australia (‘IRDA’) in the name of Sports Group Denmark A/S (‘Holder’):
[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) (‘Regulations’).

International Registration number	1703449
IRDA number	2380871 (‘Application’)
Trade mark	ATHLECIA (‘Trade Mark’)
Filing date	19 July 2023 (‘Relevant Date’)
Specification	Class 25: Sportswear; footwear for sports; headwear for sports; leisure wear; leisure footwear; gloves [clothing] for sports; headbands [clothing] for sports; sports socks. Class 35: Retail and wholesale services, including via the Internet in relation to bags for sports; retail and wholesale services, including via the Internet in relation to drinking bottles for sports, water bottles for bicycles, sports bottle belts for running, hiking and biking and belt with water bottles; retail and wholesale services, including via the Internet in relation to towels not of paper, towels of textile, beach towels and bath towels; retail and wholesale services, including via the Internet in relation to sportswear, footwear for sports, headwear for sports, leisure wear, leisure footwear, gloves for sports, headbands for sports and sports socks; retail and wholesale services, including via the Internet in relation to hair fastening articles and hairbands; retail and wholesale services, including via the Internet in relation to gymnastic and sporting articles, sports equipment, appliances for sports, gymnastics apparatus, appliances for gymnastics, knee protection pads for sports use, indoor fitness apparatus and bags adapted for sporting articles and equipment. (‘Holder’s Goods and/or Services’)
Endorsement	The applicant has advised that the words in the Mark have no meaning in English

The Trade Mark was examined and advertised as accepted for possible extension of protection on 20 December 2023.
On 19 February 2024, the Opponent filed a Notice of Intention to Oppose the Trade Mark. On 15 March 2024, the Opponent filed its Statement of Grounds and Particulars (‘SGP’). The Holder filed a Notice of Intention to Defend the opposition on 17 April 2024.
The Opponent filed Evidence in Support (‘EIS’) on 23 July 2024. The Holder filed Evidence in Answer (‘EIA’) on 31 October 2024. The Opponent did not file Evidence in Reply.
The parties were given the opportunity to either request an oral hearing or a hearing by way of written submissions. Both parties elected to be heard on the basis of written submissions, the Opponent filing written submissions prepared by Thomas Huthwaite of AJ Park and the Holder filing written submissions prepared by Lester Miller of Laminar IP Pty Ltd. I have decided this matter based on the particulars set out in the SGP, the evidence of the parties and the written submissions of the parties.

Grounds and Onus

Regulation 17A.34 provides that an extension of protection may be opposed on any of the grounds on which an IRDA may be rejected and on the grounds set out in ss 58 to 61 and 62A.
The SGP nominates a single ground of opposition under s 44. The Opponent carries the burden of establishing this 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] HCA 82, [4] (Kitto J) (‘Southern Cross’).

Evidence

The parties filed the following evidence in this matter:

Declarant and Position	Date	Annexures or Exhibits
EIS
Sara Nichols, Vice President of the Opponent, (‘Nichols’)	22 July 2024	SN-01 to SN-07
EIA
Lester Miller, Trade Marks Attorney, formerly of Foundry Intellectual Property Pty Ltd, the Holder’s representative (‘Miller’)	31 October 2024	A to F

Summary of Evidence

EIS

Nichols provides a history of the Opponent and the Opponent’s brand ATHLETA (‘Opponent’s Mark’) which was founded in 1998. The Opponent is a wholly owned subsidiary of The Gap, Inc. The Opponent’s Mark is used in respect of athletic apparel and gear and related goods and services.
Nichols provides details of the Opponent’s two Australian registrations for the Opponent’s Mark, details of which appear below (‘Opponent’s Registrations’):

Number

Goods and services

Priority date

2173071

(‘071 Mark’)

Class 25: Clothing, footwear, headwear; clothing, namely, pants, shorts, sweatpants, overalls, shirts, tee-shirts, sweatshirts, blouses, jackets, vests, coats, rainwear, shoes, lingerie, sleepwear, loungewear, swimwear, gloves, socks, hosiery, belts, scarves, hats, ties, slippers, skirts, dresses, and sweaters

(‘Opponent’s Goods’)

22 April 2021

2263015

(‘015 Mark’)

Class 35: Advertising; business management, organization and administration; office functions; Retail and wholesale services and retail and on-line services in the field of clothing, footwear, headgear, clothing accessories, clothing design, bags, leather goods, luggage, jewelry, clocks, sunglasses and eyewear, toys, games and sporting equipment, hair accessories, cosmetics, toiletries, fragrances, personal care products, stationery, giftware, household products for dining, bed and bath, house wares and glass, paper goods; Advertising; marketing and promotional services; Product demonstrations and product display services. Business management; business administration; office functions; the bringing together, for the benefit of others, of clothing, footwear, headwear, clothing accessories, bags, leather goods, sunglasses and eyeglasses, jewelry, hair accessories, cosmetics, toiletries, fragrances, personal care products, stationery, giftware, housewares, toys, games and sporting equipment, (excluding the transport thereof), enabling customers to conveniently view and purchase those goods, such services being provided also by retail stores, by means of electronic media, for example, through websites; promoting the goods and services of others by placing advertisements and promotional displays on an electronic site accessible through a computer network; providing on-line ordering services in the field of a wide variety of general merchandise; mail order catalogue services featuring general merchandise and general consumer goods; loyalty, incentive and bonus program services, commercial trading and consumer information services, business assistance, management and administrative services; Business analysis, research and information services; commercial administration of the licensing of the goods and services of others; the consulting and the opening and running of retail clothing store outlets; Organization of exhibitions for commercial or advertising purposes; writing and publication of publicity texts; marketing and promotional services; Product demonstrations and product display services.

(‘Opponent’s Services’)[5]

13 April 2022

[5] The Opponent’s Goods and the Opponent’s Services will collectively be referred to as the Opponent’s Goods and Services’.

Nichols provides examples of use of the Trade Mark by the Holder obtained from the Holder’s Facebook page and web sites and including a post from 2018 showing use of and from the websites in 2024 showing use of the Trade Mark and .
Nichols provides undated printouts from the Opponent’s website at showing use of the Opponent’s Mark including with a device as .

EIA

Miller exhibits an unsigned copy of a witness statement from the creator of the Trade Mark for the Holder, Anne Gelardi, dated 30 April 2024 which was filed in proceedings in the United Kingdom (‘UK’) between the Opponent as claimant and the Holder (and another) as defendants. The witness statement describes the creation of the Trade Mark.
Miller exhibits a list of twelve words obtained from the Free Dictionary website which end in the suffix ‘-ecia’ and a single screenshot of a YouTube video at which video is claimed to refer to the Australian accent featuring the softening of ‘t’ sounds to ‘d’ sounds (so-called ‘T-flap’) in the middle or at the end of words, when disposed between vowels.
Miller exhibits examples of nine trade marks on the Australian Trade Mark Register which have ‘Athlet’ as a prefix in classes 25 and/or 35. I note that other than LULULEMON ATHLETICA and Aje Athletica, all of these marks contain the words athlete’s, athletic or athletics.
The balance of Miller contains arguments and submissions which I find unnecessary to summarise.

Discussion

Section 44

Section 44 provides (some 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.
Note 1:For deceptively similar see section 10.
Note 2:For similar goods see subsection 14(1).
(2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a)it is substantially identical with, or deceptively similar to:
(i)a trade mark registered by another person in respect of similar services or closely related goods; or
(ii)a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
Note 1:For deceptively similar see section 10.
Note 2:For similar services see subsection 14(2).
(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.
The SGP nominates the Opponent’s Registrations. To successfully oppose the Application pursuant to s 44, the Opponent must establish each of the following requirements:

one or more of the Opponent’s Registrations have a priority date which is earlier than the Relevant Date and are held in a name other than that of the Holder (‘first requirement’);
the Holder’s Goods are similar to the goods of the 071 Mark or the Holder’s Services are similar to the services of the 015 Mark or the Holder’s Goods are closely related to the services of the 015 Mark or the Holder’s Services are closely related to the goods of the 071 Mark (‘second requirement’); and
the Trade Mark is substantially identical with or deceptively similar to the Opponent’s Mark (‘third requirement’).

I am satisfied that the priority dates of the Opponent’s Registrations are earlier than the Relevant Date and that the Opponent’s Registrations are in a name other than the Holder. Therefore, the first requirement is satisfied.
I now consider the second requirement, whether the Holder’s Goods and Services are similar or closely related to the Opponent’s Goods and Services.
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.
Services are ‘similar to other services’ if they are the same or of the same description as the other services.[9] In MID Sydney v Australian Tourism Co Ltd (‘MID Sydney’),[10] the Full Court held that the factors established for determining whether goods are of the same description also apply, ‘subject to any necessary modification’, to determining whether services are of the same description. Essentially the principles enunciated in Southern Cross[11] and ReJ Lyons & Co Ltd’s Application[12] regarding goods of the same description apply in relation to services.[13]
[9] Section 14(2).
[10] [1998] FCA 1616 (Burchett, Sackville and Lehane JJ).
[11] Southern Cross (n 4), 604.
[12] [1959] RPC 120, 128 and 132 (CA UK).
[13] MID Sydney (n 10).

The Opponent submits that the Holder’s Goods and Services are the same as the Opponent’s Goods and Services. The respective goods and services both cover clothing, footwear, headgear, and the retail and wholesale of the same. The Holder’s submissions do not dispute that the Holder’s Goods and Services are similar to the Opponent’s Goods and Services.
In my view, it is evident that the Holder’s Goods and Services are the same or of the same description as the following subset of the Opponent’s Goods and Services:
Retail and wholesale services and retail and on-line services in the field of clothing, footwear, headgear, clothing accessories, clothing design, bags, leather goods, luggage, jewelry, clocks, sunglasses and eyewear, toys, games and sporting equipment, hair accessories, cosmetics, toiletries, fragrances, personal care products, stationery, giftware, household products for dining, bed and bath, house wares and glass, paper goods; the bringing together, for the benefit of others, of clothing, footwear, headwear, clothing accessories, bags, leather goods, sunglasses and eyeglasses, jewelry, hair accessories, cosmetics, toiletries, fragrances, personal care products, stationery, giftware, housewares, toys, games and sporting equipment, (excluding the transport thereof), enabling customers to conveniently view and purchase those goods, such services being provided also by retail stores, by means of electronic media, for example, through websites; providing on-line ordering services in the field of a wide variety of general merchandise; mail order catalogue services featuring general merchandise and general consumer goods.
The second requirement is therefore satisfied, and I move to consider whether the Trade Mark is substantially identical with or deceptively similar to the Opponent’s Mark.
Under the s 44 ground, the SGP claims that the Opponent’s Registrations are earlier similar trade marks. The Opponent’s submissions only argue deceptive similarity. For completeness, I do not consider the Trade Mark to be substantially identical to the Opponent’s Mark. Compared side by side as a whole,[14] the Trade Mark has visual and aural differences to the Opponent’s Mark and consequently, there is a total impression of dissimilarity.[15]
[14] The Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [12] (‘Shell’).
[15] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [62] (Gummow J).
I will now consider whether the Trade Mark is deceptively similar to the Opponent’s Mark. 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’.
Justice Windeyer outlined the following approach for the assessment of deceptive similarity 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 [mark].[16]
[16] Shell (n 14), [13].
The respective trade marks must be compared as wholes,[17] having regard to essential or distinguishing features,[18] and considering the marks visually and aurally, and in the context of the relevant surrounding circumstances.[19] What must be considered is the overall impression that the notional buyer, being a person of ordinary intelligence and memory, would likely have of the Trade Mark and the Opponent’s Mark, having regard to the look, sound, and ideas conveyed by the respective marks, and allowing for imperfect recollection.[20]
[17] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50] (‘Woolworths’). See also, Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] FCA 901, [78] (Bennett J).
[18] Crazy Ron’s Communications v Mobileworld Communications [2004] FCAFC 196, [77]-[88] (Moore, Sackville and Emmett JJ).
[19] New South Wales Dairy Corporation v Murray Goulburn Co-operative Co Ltd [1989] FCA 124 (Gummow J).
[20] Jockey International Inc v Darren Wilkinson [2010] ATMO 22 (Hearing Officer Spence).

In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd, Kitto J noted the following regarding the risk of deception or confusion:
While a mere possibility of confusion is not enough - for there must be a real, tangible danger of its occurring - it is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough if the ordinary person entertains a reasonable doubt.[21]
[21] Southern Cross (n 4), [4].
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.[22]
[22] Coca-Cola Company v All-Fect Distributors Ltd [1999] FCA 1721, [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) (‘Pioneer’).
In relation to the comparison of marks, the Full Court said in Starr Partners Pty Ltd v Dev Prem Pty Ltd:
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.[23]
[23] [2007] FCAFC 42, [22] (Lindgren, Emmett and Finkelstein JJ).
Thus, the presence of a common element is not conclusive to a finding of deceptive similarity.[24] Distinctiveness of the compared trade marks is a factor that can legitimately be taken into account when considering deceptive similarity[25] and the determination of the question ‘must necessarily involve some inquiry as to the inherent distinctiveness of the part which is common to both marks under consideration’.[26] Therefore it is relevant to take into account whether elements of the rival marks have a descriptive character’[27] and whether the element of a trade mark that is descriptive may call to mind the nature of the product or service, rather than its trade source.[28]
[24] Conde Nast Publications Pty Ltd v Virginia Taylor [1998] FCA 864 (Burchett J); PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2021] FCAFC 128 (Jagot, Nicholas and Burley JJ).
[25] Stone & Wood Group Pty Ltd v Intellectual Property Development Corporation Pty Ltd [2018] FCAFC 29, [66] (Allsop CJ, Nicholas, Katzmann JJ).
[26] Re Frigiking Trade Mark [1973] RPC 739, 752 (Ch D).
[27] The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd [2023] FCA 482, [73] (Jackman J).
[28] Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel [2021] FCAFC 8, [78] (McKerracher, Gleeson and Burley JJ).
The commonality of idea is part of the process of determining if the marks look or sound alike. In Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd, the High Court observed:
[t]he fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them, although this fact could be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive.[29]
[29] [1952] HCA 15; (1952) 86 CLR 536, 539 (Dixon CJ, Williams, McTiernan, Webb and Kitto JJ).
Justice French expressed the view in Woolworths[30] 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 Woolworths that, ‘[t]he closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive’.[31]
[30] Woolworths (n 17), [39].
[31] [1998] FCA 1268; (1998) 42 IPR 615, 624.
In light of the authorities, I must decide whether there is a real, tangible danger of deception or confusion by reason of the use of the Trade Mark, having regard to the imperfect recollection of the notional consumer. That is not to be judged by a side-by-side comparison of the Trade Mark and the Opponent’s Mark. I must compare the marks as wholes, visually and aurally considering all their elements with regard to essential or distinguishing features, in the context of the relevant surrounding circumstances. Of importance is the effect and meaning of the trade marks, particularly their effect or impression produced on the mind of ordinary consumers.
The Opponent submits that the Opponent’s evidence regarding the history and use of the Opponent’s Mark provides context for the comparisons to be made between the respective marks. For example, contrasting the Opponent’s evidence of use of the Opponent’s Mark in conjunction with a device with the way the Holder uses the Trade Mark also with a device. The question of deceptive similarity is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.[32]
[32] Woolworths (n 17), 50.
Justice Mason observed in Berlei Hestia Industries Ltd v The Bali Co Inc:
The question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.[33]
[33] [1973] HCA 43, [11].
Thus, the manner of use of the Opponent’s Mark or the Trade Mark is not relevant to the question of deceptive similarity.[34] I am required to assume that both trade marks will be used in a normal and fair manner[35] for all the goods or services of the respective marks.
[34] Societe Jas Hennessy & Co v Paradise Estate Wines Pty Ltd [2006] ATMO 40 (Hearing Officer Thompson).
[35] Re Smith Hayden & Co Ltd (1946) 63 RPC 97 (Ch D) (Evershed J); Mobil Oil Corp v Dynam Nominees Pty Ltd [1999] ATMO 99 (Hearing Officer Williams).
The Opponent submits that the Trade Mark is deceptively similar as:

there are obvious visual and aural similarities in that the respective marks have a similar length, the same beginning and end and a similar lasting visual and aural impression;
visual appearance is particularly important for class 25 goods and online clothing retail services as trade marks for clothing are generally displayed on a label or on the clothing itself e.g. emblazoned on the front of the clothing and clothing is selected by customers from racks and shelves or from photographs online with little or no intervention from sales staff;
aurally ATHLECIA is likely to be a more difficult word for ordinary Australian consumers to pronounce than ATHLETA. However, that difficulty lends itself to the likely mispronunciation to ATHLECIA. Given the prevalence afforded to the first part of words and vowels in the Australian accent, and the potential to delete sounds at the end of words, there is a real risk that the marks ATHLETA and ATHLECIA will be spoken in a similar manner;
conceptually, ATHLETA and ATHLECIA are difficult to distinguish. Both may be perceived as an allusion to, or derivative of, athlete or athletic; and
there is a real risk that the Holder’s use of ATHLECIA will cause a significant number of ordinary consumers to be confused into thinking that ATHLECIA is the same as ATHLETA, or not notice any difference between them, or alternatively wonder as to whether the goods or services provided originate from the same source.

The Opponent’s submissions provide a list of nine decisions of this Office and the Federal Court involving marks ‘of a similar nature, which were considered deceptively similar’.[36] There is a tendency for submissions on deceptively similarity to focus upon cases in which the application of the principles on deceptive similarity resulted in a favourable outcome, such as the cases above. As stated by Charlesworth J in Caporaso Pty Ltd v Mercato Centrale Australia Pty Ltd:
In my view, considerable care must be taken when considering the result of a case turning on an essentially factual question. The cases illustrate how the established principles have been applied to different signs in different contexts, but they do not represent a tariff or standard to be followed in the case before me.[37]
[36] Opponent’s submissions [3.25]
[37] Caporaso Pty Ltd v Mercato Centrale Australia Pty Ltd [2024] FCA 138, [268]. Affirmed by the Full Court in Caporaso Pty Ltd v Mercato Centrale Australia Pty Ltd [2024] FCAFC 156, [148] (Katzmann, Wheelahan and Hespe JJ).
I am not assisted by the provision of cases which involve a comparison of marks that are materially different (both in the nature of the marks and/or the good/services for which they are registered) to the marks before me in the present case. Each case must be decided on the merits and in applying the test under s 44, I am not assisted by knowing that the Registrar or the Courts found that s 44 was satisfied when comparing e.g. REVISE and LEVIS, KAMATZ and KREMENTZ or ANTIASE and ANTAEUS.
The Opponent’s submissions reference as footnotes:[38]
· a 2025 decision of a German court regarding a successful European infringement action bought by the Opponent against the Holder’s retailers;[39] and
· a 2024 partially successful infringement decision of the UK High Court bought by the Opponent against the Holder (and another) which has been appealed to the Court of Appeal.[40]

I note that these Overseas Decisions have not been filed as evidence in support of this opposition. In my view, these Overseas Decisions likely constitute new evidence filed out of time. The Opponent has not paid a fee for filing this new evidence and neither has the Opponent made a compelling case in favour of it being considered. Further, even if I was minded to consider these decisions, they involve different evidence, law and legal systems. Thus, there is a negligible likelihood that these decisions would influence the outcome of this opposition and consequently they have limited relevance to the present opposition. For this reason, they are, at best, of interest value only and I lean towards giving them no weight.

[38] Opponent’s submissions [3.26] to [3.29]. Footnotes 22, 23 and 24.

[39] Certified English translation of German Court decision and copy of decision in German.

[40] These decisions will be referred to as the (‘Overseas Decisions’).

The Holder submits that the Trade Mark is not deceptively similar as:

the respective marks are derived from the root athlete or athletic, which is an element apt to describe or suggest goods and services in the fields of sport, fitness or apparel. It is therefore a non-distinctive element. Consumers are accustomed to encountering a range of trade marks incorporating ‘ATHLE-’, such that it cannot carry significant weight in distinguishing trade source;
the state of the Register evidence shows the coexistence of numerous ATHLE- prefixed marks on the Register and this demonstrates that the marketplace accommodates a wide variety of such brands without confusion;
the suffixes -CIA and -TA create strikingly different impressions. ATHLETA ends with the strong, clipped syllable -TA, whereas ATHLECIA ends with the softer, elongated -CIA;
ATHLETA is pronounced with three syllables (ATH-LE-TA), emphasising the final TA. ATHLECIA, by contrast, has four syllables (ATH-LE-SEE-AH). The additional syllable materially changes rhythm and cadence, producing a longer and more flowing sound. The marks will not be confused in speech or imperfect recollection; and
ATHLETA is in effect no more than ATHLETE and is highly descriptive of the Opponent’s Goods and Services. A degree of risk of confusion must therefore be accepted.

As to the Holder’s submissions regarding the state of the Register in Miller,[41] the Holder claims this demonstrates that numerous different owners have registered marks with the ATHLE- prefix for goods in class 25 and services in class 35. The Holder’s submissions also provide a table of six ATHLE- prefixed marks in class 25, one of which also covers class 35. I note the comments of Wilcox J in Ocean Spray Cranberries Inc v Registrar of Trade Marks:
The second matter mentioned by Ms Baird is that Ocean Spray adduced evidence of other registered marks that contain, or consist wholly of, the word "classic". That evidence should be disregarded, for the reasons expressed by Jacob J in British Sugar at 305:
‘Both sides invited me to have regard to the state of the register. Some traders have registered marks consisting of or incorporating the word `Treat'. I do not think this assists the factual inquiry one way or the other, save perhaps to confirm that this is the sort of word in which traders would like a monopoly. In particular the state of the register does not tell you what is actually happening out in the market and in any event one has no idea what the circumstances were which led the registrar to put the marks concerned on the register. It has long been held under the old Act that comparison with other marks on the register is in principle irrelevant when considering a particular mark tendered for registration, see e.g. MADAME Trade Mark [1966] R.P.C. 541 and the same must be true under the 1994 Act. I disregard the state of the register evidence.’
I add only that, although consistency in public administration is desirable, a public officer is not justified in persisting with error. Marks may, in the past, have been wrongly registered. It would be an unwarranted distraction from the task at hand to investigate, in a particular case, whether they were or not.[42]
[41] Miller [10] Exhibits D, E and F.
[42] [2000] FCA 177, [35].
I consider that here too it would be an unwarranted distraction to investigate and comment upon the ATHLE- prefixed marks. Further, no evidence has been filed to show whether these trade marks are in use in the Australian marketplace. Therefore, the evidence of the state of the Register does not demonstrate the marketplace accommodating a wide variety of ATHLE- prefixed brands without confusion. I therefore disregard the evidence of the state of the Register.
In my view, the Trade Mark is deceptively similar to the Opponent’s Mark. Both marks are single invented words. The ideas and impressions formed by the two trade marks are very similar, visually, aurally and conceptually. The two marks share the same prefix ATHLE- (first five letters) and the same ending, the letter A. ATHLETA and ATHLECIA consist of seven and eight letters respectively – a difference that is difficult to notice in marks of that length. Certainly, a consumer with an imperfect recollection of the Opponent’s Mark would not note any difference in the number of letters when seeing the Trade Mark.
The Opponent’s Mark contains three syllables ATH-LE-TA and the Trade Mark four – ATH-LE-CI-A. The first two syllables of the respective marks are the same. The courts have consistently held that consumers focus on the beginnings of marks/signs, rather than on the end.[43] The last syllable of the Opponent’s Mark and the last two syllables of the Trade Mark bear a close visual and aural similarity. When pronouncing the TA and CIA, they both end with the same A sound - UH. In my judgment, the word marks are visually and aurally highly similar. I consider an ordinary consumer, imperfectly recalling the ATHLETA mark and encountering ATHLECIA is likely to remember some, but not all aspects of the former.
[43] London Lubricants (1920) Limited's Application (1924) 42 RPC 264, 279 (Sargant LJ); Combe International Ltd v Dr August Wolff GmbH & Co. KG Arzneimittel [2021] FCAFC 8 (McKerracher, Gleeson and Burley JJ) (Combe International).
I agree with the Holder that consumers may believe that both marks are derived from the words athlete or athletic because of the prefix ATHLE-. The Opponent’s submissions also refer to the possibility of the respective marks being perceived as an allusion to, or derivative of, athlete or athletic. The Holder submits that the idea conveyed by both the Trade Mark and the Opponent’s Mark is that of goods and services for athletes or for use in athletics.
In Combe International Ltd v Dr August Wolff GmbH & Co. KG Arzneimittel,[44] the Full Federal Court noted the role of the idea conveyed by a mark in an analysis of deceptive similarity but clarified that the idea of a mark ‘forms only part of the overall analysis required to satisfy the statutory requirements of s 10 of the Act’.[45] Further, in In the Matter of an Application by the Pianotist Company Ltd. for the Registration of a Trade Mark, after pointing out the differences between the suffix ‘master’ in the mark Rainmaster and ‘king’ in the mark Rain King in appearance and sound, their Honours continued (at 538-539):
The two words are so unlike to the eye and to the ear that counsel for the appellant was forced to rely on the likelihood of deception arising from the two words conveying the same idea of the superiority or supremacy of the article as a mechanism for making a spray similar to falling rain or artificial rain as it was called during the argument. But it is obvious that trademarks, especially word marks, could be quite unlike and yet convey the same idea of the superiority or some particular suitability of an article for the work it was intended to do. To refuse an application for registration on this ground would be to give the proprietor of a registered trademark a complete monopoly of all words conveying the same idea as his trademark. The fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them, although this fact could be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive. As Lord Parker said in the passage cited, you must consider the nature and kind of customer who would be likely to buy the goods.[46]

Consequently, ‘where there are visual or other features in common, commonality of idea might then tip the balance in favour of a finding that the likeness is deceptive’.[47]

[44] Ibid.

[45] Ibid [70].

[46] (1906) 23 RPC 774, 539 – 539.

[47] Combe International (n 43), [72].

The trade marks must be compared as a whole, namely as single invented words. There is an absence of evidence that demonstrates the marketplace accommodating a wide variety of ATHLE- prefixed brands without confusion, such that the prefix cannot carry significant weight in distinguishing trade source. Further, even if the prefix has suggestive qualities, the prefix ATHLE- cannot be completely ignored for the purposes of comparison.[48] It is a dominant aspect of both marks and is likely to be recalled by a consumer. Thus, having regard to the shared aural and visual features between the respective marks, the shared features overall tip the analysis in favour of a finding of deceptive similarity.
[48] Ibid [78]; Broadhead’s Application (1950) 67 RPC 113, 215 (Lord Evershed).
Lastly, in assessing whether there is a likelihood of deception or confusion, it is appropriate to consider the surrounding circumstances, including the prospective purchaser[49] and the normal and fair use of the respective goods and/or services. Here it is less likely that the clothing, footwear and headgear (‘Apparel’) and the retailing of Apparel will be requested by oral reference to trade marks rather than by visual inspection. Trade marks are typically displayed on Apparel labels or even on the Apparel itself e.g. emblazoned on the front of clothing and headgear or the side of a shoe. Apparel is also selected by customers from racks and shelves or from photographs online with little or no intervention from sales staff other than to request a size or to try on the Apparel. Therefore, for Apparel, visual differences carry the greater weight.
[49] Woolworths (n 17), [50(iii)].

As Burchett J said in Conde Nast Publications Pty Ltd v Taylor:
This aspect of the matter seems to me to have greater importance in a case, such as the present, where the goods sold under a trade mark are goods likely to be subjected to a careful visual examination by any intending purchaser, or even by any person whose interest in them is at all aroused. The appearance of ladies’ clothing and men’s casual wear is very important. Consumers will not purchase these items over the telephone, or otherwise by a spoken reference to the mark, but will examine them and very often try them on in boutiques or shops. Recognition of the mark will be visual.[50]
[50] [1998] FCA 864; (1998) 41 IPR 505, 510; See also Suzanne Grae Corporation Pty Ltd v Design West Mode Pty Ltd [2019] ATMO 92 (Hearing Officer Cooper); Autumnpaper Ltd v Maya McQueen Pty Ltd [2016] ATMO 53 (Hearing Officer Richards); Hugo Boss AG v Tagmill Pty Ltd [2000] ATMO 23 (Hearing Officer Forno).
I consider there to be a real, tangible danger that the trade marks are likely to be mistaken one for the other or one is associated with the other. The difference between the marks do not create a point of distinction sufficient to mitigate the significant risk of confusion. I am satisfied that there is ‘a real, tangible danger’ that a consumer ‘might be caused to wonder’ whether the Holder’s Goods and Services originate from the same source as the Opponent’s Goods and Services. I find that the two marks under comparison are deceptive similar. The ground of opposition under s 44 has been established.
For completeness, the Holder has not filed any evidence that would permit a finding of honest concurrent use or prior use. Nor has the Holder drawn my attention to any other relevant circumstances that may be considered under section 44(3)(b).

Decision

Section 55 relevantly provides:
(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note: For limitations see section 6.
The Opponent has established the ground of opposition under s 44. Accordingly, I reject the Application for possible protection in its entirety. If the Registrar is served with a notice of appeal within one month from the date of this decision, I direct that the disposition of the Application be in accordance with the court’s direction or order.

Costs

Both parties have sought an award of costs. Costs usually follow the event. Accordingly, I award costs against the Holder under s 221 in the amounts set out in Schedule 8 of the Regulations.

Anne Makrigiorgos

Hearing Officer

Delegate of the Registrar of Trade Marks

17 September 2025