Opposition by Better Beer Holdings Pty Ltd to registration of trade mark application number 2368259 (class 32) - - [2025] ATMO 147

TRADE MARKS ACT 1995

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

Re:Opposition by Better Beer Holdings Pty Ltd to registration of trade mark application number 2368259 (class 32) - TRADIE BEER BUILT BETTER - in the name of TRADIE Holdings Pty Ltd

Delegate:

Benjamin Goldsworthy

Representation:

Opponent: Ed Heerey King’s Counsel, instructed by By George Legal

Applicant: Susan Gatford of Counsel

Decision:

2025 ATMO 147

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under ss 42(b), 44 and 60 considered – none established – trade mark may proceed to registration.

Background

This proceeding concerns an application filed on 4 July 2023 (‘Relevant Date’) under the Trade Marks Act 1995 (Cth)[1] to register trade mark 2368259, details of which I extract below:
Owner: TRADIE Holdings Pty Ltd (‘Applicant’)
Trade mark: TRADIE BEER BUILT BETTER (‘Trade Mark’)
Class 32: Beer; Alcohol-free beer; Alcoholic beers; Ginger beer; Ginger beer (alcoholic); Ginger beer (non-alcoholic); Low alcohol beer; Non-alcoholic beer; Non-alcoholic beers; Root beer; Non-alcoholic beer-based cocktails; Beer-based cocktails; Non-alcoholic cocktails; Seltzers (beverages) (‘Applicant’s Goods’)
[1] Unless specified otherwise, a reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth).
The Trade Mark was examined under s 31 and acceptance was advertised on 5 December 2023. On 25 January 2024, Better Beer Holdings Pty Ltd (‘Opponent’) filed its Notice of Intention to Oppose registration of the Trade Mark. On 26 February 2024, the Opponent filed its Statement of Grounds and Particulars (‘SGP’). On 28 March 2024, the Applicant filed its Notice of Intention to Defend.
On 4 July 2024, the Opponent filed its Evidence in Support (‘EIS’), consisting of a declaration of Nicholas Andrew Cogger, CEO and Director of the Opponent, dated 4 July 2024, (‘Cogger’) with Annexures NAC-1 to NAC-57 (including Confidential Annexures NAC-10, NAC-11, NAC-12 and NAC-23).
The Applicant did not file Evidence in Answer.
On 16 August 2024, the Opponent requested to be heard. The Applicant requested to be heard by written submissions.
On 28 April 2025, I heard the matter by teleconference. The Opponent was represented by Ed Heerey King’s Counsel, instructed by Georgina O’Farrell and Jennifer Wrigley of By George Legal. The Applicant did not appear and relies on written submissions prepared by Susan Gatford of Counsel (‘Applicant’s Written Submissions’). Also present as an observer was Nick Cogger from the Opponent. I am to decide the matter as a delegate of the Registrar of Trade Marks (‘Registrar’).

Onus and grounds

The Opponent has the onus of establishing one of the nominated grounds of opposition.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3]
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
The Opponent pursued grounds of opposition under ss 42(b), 44 and 60.

Evidence

The Opponent is a producer of alcoholic and non-alcoholic beverages, including beer. Its first product was launched in October 2021 under the sign ‘BETTER BEER’ in relation to beer. The Opponent began with a lager product then launched ‘Better Beer Ginger Beer’ in April 2022, ‘Better Beer zero alc lager’ in June 2022, ‘Better Beer Middy’ in March 2023 and ‘Better Beer Arvo Ale’ in May 2023.
The Opponent owns a number of registered trade marks which contain or consist of the words ‘BETTER BEER’ (‘Opponent’s Trade Marks’). I extract the details of these trade marks at Schedule 1 to these written reasons. I note that most of these consist of or contain the words ‘Better Beer’ or ‘BETTER BEER’ in relation to goods in class 32 including specifications directed at beer, alcoholic beverages and ale.
Examples of the beverages sold by the Opponent bearing signs and packaging with the words ‘Better Beer’ appear throughout the evidence.[4] I reproduce a representative extract below:

[4] For example, at Annexure NAC-8.

The declared sales figures for goods bearing the words ‘BETTER BEER’ and advertising expenditure of the Opponent are both extensive.
There have been various media outlets where the products of the Opponent bearing the sign ‘BETTER BEER’ have been promoted. There are also various examples of instore retail outlet promotions at Annexure NAC-25 for various outlets and at Annexure NAC-26 for specifically Dan Murphy’s.
There are also various examples of competitions and giveaway promotional activities of the Opponent at Annexures NAC-30 to NAC-44 which have used signs including the words ‘Better Beer’ in relation to beer. Examples of prominent billboard advertising which shows products of the Opponent are shown at Annexure NAC-47 mentioning the Opponent’s Trade Marks in relation to beer. The beverages of the Opponent have received various awards mentioned in Annexures NAC-50 to NAC-53 to Cogger, in relation to beer. These also show the Opponent’s Trade Marks. Annexure NAC-45 shows examples of sponsorships with various events in Australia from 2022 to 2024.
The founders of the Opponent’s business are Nick Cogger, Matt Ford and Jack Steele. The Opponent has placed emphasis on the fact that the co-founders Matt Ford and Jack Steele together also form a comedic duo named The Inspired Unemployed (‘TIU’). Part of the comedy and skits of TIU involves the theme of tradesmen, or in common Australian parlance ‘tradies’. Much of the evidence of advertising and promotional materials shows TIU dressed and acting as tradies with references to beer, with reference to the sign ‘Better Beer’. I note that there are also examples of media which recognises TIU as having a connection with tradespersons shown at Annexure NAC-57, including the websites ABC News, news.com.au and imdb.com.
The EIS contains representative examples of TIU in social media posts (‘TIU Posts’) at Annexures NAC-17 to 21, including on Instagram, Facebook, Tik Tok and YouTube. The TIU Posts include posts picturing the setting of a work site with tradespersons holding cans of beer show at paragraph [12] to these written reasons. These TIU Posts have enjoyed a substantial number of views, sometimes in the millions. I recognise that it is likely that a large number of these views must have been from Australia. There is little context apparent to me from Annexures NAC-17 to 21 which make clear the level of exposure of the beer or its centrality to the theme of, for example, the videos mentioned. The videos have not been made available to me in the evidence.
The Opponent also has produced a range of merchandise goods which bear the sign ‘BETTER BEER’. Examples of these are shown at Annexure NAC-9 to Cogger.

Consideration

Section 44

The Opponent relies on s 44 which relevantly provides:
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) 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…
(ii) …; 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).
Note 3:       For priority date see section 12.
Note 4:       The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
For the s 44 ground of opposition, the Opponent relies on the Opponent’s Trade Marks, all of which are in the name of the Opponent and have a priority date which is earlier than that of the Trade Mark.[5]
[5] I note that trade mark application number 2323238 has since lapsed.
After consideration of nature, use and trade channels, I am satisfied that the all of Applicant’s Goods are of the same description as at least some of the Opponent’s Trade Marks in classes 16, 21 and 32 as they all relate to beer and alcoholic beverages in a relevant way.
For the purpose of deciding the question of whether the Trade Mark is substantially identical to any of the Opponent’s Trade Marks, I reproduce the Opponent’s Trade Marks and the Trade Mark below:

Opponent’s Trade Marks	Trade Mark
Better Beer	TRADIE BEER BUILT BETTER
BETTER BEER
BETTER BEER ARVO ALE

There are clear differences in at least the words and their combination forming each of the trade marks. These result in a total impression of dissimilarity on a side by side comparison of the Trade Mark and the Opponent’s Trade Marks. Whilst the Opponent does not argue the point, I note that I am not satisfied that the Trade Mark is substantially identical with any of the Opponent’s Trade Marks.
I also must decide whether the Trade Mark is deceptively similar to any of the Opponent’s Trade Marks. Section 10 provides that a trade mark is deceptively similar to another trade mark if it ‘so nearly resembles that other trade mark that it is likely to deceive or cause confusion’. I should compare the respective trade marks as wholes,[6] with regard to essential or distinguishing features,[7] and consider them visually and aurally, and in the context of the relevant surrounding circumstances.[8] Also of importance is the effect and meaning of the trade marks,[9] especially their effect or impression produced on the mind of ordinary consumers.[10] I should account for imperfect recollection of those ordinary consumers and the addition of even a single word can in the right circumstances relevantly differentiate one remembered mark from another in the minds of those consumers.[11] Ultimately, what is required is a real tangible danger of confusion.[12] That is, ‘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’.[13]
[6] Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] FCA 901, [78] (Bennett J).
[7] Crazy Ron’s Communications v Mobileworld Communications [2004] FCAFC 196, [77]-[88] (Moore, Sackville and Emmett JJ).
[8] New South Wales Dairy Corporation v Murray Goulburn Co-operative Co Ltd (1989) 86 ALR 549, 589 (Gummow J).
[9] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [51] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (‘Self Care’).
[10] Ibid [51] and [67], citing Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).
[11] Jockey International Inc v Darren Wilkinson [2010] ATMO 22 (Hearing Officer Spence).
[12] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; 91 CLR 592, 595 (Kitto J) (‘Southern Cross’); Registrar of Trade Marks v Woolworths [1999] FCA 1020, [50](i) (French J) (‘Woolworths’); Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ) (‘Campomar’).
[13] Woolworths ibid [50](ii); Southern Cross ibid 594-595 (Kitto J). See also, Australian Woollen Mills (n 10) 658.
The Opponent submits the following in respect of the ground of opposition under s 44:
The additional material within the [Trade Mark] does not move away from the Better Beer Word Marks to an extent sufficient to avoid a tangible likelihood of confusion. That is because:
(i)all of the elements of the Better Beer Word Marks are wholly contained in the [Trade Mark];
(ii)the idea of the marks is the same, being beer that is “better” or “built better”;
(iii)the inclusion of the word TRADIE in the [Trade Mark], whilst not included in the Better Beer Word Marks, describes a key target market for the Claimed Goods and, in that sense, doesn’t assist to significantly distinguish the [Trade Mark] from the Better Beer Word Marks;
(iv)BETTER BEER and BEER BUILT BETTER both use alliteration which is a characteristic of the Better Beer Word Marks which consumers with imperfect recollection of them will likely recall; and
(v)in the fair and notional use context, the Applicant has significant scope to depict the [Trade Mark] in a manner which would increase the likelihood of confusion, by using the words BETTER and BEER in close proximity.
Fundamentally, it is the effect on the minds of the ordinary consumers for each of trade marks which I must compare. The trade marks are different visually, even if they both contain the words ‘beer’ and ‘better’. Even allowing for the imperfect recollection, the Trade Mark conjures the different whole idea of beer which is perhaps for Tradies, or a beer brand source ‘Tradie’ which is ‘built better’ either by its nature or some process. By contrast the Opponent’s Trade Marks at least in part consist of the words ‘BETTER BEER’, which also has a highly descriptive and laudatory known meaning referring to beer which is better, probably in terms of taste, health or some other important quality. Whilst the trade marks contain the words ‘BETTER’ and ‘BEER’, the different words and overall combinations have different effects on the whole trade marks in terms of meaning, pronunciation and visual appearance. The leading word element ‘TRADIE’ in the Trade Mark is of particular importance and effect on the overall trade mark. I am not satisfied that there is a real and tangible danger of confusion.
Accordingly, the ground of opposition under s 44 has not been established.

Section 60

The Opponent also relies upon s 60, which provides:
60 Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.
Note: For priority date see section 12.B
A relevant ‘reputation’ for the purposes of the ground of opposition under s 60 must be demonstrated in evidence.[14] The Opponent must establish that a reputation exists as a matter of fact.[15] The word ‘reputation’ for s 60 means ‘the recognition of the [trade mark] by the public generally’.[16] The Opponent might demonstrate such a reputation by a variety of means, including quantum of sales or advertising and promotional activities.[17] Advertisements or other appearances of the other trade mark on television, radio or in magazines and newspapers may also be relevant. The required reputation is most often inferred from a high volume of sales, together with substantial advertising expenditures and other promotions.[18] Direct evidence of consumer appreciation of a trade mark, while often more difficult to produce, is another avenue for showing that a reputation exists.[19] Where multiple other trade marks are relied upon, it is the reputation(s) in each individual trade mark that should be considered. I must compare the Trade Mark with the reputation(s), if any, of the other trade mark(s).
[14] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J).
[15] Ibid. See also, Sara Lee Corp v Bali Blue Pty Ltd [2003] ATMO 81 (Hearing Officer Skivington).
[16] McCormick & Co Inc v McCormick [2000] FCA 1335, [127] (Kenny J) (‘McCormick’).
[17] Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [83] (O’Bryan J) (‘Rodney Jane’).
[18] McCormick (n 16) [80].
[19] Ibid.
The Opponent relies on the use of the Opponent’s Trade Marks to assert that there is a reputation in those trade marks for the purposes of the ground of opposition under s 60. The s 60 ground of opposition is particularised in the SGP as:
The trade mark/s had acquired reputation before the priority date of the trade mark being opposed.
All the trade marks referred to in the section 44 ground (the Better Beer Trade Marks) are relied on in respect of this ground.
Since 2021 the Opponent and/or its authorised licensees have sold, manufactured, promoted and distributed a range of goods under or by reference to the Better Beer Trade Marks, including but not limited to beer, nonalcoholic beer and ginger beer (the Better Beer Goods).
Consumers have come to associate the Better Beer Trade Marks with the Better Beer Goods and the Opponent and/or its authorised licensees. By reason of these matters, the Better Beer Trade Marks had acquitted a reputation amongst consumers in Australia in relation to the Better Beer Goods and related products before the priority date of the [Trade Mark], being 4 July 2023. Because of this reputation and the close similarity between the [Trade Mark] and the Better Beer Trade Marks, the Applicant’s use of the [Trade Mark] is likely to deceive or cause confusion.
Whilst the Applicant notes that the market share for goods bearing the Opponent’s Trade Marks is likely less than 1%, the confidential sales and advertising and promotional expenditure figures mentioned in Cogger are substantial. However, I cannot ignore the descriptive nature of the words ‘Better Beer’ in the Opponent’s Trade Marks.[20] There are a number of combinations shown in use, some with the ribbon device and/or other words and some solely of the words ‘Better Beer’. I note that much of, though certainly not all of, the evidence does not show the use of the words ‘Better Beer’ in isolation, but rather alongside other matter such as the get up consisting of the ribbon device and that appearing at paragraph [11] of these written reasons. I reproduce, for reference, one version of the ribbon device below:

[20] DC Comics v Cheqout Pty Ltd [2013] FCA 478, [41]-[51] (Bennett J).

I acknowledge that there is perhaps a reputation in each of the Opponent’s Trade Marks consisting of the combination of the ribbon device and words ‘Better Beer’ and/or, for example, trade mark 2202587. I have noted the significant sales and the examples of use of signs containing the words ‘Better Beer’ and the context of that use. However, there is a question about whether there is a reputation in the plain words ‘Better Beer’. Regardless, I have proceeded on the basis that there is a reputation for the plain words ‘Better Beer’ of the same extent, if not a higher extent, as that in the Opponent’s Trade Marks consisting of the combination of the ribbon device and words ‘Better Beer’. I next consider whether because of any reputation(s) in each of the Opponent’s Trade Marks, the use of the Trade Mark would deceive or cause confusion.
Whilst the parties did not take me to the proceedings in Brick Lane Brewing Co Pty Ltd v Torquay Beverage Co Pty Ltd, I note that the comments of Stewart J:
Brick Lane submits that the name Better Beer suggests that it is “better-for-you” beer, ie, a more healthy option and therefore likely to contribute to any confusion with Brick Lane’s product which as a no or low alcohol product is also a more healthy choice. It seems to me that the hypothetical reasonable beer consumer is likely, at least initially, to understand the name Better Beer to be saying that the particular beer is better, ie, better than other beers in terms of taste and enjoyment. I accept that on seeing that it is a low carbohydrate beer, particularly in the context of its promotion that emphasises that choosing it is a better health choice, the reasonable consumer would understand the name to be suggesting that it is “better-for-you” beer. However, I do not accept that that would in any material way contribute to confusion between the parties’ respective products for the reasons that follow.
The relevance of the observations about the products’ names is that in a get-up case a difference in the name of a product can be compelling, and in most cases it is likely to be: Homart FCA at [192]. For example, different product names in the context of otherwise very similar get-ups was compelling in distinguishing the products in Natural Raw C at [53]. As was explained by Gibbs CJ in Parkdale at 199, “if an article is properly labelled as to show the name of the manufacturer or the source of the article its close resemblance to another article will not mislead an ordinary reasonable member of the public”. The same is true if there is a close resemblance in the get-up of the articles, other than the names or labels. Given the distinctive names, as I have described, the other features of the get-up would have to be particularly close in resemblance, if not identical, for the get-ups as a whole, including the names, to be misleading or deceptively similar.[21]
[21] Brick Lane Brewing Co Pty Ltd v Torquay Beverage Co Pty Ltd [2023] FCA 66, [101]-[102] (Stewart J).

The comments of Stewart J which note that the name ‘Better Beer’ as, for example, ‘alliterative and catchy’[22] are made in the context of a comparison of the conduct of the parties for the purposes of a s 18 claim under the Australian Consumer Law (‘ACL’).[23] The Court had to compare the respective parties’ products. This involved, in part, the comparison of the beers of two traders, including some of those of the Opponent shown at paragraph [11] of these written reasons with the words ‘better beer’, with get up showing the word ‘Sidewinder’.
[22] Ibid, [100].
[23] Schedule 2, Consumer Competition Act 2010 (Cth).
The Opponent acknowledges that the Opponent’s Trade Marks for the purposes of s 60 have a ‘laudatory flavour’,[24] though it refers to trade marks that have been registered which contain or consist of the words ‘Better Beer’. I need not comment on the circumstances that may have led to those signs achieving registration for class 32 goods. It is likely that a trader might say that their beer is ‘better’ or the ‘best’. This is highly descriptive marketing language that any trader would use to laud their own brew. Such language would also likely be taken as being a reference to either the impacts on health or the taste of the drink.[25] The word ‘better’ of itself is highly descriptive of most if not all things offered as products, including ‘beer’. The context of the use of the Opponent’s Trade Marks here also involves use that is almost always alongside other language suggesting an offering of a zero alcohol, or lower carbohydrate or sugar beverages.
[24] Opponent’s Written Submissions, [56].
[25] A similar conclusion was reached in Grande Brasserie Alsacienne d’Adelshoffen, Re [1996] ATMO 52 (Hearing Officer Hardie) regarding the sign ‘DIFFERENT STOUT’, though in terms of s 41, where the sign was considered to be not inherently adapted to distinguish the applicant’s goods.
I again note the differences between each of the Opponent’s Trade Marks as shown in use and the Trade Mark. Whilst the words of the Trade Mark, for example, ‘-beer built better’ exhibit alliteration, I see this as a different lilt to that of the Opponent’s Trade Marks. The Trade Mark has its own form of alliteration and inversion and order of words, which would likely have a different effect, even in the context of the reputation asserted. The Trade Mark consists of a combination of words quite distinct to the Opponent’s Trade Marks in meaning and effect. The relegation of the word ‘BETTER’ in the Trade Mark can be contrasted with the laudatory or descriptive qualities of words appearing in the Opponent’s Trade Marks in the use shown in evidence.
The Opponent’s submissions also took me to a number of decisions where comparisons were made between trade marks which share only a part or particular element and yet confusion was found to be likely. Some of these also involved the shared word element found in a subsequent order to other words. The trade marks that I must compare are unlike these. The comparison conducted in, for example, Energy Beverages LLC v Kangaroo Mother Australia Pty Ltd,[26] being ‘MOTHER’ and ‘KANGAROO MOTHER’ or in The Hershey Company v Bonne Chance Pty Ltd,[27] being ‘KISSES’ and ‘HUGS & KISSES’, involved different and more comparable likely effects on the minds of the ordinary consumers. I also note that the Opponent’s Trade Marks all have as a main element the descriptive words ‘Better Beer’ unlike the trade marks in those decisions.
[26] [2023] FCA 999 (O’Callaghan J).
[27] [2024] ATMO 3 (Hearing Officer Makrigiorgos).
The Opponent submits it is not just the inherent meanings of the words inhering in the trade marks that bear significance for the purposes of s 60. It submits that I should consider the qualitative aspects of the alleged reputation in the Opponent’s Trade Marks concerning the imagery and values associated with those trade marks. Mr Heerey referred me to the decision in Rodney Jane Racing Pty Ltd v Monster Energy Company where the Court found there to be an association of the relevant other trade mark with extreme sports events.[28] The Opponent says that since the inception of the Opponent’s Trade Marks they have been linked to TIU who, as part of their act are tradespersons. To summarise, the Opponent submits that it ‘enjoyed a high level of reputation in the Better Beer Trade Mark in Australia and that reputation is inextricably linked to the marketing of the Better Beer Products in conjunction with a “tradie-vibe”’.[29]
[28] Rodney Jane (n 17) [81]-[83] and [116].
[29] Opponent’s Written Outline of Submissions, [32].
At the hearing Mr Heerey also took me to a passage in Campomar Sociedad Limited v Nike International Limited where the High Court made the following remarks and thereafter referenced scholarship and jurisprudence from the United States of America:[30]
Moreover, trade marks may play a significant role in ordinary public and commercial discourse, supplying vivid metaphors and compelling imagery disconnected from the traditional function of marks to indicate source or origin of goods. Writing extrajudicially, Judge Kozinski has observed:
“Trademarks are often selected for their effervescent qualities, and then injected into the stream of communication with the pressure of a firehose by means of mass media campaigns. Where trademarks come to carry so much communicative freight, allowing the trademark holder to restrict their use implicates our collective interest in free and open communication.”[31]
[30] Campomar (n 12).
[31] Ibid [46], citing ‘Trademarks Unplugged’ (1993) 68 New York University Law Review 960, 973. Referring also to Judge Kozinski, for the Court of Appeals for the Ninth Circuit, in New Kids on the Block v News America Publishing Inc [1992] USCA9 2148; 971 F 2d 302 (1992) and the observations in Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511, 513-515 (Kitto J).
The Applicant submits that I should focus on the consumer appreciation of the Opponent’s Trade Marks as opposed to how consumers perceive either the product itself or the owner.[32]
[32] McCormick (n 16).
The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd regarding s 60 commented that:
Opposition must be based on a trade mark having a reputation in Australia, not on reputation alone. And, if the requisite reputation has been established, the likelihood of deception or confusion must also be demonstrated. Put in different terms, proof of reputation alone in a trade mark in Australia in respect of the same goods is not sufficient; s 60(b) requires the person opposing registration to show that use of the applicant's trade mark would be likely to deceive or cause confusion.[33]
[33] Self Care (n 9) [13].
I note that the promotion of beer alongside a tradesperson is not something I consider to be unique to the Opponent’s Trade Marks or on this evidence to be of a particular impact on its reputation. Beer and alcoholic beverages, including possibly zero-alcohol or zero-carbohydrate beer, have a well recognised appeal to a wide variety of persons, including tradespersons. That there may factually be some link in promotional contexts between the highly prominent TIU, who are known to be tradespersons, and the beer sold under the Opponent’s Trade Marks, does not add much to the risk of any deception or confusion for the purposes of these proceedings. The concept of a ‘tradie’ is a broad concept. I do not consider the evidence to establish that there is a reputation involving an association such that deception or deception would be likely by the use of the Trade Mark. Even assuming that there is a reputation in the words ‘BETTER BEER’, it is not, as the Opponent suggests, of such a quality and nature, and in the words cited by the High Court in Campomar of such ‘communicative freight’, so as to reference tradespersons such that the use of the Trade Mark would carry with it a real risk of deception or confusion. The words contained in or constituting the Opponent’s Trade Marks, and the reputations, are not so vivid or compelling in their imagery – they are descriptive of the Opponent’s offerings as to beverages.[34]
[34] Hive Empire Pty Ltd v Phonepost Pty Ltd [2022] ATMO 133, [32] (Hearing Officer Knowles); The BBQ Store Pty Ltd v Plantation Outdoor Kitchens Pty Ltd [2015] ATMO 34, [40]-[43] (Hearing Officer Kirov); Watches of Switzerland Pty Ltd v Mappin & Webb Limited [2015] ATMO 23, [62] (Hearing Officer Lyons); Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd [2010] ATMO 5, [56] (Hearing Officer Lyons). See also, Stone & Wood Group Pty Ltd v Intellectual Property Development Corporation Pty Ltd [2018] FCAFC 29 (Allsop CJ, Nicholas and Katzmann JJ).
The observation of Stephen J in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Pty Ltd albeit in a different context seems apt:
There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name.[35]
[35] [1978] HCA 11, [22].
Noting the highly descriptive impact of the words of the Opponent’s Trade Marks, especially in the context of the use demonstrated, I am not satisfied on the evidence before me that even assuming a reputation in the words ‘Better Beer’, such reputations are of kind or of such extent that the use of the Trade Mark carries with it a real risk of deception or confusion. Because the trade mark consisting of a combination of those words and the ribbon element has additional points of distinction with the Trade Mark beyond the plain words, the use of the Trade Mark is even less likely to deceive or cause confusion because of a reputation in such a combination trade mark.
Accordingly, the ground of opposition under s 60 has not been established.

Section 42(b)

Section 42(b) provides that an application for the registration of a trade mark must be rejected if its use would be contrary to law. The Opponent must satisfy the Registrar that use of the Trade Mark would not could be contrary to law.[36]
[36] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).
The Opponent submits that use of the Trade Mark would be contrary to ss 18 and 29 of the ACL. Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading. There is no material difference between the expression ‘mislead or deceive’ in s 18 of the ACL and ‘false or misleading’ in s 29 of the ACL.
As already indicated in respect of s 60, I am not satisfied that because of a reputation in another trade mark, use of the Trade Mark is likely to deceive or result in confusion. It follows that on the stricter test posited by the ACL, I am not satisfied that use of the Trade Mark is likely to mislead or deceive, or amount to a false or misleading impression under ss 18 and 29 of the ACL.
The Opponent has not established that use of the Trade Mark would be contrary to law. Consequently, the ground of opposition under s 42(b) has not been established.

Decision and costs

Section 55 relevantly provides:
55 Decision
(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 not established a ground of opposition. Accordingly, trade mark number 2368259 may proceed to registration within one month of this decision.

Costs

Both parties have sought their costs. It is normal for costs to follow the event. There is no reason to make an exception here.
I award costs against the Opponent under s 221 in the amounts set out at Schedule 8 of the Trade Marks Regulations 1995 (Cth).

Benjamin Goldsworthy

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

28 July 2025

Schedule 1

Trade mark no.	Trade mark	Priority date	Specification
2164602	Better Beer	18 March 2021	Class 32: Alcohol-free beer; Alcoholic beers; Beer
2202587	13 August 2021	Class 32: Beer; Non-alcoholic beverages; Non-alcoholic beers; Ale
2270345	17 May 2022	Class 32: Beer; Non-alcoholic beverages; Non-alcoholic beers; Ale
2292097	BETTER BEER	9 August 2022	Class 32: Alcohol-free beer; Alcoholic beers; Beer
2301687	BETTER BEER ARVO ALE	27 September 2022	Class 32: Alcohol-free beer; Beer; Alcoholic beers
2270365	17 May 2022	Class 16: Beer mats; Mats of card for beer glasses; Mats of paper for beer glasses; Coasters of cardboard; Coasters of paper Class 21: Beer mugs; Home beer brewing kits; Mats, not of paper or textile, for beer glasses; Coasters, not of paper or textile; Stubby holders; Holders for drinking vessels Class 25: Clothing; Footwear; Headwear Class 41: Live entertainment; Organisation of entertainment events; Musical entertainment services; Organisation of entertainment events being event management services; Entertainer services; Organising of entertainment and social events (entertainment, sporting and cultural services); Hosting of sporting events; Organisation of sporting events; Live entertainment production services
2323238	BETTER BEER	20 December 2022	Class 32: Beer; Beer-based cocktails; Bitter beer; Low alcohol beer; Alcoholic beers; Barley wine (beer); Fruit beers; Ginger beer; Ginger beer (alcoholic); Malt beer; Black beer; Dark Beer; De-alcoholised beer; Beer wort; Beer hampers; Root beer; Pilsner beer; Non-alcoholic beers Class 35: Retail services; Online retail services; Sales promotion services; Advertising; Wholesaling of goods (by any means); Wholesale services; Product marketing; Marketing