Opposition by Bluemont Pty Ltd to registration of trade mark application number 2364172 (class 22) for the trade mark –

[2025] ATMO 207

TRADE MARKS ACT 1995

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

Re:Opposition by Bluemont Pty Ltd to registration of trade mark application number 2364172 (class 22) for the trade mark – ROCK BAG Filter Units & Device – in the name of Project Material Pty Ltd

Delegate:

Debrett Lyons

Representation:

Opponent: Baxter IP Patent and Trade Mark Attorneys

Applicant: self-represented

Decision:

2025 ATMO 207

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 44, 58, 58A, 60 and 62A pursued – no ground of opposition established – opposition unsuccessful and registration allowed

Background

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by Bluemont Pty Ltd (‘Opponent’) to registration of the trade mark shown below (‘Trade Mark’) filed in the name of Project Material Pty Ltd (‘Applicant’) on 14 June 2023 (‘Relevant Date’) as application number 2364172 (‘Application’) in class 22 for “Plastic nets and netting (not for sports)” (‘Goods’).

   [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’)

2. The Application was examined and advertised as accepted for possible registration on 15 November 2023.

3. On 8 January 2024, the Opponent filed a Notice of Intention to Oppose registration of the application.  On 8 February 2024, the Opponent filed its Statement of Grounds and Particulars (‘SGP’) which nominates grounds of opposition under ss. 42(b), 44, 58, 58A, 60 and 62A.The Applicant filed a Notice of Intention to Defend the opposition on 8 March 2024.

4. The parties filed the following evidence:

Declarant and Position	Date	Exhibits or Annexures
Evidence in Support
Declaration of Arnaud Diemont , director of the Opponent (‘Diemont 1’)	11 June 2024	AD-1 to AD-8
Declaration of Arnaud Diemont (‘Diemont 2’)	12 June 2024	AD-9 to AD-10
Evidence in Answer
Declaration of Kane Leslie Champion, director and secretary of the Applicant	13 September 2024	PM 0 to PM 14
Evidence in Reply
Declaration of Arnaud Diemont (‘Diemont 3’)	20 November 2024	AD-11 to AD-12

1. The parties were given the opportunity to either request an oral hearing or a hearing by way of written submissions.  The Opponent elected to be heard on the basis of written submissions, filing written submissions prepared by Baxter IP Patent and Trade Mark Attorneys.  The Applicant relied on the written submissions of its director, Kane Champion.  

2. I have decided this matter based on the particulars set out in the SGP, the evidence described above and the written submissions of the parties.  The Applicant submitted material to this Office on 21 January 2025 which the Opponent has objected to as out of time evidence, but in its written submissions the Applicant states that it does not rely upon that material.

   Discussion and reasons

3. The Opponent carries the burden of establishing at least one ground of opposition[2] on the balance of probabilities.[3]  The date at which the rights of the parties are to be determined is the Relevant Date[4], being the priority date for the purposes of ss 44 and 60.

   [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,; 91 CLR 592, 595 (Kitto J) (‘Southern Cross’).

4. As a preliminary observation, the written submissions do not provide a cohesive distillation of the evidence, nor do they present clear argument or counter-argument which is focused on the requirements of the several grounds of opposition.  In what follows I have attempted to eliminate the repetition of claims made in the submissions and reduce them to a form more directly relevant to the legislation.  In that regard I have approached the grounds in an order which improves clarity and concentrates the key issues.  I note here for convenience the Opponent’s claim to confidentiality in relation to sales and other figures and I have observed that.

   Section 44

5. So far as is relevant to this matter, s 44 provides:

   44Identical 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).

   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.

6. The Opponent must therefore identify a trade mark in the name of a person other than the Applicant which:

   i.has a priority date which is earlier than the priority date of the Trade Mark;

   ii.is in respect of goods which are similar to the Applicant’s Goods[5]; and

   iii.is substantially identical with, or deceptively similar to, the Trade Mark. 

   [5] or closely related services to the Applicant’s Goods.

7. The SGP nominates the following International Registration Designating Australia as the basis for s 44 (‘Registration’):[6]

   [6] As the Registration is a so-called, IRDA, the technical ground for rejection is under reg 4.15A rather than s 44. However, as the terms are substantively identical for all relevant purposes, I have retained the reference to s 44 in this decision. References to s 44 as considered should be taken to read reg 4.15A.

International Registration number

1438561

IRDA number

2078104

Mark

AquaRockBag

Goods

Class 19: Artificial fish reefs [not of metal]; tissue [not of metal] for protection against erosion; woven geotextile for protection against erosion; erosion control fabric, mats and sheeting, not of metal [geotextiles]; nonmetal textile, mats and lanes for bank protection; woven geotextiles, aforementioned goods also filled with stones; artificial bank protection [not of metal].

Class 22: Nets, aforementioned goods also filled with stones; net receptacle of chemical fiber, knitted fabrics, mesh-woven fabrics, polyurethane-tissue, synthetic fabrics/fibers, non-synthetic fabrics/fibers, e.g. especially basalt, polylactic acid, glass fiber, coconut fiber

Class 24: Chemical fiber fabrics; knitted fabric; mesh-woven fabrics; tissue of polyurethane-tissue, synthetical fabric or fibers, non-synthetical fabric or fibers, e.g. especially basalt, polylactic acid, glass fiber, coconut fiber

Priority date

11 March 2020

1. The Registration is owned by Roess Nature Group GmbH & Co. KG and is therefore in the name of a person other than the Applicant.  The Registration has a priority date which is earlier than the Relevant Date of the Trade Mark. 

2. Neither party made reasoned submissions with regard to either the similarity of the respective goods or the marks.  The first question, and the most apt comparison, is whether the Goods (plastic nets and netting) are the same, or of the same description,[7] as the class 22 goods of the Registration:

   Nets, aforementioned goods also filled with stones; net receptacle of chemical fiber, knitted fabrics, mesh-woven fabrics, polyurethane-tissue, synthetic fabrics/fibers, non-synthetic fabrics/fibers, e.g. especially basalt, polylactic acid, glass fiber, coconut fiber

   [7] Section 14(1) of the Act.

3. Since “nets … also filled with stones” comprehends “nets” (without qualification) and includes plastic nets and netting, I find that the goods are the same.  I turn to the question of whether the trade mark of the Registration is substantially identical or deceptively similar to the Trade Mark.  Substantial identity requires a side-by-side comparison of the marks to determine whether a total impression of resemblance or dissimilarity emerges, having regard to the essential features of the trade marks.[8]  

   AquaRockBag  

   [8] Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [12] (Windeyer J).

4. Placed side-by-side there are obvious differences.  Moreover, the single point of commonality – the words “rock bag” – are, within the context of nets and netting, lacking the degree of distinctiveness they would require to clearly stand out as the essential feature of the marks.  I do not find the Trade Mark and the mark of the Registration to be substantially identical.

5. 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”.  In Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd, Windeyer J stated that:

   On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[9]

   [9] Ibid [13].

6. The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[10] conveniently stated the relevant principles, which were summarised in The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd[11] as follows:

   [10] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

   [11] [2023] FCA 482, [55] (Jackman J).

   (a)the resemblance between the two marks must be the cause of the likely deception or confusion;[12]

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

   (b)in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[13]

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

   (c)the marks should not be compared side by side;[14]

   (d)the effect of spoken description must be considered; if a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods (or services), then similarities both of sound and of meaning may play an important part;[15]

   (e)the focus is upon the effect or impression produced on the mind of potential customers of the goods (or services) in relation to which the two marks are used and in the case of the registered mark, allowing for ‘imperfect recollection’;[16]

   (f)the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the marks prior to filing, or any reputation associated with the registered mark;[17]

   (g)the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods or services covered by the registration), with the impression that the notional buyer would have of notional and normal fair use of the opposed mark;[18]

   (h)“deceived” implies the creation of an incorrect belief or mental impression; “causing confusion” may merely involve “perplexing or mixing up the minds” of potential customers; [19]

   (i)the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected, having regard to the character of the customers who would be likely to buy the goods in issue;[20]

   (j)it is not necessary to establish actual probability of deception or confusion, but a mere possibility of confusion is not enough. There must a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be “a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source”;[21]

   (k)evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[22] and

   (l)any intention to deceive or cause confusion may be a relevant consideration but is not required.[23]

   [14] Australian Woollen Mills Ltd v F S Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).

   [15] Ibid.

   [16] Ibid.

   [17] C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539, [43] (Ryan, Branson and Lehane JJ).

   [18] Shell (n 8), [13].

   [19] 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).

   [20] Campomar Sociedad Limited v Nike International Limited [2000] HCA 12, [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).

   [21] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50(ii)] (‘Woolworths’) (French J) restating principles from Southern Cross (n 4), 594 - 595.

   [22] Australian Woollen Mills Ltd (n 14), 657.

   [23] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc ([2020] FCAFC 23, [67] (Nicholas, Yates and Burley JJ) citing Australian Woollen Mills (n 14), 657.

7. Without specific submissions from the Opponent concerning deceptive similarity under s 44, I have distilled the statements of relevance found in connection with s 60 (discussed in detail later) as follows:

   … the overlapping goods (erosion control mesh bags filled with stone), channels of trade (civil contractors, government, engineering consultants), and the strong reputation of ROCK BAGS create a real risk of consumer confusion.   The Opponent’s evidence … demonstrates precisely such reputation. Here, contractors and specifiers will not carefully dissect whether “Filter Units” distinguishes the marks, the dominant impression will remain “Rock Bags”. The Applicant’s use of is therefore likely to deceive. Consumers do not analyse minor differences but rely on dominant impressions. The evidence shows that the dominant and distinctive element is “Rock Bag(s)”.

8. In my assessment, the starting point is to revisit the nature of the expression, “rock bag”.  I have said that it lacks the level of distinctiveness to constitute the essential feature of the marks, but what matters now is whether the influence of those words, in what are otherwise two quite different trade marks, would result in a real likelihood that people who seek or observe the Goods would wonder whether the parties’ products came from the same source.

9. Diemont 1 declares that the goods are mesh nets for use around bridges, roads, railways, shorelines and rivers to protect and manage erosion.  Taken from the Opponent’s website are the following statements:

   The rock bag was used for the first time in 1987 to protect the foundations of the great bridge at Akashi (world’s longest span, with a total length of 3,911m).

   Rock bags are an innovative and proven netting solution for erosion and scour management. So far, over 1.1 million rock bags have been used in 24,000 civil projects worldwide.

   Since 2016, we have supplied rock bags for an extensive number of government and private sector projects. Our clients include local government agencies, road development authorities, ports, construction companies, and industrial companies.

10. What I observe from the evidence is (i) that the words “rock bags” are used descriptively and almost exclusively without any suggestion of trade mark significance, sometimes in other descriptive combinations such as “rock filter bags”, and (ii) that customers for the goods are the type of buyers familiar with the rock bag concept and not likely to treat those words, alone, as a guarantee of trade source.

11. Further, the matter in the trade marks additional to the descriptive words, “rock bag” – the word, “aqua”; the term, “filter units”; and the device of a bag of rocks – are either related to the use or function of rock bags or graphically depict a rock bag. 

12. I draw the reasonable inference that customers for the goods – as the Opponent says, civil contractors, government, engineering consultants – are likely to employ tender processes to acquire them and would be astute to small brand distinctions.  When I take account of the probable circumstances surrounding of the purchase of the Goods, I find it is unlikely that use of the Trade Mark would lead to confusion or deception.  

13. For these reasons I find that the Trade Mark is not deceptively similar to the mark of the Registration and so the s 44 ground of Opposition has not been established.

    Section 58A

14. Section 58A only applies to a trade mark the application for registration of which has been accepted because of s 44(4).  Since s 44 has not been established and the Trade Mark was not accepted under the provisions of s 44(4) it follows that s 58A has no traction.   The ground has not been established.

    Section 60

15. Section 60 provides that:

    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.

16. Accordingly, the Opponent must demonstrate the existence of another trade mark which had acquired a reputation in Australia before the Relevant Date.  The Opponent must then establish that because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.

17. The reputation in the other trade mark must be amongst a “significant or substantial” number of Australian consumers but this is tempered by the nature of the relevant market.[24] The existence and extent of reputation must be established as a matter of fact by the Opponent.[25]  So far as s 60(a) is concerned, the SGP states that the Opponent:

    … has acquired a reputation in the ‘Rock Bags’ Mark in relation to erosion control products which are in the form of flexible mesh bags made from plastic and/or other polymeric materials.

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

    [25] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [57] (Lockhart, Gummow and French JJ).

18. The Opponent’s submissions state that:

    [t]he Opponent had a well established reputation before the priority date of the Opposed Mark … A reputation-based claim under section 60 does not require actual deception, only the likelihood of deception based on consumer perception.

1. The Applicant’s written submission is that:

   … [the Opponent] has failed to show that “ROCK BAG” denoted its trade source as of June 2023. … To the contrary, its own evidence shifts between multiple descriptors including “Kyowa Rock Bag”, “Rock Filter Bag” and “Kyowa Filter Unit”, which undermines any claim that “ROCK BAG” functioned as a single, distinctive badge of origin … .

2. I have already observed the descriptive use of “rock bags” and I note from the evidence as a whole multiple references to “Kyowa rock bags”, something which brings me to statements in Diemont 1, 2 and 3 concerning the relationship between the Opponent and a Japanese company, Kyowa Co. Ltd (‘Kyowa’). 

3. Diemont 1 declares that the Opponent “was established in 2004 and introduced product under the mark Rock Bags in 2017 in Australia [sic].”  Diemont 2 declares that “[t]he Rock Bags brand is exclusively owned by [the Opponent] in Australia.  Kyowa, …, acts solely as the manufacturer, producing the units based on [the Opponent’s] import order. … [and] … [a]ny reference to Rock Bags is a reference to the trade mark of [the Opponent] and its commercial trading under that name in Australia which uses product manufactured for it by Kyowa.”

4. Diemont 3 provides the only evidence of that arrangement, being a letter of so-called “Authorization of exclusive distribution” dated 18 October, 2024, from Kyowa to the Opponent which states that on 18 October, 2016, Kyowa authorised the Opponent “to exclusively distribute Kyowa Filter Units (in Australia to be known as Rock Bags) with the Kyowa brand name in Oceania region.”

5. It is difficult for me to accept that this letter is the only written evidence of an almost decade long commercial relationship.  If it is, it leaves doubt about many critical matters including intellectual property rights.  It is clear enough that the Opponent is the exclusive distributor in the territory of Kyowa made “filter units” bearing the Kyowa brand, but the document is unclear as to ownership of trade mark rights, if any, in Rock Bags.  Nonetheless, the Opponent baldly claims ownership of those words and gives evidence that on 4 December 2023 it filed Australian trade mark application 2410557 for ROCK BAGS and application 2410560 for the mark shown below (‘Logo Mark’):

6. Diemont 1 defines and thereafter uses the Logo Mark as “the Opponent’s mark” albeit that the only use I could find in the evidence of that mark was at the head of the website maintained by the Opponent at which I note states in its opening line of text: Rock Bags, by Kyowa, are innovative flexible mesh bags used for scour and erosion control.  Later, at the same site, the text describes: Rock Bags, made by Kyowa and supplied by Bluemont.  The website otherwise prominently uses the Kyowa name and logo.

7. Diemont 2 annexes what it describes as a User Manual.  The Manual is headed with the following:

8. On the evidence as presented, I am not persuaded that the Opponent had trade mark rights in either ROCK BAGS or the Logo Mark before the Relevant Date.   However, as with s 44,       s 60(a) requires only the existence of another trade mark which had acquired a reputation in Australia before the Relevant Date; it does not require the Opponent to own that trade mark. 

9. That said, the evidence presented by the Opponent of its use of ROCK BAGS from 2017 onwards is flawed by reason of use which (i) is purely descriptive and fails to qualify as trade mark use, and/or (ii) is presented together with the trade mark, Kyowa, and/or (iii) bar some inconsistent use of initial capitalisation, is presented without indication that the words might have or claim trade mark status. 

10. By way of example, an invoice to Shoalhaven City Council dated 9 October 2017, claimed as the evidence of first use of ROCK BAGS as a trade mark in Australia, carries the invoice reference “[name of council contact] 20 x 2t Kyowa” and the product is described as “2t Kyowa rock bag”.  Later invoices describe the product as “Kyowa rock bags” and “Kyowa 4 tonne recycled polyester Ecogreen rock bags and metal lifting rings”.  Even in the second quarter of 2024, almost a year after the Priority Date, invoices still give the description: “Rock Bags – 4 tonne Eco-green plus lifting ring. Made by Kyowa”.

11. The evidence includes confidential sales figures since 2017 which are continuous and not insubstantial, but they are not supported by proof of sale of product by reference to ROCK BAGS as a trade mark and/or as a trade mark without other, more obvious trade mark matter.   On balance, I cannot on the material before me find for the purposes of s 60(a) that ROCK BAGS, or any other relevant trade mark, had acquired a reputation in Australia.  For these reasons the s 60 ground of opposition has not been established.

    Section 42(b)

12. Section 42(b) provides that:

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

    (a) … ; or

    (b) its use would be contrary to law.

13. The SGP states that:

    The opponent has been continuously using its mark Rock Bags for a substantial period of time before the opposed application was filed. …  Until recently, … there was no other company supplying rock bags and opponent were [sic] sole suppliers for this type of erosion control products.

    …

    As a result of the Opponents extensive use of the mark Rock Bags and in view of the applicant’s knowledge of the opponent’s mark, the Applicant’s use of the Opposed mark would be misleading or deceptive or, is likely to mislead or deceive or, would be a false or misleading representation that the Applicant’s services are approved, provided by, licensed by, endorsed by or associated with the Opponent when they are not.

    The Applicant’s use of the Opposed mark would be misleading or deceptive and/or constitute false representations contrary to Sections 18 and/or 29 of the Australian Competition and Consumer Act 2010 (Cth). Such use may also constitute common law passing off in respect of the Opponent’s reputation and goodwill and would therefore be contrary to law under Section 42(b) of the Act.

14. The Opponent’s written submissions are that:

    The Opponent had established a reputation for its ROCK BAGS brand before the priority date of the Opposed mark and provides similar goods to those covered by the Opposed mark. The Opposed Mark is deceptively similar to the Opponent’s ROCK BAGS brand, which had acquired a reputation in Australia before 14 June 2023 i.e. the priority date of the Opposed mark.

    …

    The Applicant was aware of the Opponent’s established reputation and made an attempt to ride on goodwill of the Opponent’s mark by filing the Opposed Mark. Due to the Opponent’s established reputation, the use of the Opposed mark is likely to mislead or deceive consumers. As a result, its use may be considered misleading and deceptive conduct under sections 18 and 29(1) of the Australian Consumer Law.

15. It is unclear from the written submissions whether the Opponent still presses passing off as a basis for s 42(b) but I can deal with both limbs – passing off and the Australian Consumer Law – summarily in light of my findings in relation to s 60.

16. Section 18(1) of the Australian Consumer Law provides that “[a] person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.” Under s 42(b), the onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law.[26] It has been held that the test for misleading or deceptive conduct under s 18 of the Australian Consumer Law is a more stringent one than that for deception or confusion under s 60.[27] Further, it has been held that where use of a trade mark does not breach s 18 of the Australian Consumer Law, neither will it offend s29 of that Act.[28]   

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

    [27] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36] (Hearing Officer Williams);Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191, 198 (Gibbs CJ).

    [28] Pacific Publications Pty Ltd v IPC Media Pty Ltd [2003] FCA 104, [107] (Beaumont J); A G Professional Hair Care Products Ltd v Geagroup Invest SRL [2014] ATMO 65, [50] (Hearing Officer Wilson).

17. Furthermore, when required to consider the relationship between passing off and s 52 of the Trade Practices Act 1974 (an essentially identical provision to s 18(1) of the Australian Consumer Law), Justice Hill in Re Equity Access Pty Ltd v Westpac Banking Corporation wrote 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.[29]

    [29] [1989] FCA 506, [40].

18. Analysed slightly differently, proof of reputation is an essential element to a successful passing off action and, for the reasons given in connection with the s 60(a) discussion above, I did not find reputation in any relevant mark.

19. Accordingly, there being no evidence of a tort, nor of a breach of the Australian Consumer Law, I find nothing to show that use of the Trade Mark would be contrary to law and so the ground of opposition under s 42(b) has not been established.

    Section 58

20. Section 58 provides that:

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

21. The SGP states that the “filing date of the [t]rade [m]ark detailed in Ground [sic] under section 44, predates both the first use by the [A]pplicant of the opposed mark and the filing date of the opposed [A]pplication. … The mark referred to in the Table above are [sic] substantially identical to the opposed mark.”

22. There is no “Table” in the SGP and I understand from the Opponent’s reference to s 44 that it means to rely on the trade mark of the Registration for the purposes of s 58.  To succeed, the Opponent must establish, amongst other matters, that the trade mark of the Registration is identical or substantially identical to the Trade Mark.[30]   I have already found that AquaRockBag is not identical or substantially identical to the Trade Mark. 

    [30] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [62] (Gummow J).

23. I would be entitled to end my consideration of s 58 here but for the fact that Diemont 1 references trade mark applications made 4 December 2023 for ROCK BAGS and the Logo Mark.  Those applications postdate the Relevant Date by six months but, putting to one side the matter of whether either mark is substantially identical to the Trade Mark, a question arises as to whether use of one or other of those marks predated the Relevant Date. 

24. There is no evidence of first use of the Logo Mark. As to the word mark, all I need observe is that although the Act does not define trade mark ownership, what matters is that ownership entails first adoption and use as a trade mark in Australia and I have already found that any use of “rock bags” before the Relevant Date was not use as a trade mark.

25. Accordingly, the s 58 ground of opposition has not been established.

    Section 62A

26. Section 62A provides that:

    The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

27. The phrase “bad faith” is not defined in the Act, but as explained by Bennett J in DC Comics v Cheqout Pty Ltd:

    Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards.[31]

    [31] [2013] FCA 478, [62].

28. The SGP states that:

    The Applicant was aware of the Opponent at the date of application, and seeks to register the opposed Trade Mark as part of a pattern of behavior engaged in by the Applicant of (a) attempting to pass itself off as the Opponent, (b) gain commercial advantage from the illusion that the applicant is associated with the opponent and (c) make misrepresentations with respect to services the applicant actually provides to IP Australia that allowed acceptance.

    The Applicant’s conduct falls short of the standards of acceptable behavior observed by reasonable and experienced persons in the industry in which the Applicant operates.

29. The Opponent’s written submissions are difficult.  In short, the reasoning appears to be that:

    ·     the Opponent has used “the ROCK BAGS brand” since 2017;

    ·     the Applicant was aware of the Opponent’s reputation before the Relevant Date;

    ·     the Applicant entered into some kind of agreement with Roess Nature Group GmbH & Co., the owner of the Registration relied upon by the Opponent for the purposes of s 44;

    ·     the Applicant did not disclose that agreement to the Registrar during these proceedings;

    ·     the Applicant had some years earlier filed a trade mark application for goods similar to the Goods but for a dissimilar mark, and that:

    ·     to quote the submissions:

    In view of the above, it is clear that when the Applicant failed to build its own reputation in the industry related to the goods, the Applicant combined elements of Kyowa mark’s i.e. Filter Unit and the Opponent’s mark i.e. Rock Bags and filed the Opposed mark … on 14 June 2023. Therefore, the Applicant adopted substantially similar or at least deceptively similar mark to the Opponent’s mark to leverage the goodwill of the Opponent built over the years since 2017.

30. Of itself, the Applicant’s knowledge of the Opponent and its use of “rock bags” at the Relevant Date is not determinative.  The Opponent has not proven rights of its own from an earlier point in time.  Contrary to the Opponent’s claims of exclusivity in the use of that expression, the evidence shows at the very least the Registration held by Roess Nature Group GmbH & Co. since 2020 for a mark including the words, and also shows generic use of those words more broadly.  If the Applicant took time to settle on the Trade Mark and adopted the same words as part of a composite mark, it is not evidence which establishes that at the Relevant Date the Applicant’s conduct fell short of standards of acceptable commercial behaviour observed by reasonable and experienced persons.  

31. I am not satisfied on the balance of probabilities that the Application was made in bad faith. The ground of opposition under s 62A of the Act has not been established.

    Decision

32. Section 55 relevantly provides:

    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.

33. The Opponent has not established a ground of opposition.  Trade mark application number 2364172 may proceed to registration not less than one month from the date of this decision.  If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the Application should be in accordance with the Court’s order or direction.

Costs

1. The Applicant has sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle. I award costs against the Opponent in accordance with s 221 of the Act, in the amounts set out in Schedule 8 of the Regulations.

   Debrett Lyons

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   3 October 2025