Opposition by Henkel AG & Co. KGaA to registration of trade mark application numbers 2238310 (class 3) – - [2025] ATMO 198

TRADE MARKS ACT 1995

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

Re:Opposition by Henkel AG & Co. KGaA to registration of trade mark application numbers 2238310 (class 3) – ball in tablet divided (logo) and 2238311 (class 3) –– rectangular tablet (shape) both in the name of Reckitt Benckiser Finish B.V.

Delegate:

Benjamin Goldsworthy

Representation:

Applicant: Gilbert Tsang of Counsel, instructed by Wrays Pty Ltd

Opponent: Frances St John of Counsel, instructed by Ashurst

Decision:

2025 ATMO 198

Trade Marks Act 1995 (Cth) – s 52 – grounds of opposition under ss 41, 59 and 62A – only s 41 pressed – trade marks have no inherent adaptation to distinguish – evidence of use of trade marks considered – trade marks did not distinguish the goods – trade marks refused.

Background

This matter concerns two oppositions to the registration of two trade marks under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’).[1] I extract the details of these trade marks (‘Claimed Marks’) below:
Trade mark number: 2238310
Trade mark:

(‘2238310’)

[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).

Applicant: Reckitt Benckiser Finish B.V. (‘Applicant’)
Filing date: 22 December 2021 (‘Relevant Date’)
Goods: Class 3: Automatic dishwashing tablets (‘Designated Goods’)
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Trade mark number: 2238311
Trade mark:
(‘2238311’)
Applicant: Applicant
Filing date: Relevant Date
Goods: Class 3: same as the Designated Goods
Endorsement: The trade mark consists of the three dimensional shape of a capsule as shown in the representations attached to the application form Registration is limited to the colours blue, white and red as shown in the representations of the trade mark attached to the application form (‘Endorsement’)

---

The Claimed Marks were examined under s 31 and the applications were each accepted. The acceptance of both of the Claimed Marks was advertised on 23 May 2022. On 25 July 2022, Henkel AG & Co. KGaA (‘Opponent’) filed its Notices of Intention to Oppose registration of the Claimed Marks and on 25 August 2022 filed its Statements of Grounds and Particulars (‘SGPs’). On 14 October 2022, the Applicant filed its Notices of Intention to Defend registration of the Claimed Marks.
In respect of 2238311 on 2 December 2022, the parties requested a cooling off period and another on 2 June 2023. In respect of 2238310 on 2 June 2023, the parties requested a cooling off period. The cooling-off periods in respect of both of the Claimed Marks expired on 2 December 2023. The relevant evidence stages of the opposition proceedings then resumed.
On 4 March 2024, the Opponent filed its Evidence in Support (‘EIS’) in respect of both of the Claimed Marks. The EIS consists of the following:

a declaration of Anita May Cade, partner at Ashurst Australia, dated 4 March 2024, together with Annexure AMC-1 to Exhibit AMC-5 (‘Cade-1’); and
a declaration of Melissa Jayne Sherry, Marketing Director – Australia and New Zealand (Henkel Consumer Brands) of the Opponent, dated 4 March 2024, together with Annexure MS-1 to Annexure MS-8 (‘Sherry’).

On 18 June 2024, the Applicant filed its Evidence in Answer (‘EIA’) in respect of both of the Claimed Marks. The EIA consists of the following:

a declaration of Magdy Kazzem, Senior Research and Development Operations Associate for the Hygiene business unit in Australia and New Zealand for RB (Hygiene Home) Australia which is a part of the Reckitt Group of companies which includes the Applicant, dated 13 June 2024 (‘Kazzem’);
a declaration of Jennifer E. Berner, Senior Brand Protection Counsel of Reckitt Benckiser (ENA) B.V., and the Authorised Signatory of Reckitt Benckiser Finish B.V., dated 13 June 2024, with Annexure JB-1 (‘Berner’); and
a declaration of Remy Smalley, Category Marketing Manager for the Hygiene Business unit in Australia and New Zealand for RB (Hygiene Home), dated 18 June 2024 with Annexures RS-1 to RS-6 (‘Smalley’).

On 21 August 2024, the Opponent filed its Evidence in Reply (‘EIR’) in respect of both the Claimed Marks. The EIR consists of:

a declaration of Anita May Cade, Partner at Ashurst Australia, dated 21 August 2024, with Annexure AMC-6 (‘Cade-2’).

The periods for filing of evidence ended and the parties requested to be heard on the matter.
On 27 May 2025, the Applicant filed a third declaration of Anita Cade, dated 27 May 2025, with Annexures AMC-7 and AMC-8 (‘Cade-3’) which consist of two judgments of the General Court of the Court of Justice of the European Union (‘General Court’).
On 6 June 2025, the Opponent filed written submissions (‘Opponent’s Submissions’). On 13 June 2025, the Applicant filed written submissions (‘Applicant’s Submissions’).
On 20 June 2025, I heard the matter by teleconference. Frances St John, of Counsel, instructed by Anita Cade and Nick Perkins of Ashurst appeared on behalf of the Opponent. Gilbert Tsang, of Counsel, instructed by Kate Howard of Wrays appeared on behalf of the Applicant.
I am to decide this matter as a delegate of the Registrar of Trade Marks.

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 SGPs raised grounds of opposition under ss 41, 59 and 62A. The Opponent has confirmed that it does not press the grounds of opposition under ss 59 and 62A. I consider the grounds under ss 59 and 62A to be abandoned.
I proceed on the basis that Opponent relies solely on the s 41 ground of opposition.

Evidence

Preliminary issues

Cade-3

The material at Cade-3 was filed outside of the periods for filing evidence. The Opponent requests that I give weight to this material pursuant to reg 21.19. Two decisions of the General Court are the main potential relevance of Cade-3. These decisions concern what might be termed approximate equivalents of the Claimed Marks. The area of the laws of the European Union which the General Court considered might be considered cognate with s 41. Whilst the some of the evidence filed by the parties made reference to ongoing litigation in Europe, I have not found it necessary to have recourse to the decisions of the General Court. What I must apply are the Australian principles as to s 41 of the Act which are not the same as the laws applied by the General Court. I agree with the Applicant’s Submissions, that the decisions of the General Court pursuant to these foreign laws are of little assistance in assessing whether the Applications are inherently adapted to distinguish and subject to s 41 under Australian trade mark law.[4] I also note that to the extent there are added evidentiary findings and material throughout the decisions of the General Court, it has not been necessary for me to give weight to that matter and the material overall does not change the outcome in these proceedings.
[4] Re PTM Guard SIA [2021] ATMO 143, [31] (Hearing Officer Cooper).
Accordingly, whilst I note that the outcomes in the proceedings before me are of a similar effect to each of those in the decisions of the General Court, I do not give weight to the material at Cade-3.

EIS

Sherry

The Applicant is a supplier of automatic dishwasher tablets. These are tablets which are fed into automatic dishwasher machines.
Sherry declares that:
the Australian automatic dishwashing market is dominated by gel or gel plus powder dishwashing capsules. The gel capsule shape which features two or more compartments is commonly used by Australian providers of dishwashing products and is often of a similar shape to the [Claimed Marks]. This is a trend of dividing dishwashing tablets into compartments is a trend that I expect to continue and to grow. Manufacturers of dishwashing tablets including the Applicant and the Opponent, already include additional compartments in their more premium, top of the range dishwashing tablet.[5]
[5] Sherry, [8]
Sherry provides confidential data which supports the conclusion that gel capsules make up the vast majority of dishwashing tablets purchased by Australian consumers.[6] The use of capsules for laundry detergents are also noted, with undated images of signs in respect of these as well as packaging examples at Annexure MS-3.
[6] Confidential Annexure MS-2.

Sherry contrasts pressed powder capsules with gel capsules and declares that the following are undated images of examples of shapes for dishwashing tablets that exist in the industry in Australia:[7]

[7] Sherry, MS-1, 13.

The following undated depictions of dishwashing tablets on packaging are also provided in Sherry:[8]

[8] Sherry, MS-1, 14.

Various examples of packaging displaying what appear to be dishwashing gel capsules are also provided.
Sherry declares that the depiction of a gel capsule on the front of packaging is commonplace for the industry. In this respect, Sherry extracts images which the declarant says they are informed were taken on or around August 2021, of dishwashing products as stocked on shelf at various supermarkets around Australia at Annexure MS-4. I reproduce this image as an example below:

Annexure MS-5 shows packaging images of dishwashing products available in Australia at the time of Sherry.
Sherry declares in the experience of the declarant that:
Australian providers of dishwashing products, including the Applicant, frequently use a colour combination of two to four different colours (often a combination of red, blue, white, green and/or yellow) in their gel capsules tablets which are used to denote perceived performance or functional characteristics of the gel capsule.
Examples of the marketing material of the Applicant which is dated prior to the priority date of the Claimed Marks are extracted at Annexure MS-7. Sherry declares that in video commercials, the timing of the voiceover implies that the white powder component ‘scrubs’ or ‘removes dirt’, the blue gel component degreases and the red gel component shines the dishes. Portions of the video commercials are then selectively extracted and emphasised in Sherry.
Sherry makes a general assertion that consumers perceive more chambers in a dishwashing product as equating to a higher premium product and mentions marketing which emphasises goods which have, for example a ‘3 in 1’ or 4 in 1’ effect. Sherry also notes that goods which have more compartments tend to have a higher end consumer expense, providing undated pricing information.

Cade-1

At Annexure AMC-1 to Cade-1 is a copy of the decision by the European Union Intellectual Property Office (‘EUIPO’) dated 26 October 2023 which relates to the Applicant’s Trade Mark Application No. 018805771 which approximates 2238310. At Annexure AMC-2 is a copy of the Decision by the EUIPO dated 6 November 2023 which relates to the Applicant’s Trade Mark Application No. 018808023 which approximates 2238311. I collectively refer to these decisions as the ‘EU Decisions’.
Cade-1 declares that the declarant had caused a person named ‘Ms Wang’ to perform searches on 29 February 2024 of and wwww.coles.com.au, extracting images of results appearing to be of that date.
Cade-1 further declares that on 5 September 2023, they caused Ms Wang to access the ‘Finish YouTube Page’. A downloaded copy of a video appears at Exhibit AMC-4 to Cade-1. On 21 July 2023, Cade caused Ms Wang to access the Finish YouTube page and download a copy of the video on that page titled ‘Try New Finish Ultimate Plus, our next generation of dishwashing tablet’, dated 20 July 2023. A downloaded copy of that video is exhibited to the declaration at Exhibit AMC-5.

EIA

Kazzem

In answer, Kazzem has a focus on the potential functionality of the Claimed Marks. Kazzem describes the tablets embodying the Claimed Marks as consisting of three separate compartments in the colours white, red and blue, which consist of a powder, liquid and gel respectively. Kazzem elaborates declaring that the tablets have a water-soluble film which once wet begins to dissolve and the power, liquid and gel are then released simultaneously.
Kazzem also declares that:
The division of the power liquid and gel into separate compartments avoids interaction between the various compartments’ ingredients before the water-soluble film begins to dissolve. For example, this helps to keep the powder dry until the Tablets are used.[9]
[9] Kazzem, [10].
Kazzem adds that there is, ‘no functional basis or purpose for adding the red and blue colours’ and that they are ‘purely for aesthetic and marketing purposes’ and that the tablets ‘would perform just as well if their component parts were provided without any added colours’.[10] Kazzem adds that there is, ‘no functional basis or purpose for the overall shape of the Tablet, or the shape or positioning of the various compartments of the Tablets’.[11] Kazzem does acknowledge that there is a functional requirement that each tablet fit inside the dishwasher’s tablet compartment, though adds that this only limits the overall size of the tablet not the shape or configuration of the individual compartments. Kazzem adds that the tablets would have the same performance if the compartments had different shapes and configurations. Overall, to summarise Kazzem, it declares that ‘the combination of colours, shape and configuration of the various components of the Tablets do not serve any functional purpose’.[12]

Berner
[10] Kazzem, [11].
[11] Kazzem, [12]
[12] Kazzem, [13].

The relevance of Berner is that is introduces and annexes at Annexure JB-1, extracts of European Union applications from the EUIPO’s TMview Register.
Berner recalls the EUIPO Decisions referred to in Cade-1 and declares that the EUIPO Decisions were appealed on 21 December 2023 (at Appeal Identifiers R2561/2023-4 and R2563/2023-4) and that they are informed that the EUIPO Decisions were upheld on appeal.
Berner confirms that the Applicant will further appeal these decisions to the General Court.

Smalley

Smalley makes a number of observations in response to Sherry and expresses disagreement that the use of gel capsules with similar shapes to the Claimed Marks are common. Smalley declares that the shape and configuration of different brands of gel capsules for the Designated Goods differs significantly between brands. Detailed comparisons are then provided.[13] Whilst the automatic dishwashing detergent market in Australia is described as highly competitive in the evidence, Smalley also suggests that as at 18 July 2021, Finish dishwashing tablets represented over 60% by value of the dishwashing tablet market. Smalley also adds that ‘the shape and configuration of the Finish Ultimate / Ultimate Pro dishwashing tablets is unique to the Applicant’.[14] Smalley says that the ‘red powerball is the consistent element featured in all of the Finish dishwashing tablets and acts as a badge of origin for the Applicant.[15]
[13] Smalley, [11].
[14] Smalley, [13].
[15] Smalley, [14].
Smalley addresses the advertising of Finish dishwashing tablets in Australia in general. In 1995 the Applicant introduced a dual layer tablet into the automatic dishwashing machine market. In 1999 the Applicant then launched the ‘Finish 3-in-1 Powerball’ which contained a red ball. Various television commercial footage is exhibited at Exhibit RS-2. Some of these are undated and all of them are of an unclear distribution level. Smalley contains general statements to the effect that the television commercials have been ‘previously aired in Australia’. Even where the television commercials are mentioned as having been aired in the years 2017, 2019, 2021, the rate of distribution is not clear from the evidence.
Smalley contains a broad statement that dishwashing tablets bearing the Claimed Marks are generally promoted every month in weekly sales catalogues of retailers such as Coles and Woolworths. However, no data is presented in this respect and the dates for activities are not specified. The rate of any distribution of such catalogues is also not specified. Exhibit RS-5 contains material concerning in-store displays at Coles – this material again bears similar issues with dating and the rate of exposure of Australian consumers. Annexure RS-6 is a screen capture of the website which specifies the red ball as being a trade mark held by the Reckitt. This material is undated. Smalley makes broad statements as to the variety of major retailers which sell Finish dishwashing tablets. Samples of catalogues from Woolworths and Coles which are undated and without any indication of a rate of circulation appear. Similarly, in-store promotional material examples appear at Exhibit RS-4 which are undated and of unclear distribution rates.
Smalley declares that the shape of goods bearing or embodying the Claimed Marks are unique, with some emphasis on the red ball element in the Applicant’s products.
Smalley also provides examples of product packaging for the Opponent’s dishwashing tablets showing various signs which I attach at Schedule 1 to these written reasons.
The advertising of Finish dishwashing products is then canvassed by Smalley. It is difficult to discern the exact first use of the Claimed Marks in relation to the Designated Goods from this material. However, Smalley declares that the ‘Finish Quantum Ultimate Pro’, which appears to embody 2238311 was launched in 2019.[16] Images from a television commercial appear at Exhibit RS-2. This material is undated. Another television commercial appears at Exhibit RS-2 which appears to have aired in 2021 showing packaging containing a sign bearing resemblance to 2238310 placed centrally on the packaging.
[16] Smalley, [24].
A general indication of what Smalley entitles ‘Finish’s penetration in the automatic dishwashing market’ is also provided.[17] This is a very substantial, almost supermajority percentage for the market share for the Designated Goods.
[17] Smalley, [31]-[33].

EIR

Cade-2

The main relevance of Cade-2 is that it introduces a redacted copy of an expert report of Dr Fahim Ahmed, dated 11 October 2023, (‘Ahmed Report’) which was filed by RB (Hygiene Home) Australia Pty Ltd in another proceeding before the Federal Court.[18] The Opponent was apparently provided access to the Ahmed Report by way of an application for non-party access with the Federal Court Registry.[19] I have noted that Dr Ahmed is a scientist with broad qualifications in the chemical industry and does not appear to be a branding expert.
[18] Federal Court of Australia Proceeding No. NSD307/2023 against Procter & Gamble Australia Pty Ltd.
[19] Cade-2, [4].
Case-2 extracts the relevant portion of the Ahmed Report as being the following:
Section A of Dr Ahmed’s expert report is titled “An explanation of each colourant or dye in FINISH ULTIMATE PRO 0% including the reasons for inclusion of colourants or dyes in the formula”. In Section A of his report, Dr Ahmed includes the following statements at pages 4-6:
Generally, there are at a bare minimum some 7-10 functional and performing chemical ingredients that are necessary in an automatic dishwashing detergent formulation to be an effective cleaning product irrespective of product forms and use dosage. They are as follows:
…
…
The three main colorants used in homecare cleaning and personal care products, even in industrial & institutional cleaning products, are BLUE, GREEN, and YELLOW. Sometime RED colorant is also used in some cleaning products. These bright colours provide strong signals of being powerful, high efficacy and effective cleaning products; for example, the elements of BLUE and GREEN symbolize CLEANLINESS, FRESHNESS and SHINE. Most of the best cleaning products have colour palettes with BLUES, GREENS and YELLOWS. Colourants do not bring cleaning benefits in detergents, including automatic dishwashing detergent tablets such as FINISH ULTIMATE PRO 0%; however, colourants in cleaning products play a very important role in communicating product quality, efficacy and performance to consumers.

Cade-2 adds that ‘on page 7 of his expert report, Dr Ahmed provides an example of Cascade dishwashing capsules and Dawn dishwashing detergent (both manufactured by Procter & Gamble) using the colour blue in their products in a way which he considers communicates to consumers that the products both have effective degreasing performance.’
I need not otherwise summarise the contents of Cade-2 or the Ahmed Report.

Consideration

Section 41

Section 41 provides:
41Trade mark not distinguishing applicant’s goods or services
(1) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.
Note:          For goods of a person and services of a person see section 6.
(2) A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.
(3) This subsection applies to a trade mark if:
(a) the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.
(4) This subsection applies to a trade mark if:
(a) the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:
(i) the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;
(ii) the use, or intended use, of the trade mark by the applicant;
(iii) any other circumstances.
Note 1:       Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a)    the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b)    the time of production of goods or of the rendering of services.
Note 2:       For goods of a person and services of a person see section 6.

Applicable principles

The issues raised in this matter require me to decide difficult questions concerning a shape trade mark and a figurative trade mark which each allegedly represent the shape of the Designated Goods. In this respect, the parties took me to a number of decisions and I consider it useful to set these out at some length.
I start with the principle that a trade mark’s inherent adaptation to distinguish should be tested:
[B]y reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[20]
[20] Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55, [5] (Kitto J); Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48, [26] (French CJ, Hayne, Crennan and Kiefel JJ).
This principle is said to equally apply to shape trade marks as it does to other types of signs.[21] In Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks (‘Kenman Kandy’) Stone J, with French J agreeing, considered that a bug shape was inherently adapted to distinguish non-medicated confectionary.[22] In applying the relevant test, I must consider the likelihood of other traders desiring to use the Claimed Marks, or something nearly resembling them, in connection with their own similar goods.[23] The Claimed Marks must each be considered as a whole.
[21] Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273 [146] (Stone J) and [46] (French J agreeing) (‘Kenman Kandy’).
[22] Ibid.
[23] W&G Du Cros Ltd’s Appn (1913) 30 RPC 660, 672 (Lord Parker) (emphasis added).
After summarising examples of trade marks considered distinctive in past decisions, Stone J in Kenman Kandy then stated:
In the above examples the trade marks were held to be inherently adapted not because of any positive content but because they had no associations or significations that prevented them from being inherently adapted to distinguish a trader’s goods. In addition they show, especially in the comments made in Mark Foy’s and Wella, that, at least in relation to word trade marks, it is not an obstacle to inherent adaptation that the trade mark is also designed to elicit a positive emotional response. The fact that the “sign” that comprised the trade mark in those cases had a dual function was not seen to be inconsistent with the sign acting as a trade mark in respect of certain goods. I see no reason why the attractiveness of a shape should be considered differently. Moreover, I also see no reason why an invented shape should be regarded as different from an invented word in terms of assessing its inherent capacity to distinguish a trader’s goods.[24]
[24] Kenman Kandy (n 21) [156] (Applicant’s emphasis added) (citations omitted).
In Kenman Kandy Stone J further stated:
In my opinion it is the absence of these associations and significations that makes a sign inherently adapted to distinguish one trader’s goods from those of another. In other words the concept is negative not positive. Support for this view can be found in the cases in which a trade mark has been found to be inherently adapted to distinguish. In Mid Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236 it was argued that the registration of a trade mark consisting of the words “Chifley Tower”, registered by the owner of a large office and retail building of that name, in respect of property management services and retail and office leasing services should be cancelled because, inter alia, it lacked the capacity to distinguish the services in respect of which it was registered. The Full Federal Court, applying the principles formulated by Kitto J in Clark Equipment, rejected this argument, stating at 251:
“The Chifley Tower is not part of the common heritage in the sense that a town, suburb or municipality is. … There is not public policy against [the building owner] restricting those who have come to occupy space within its building as to the way in which they use its name in connection with goods they produce or services they provide. That being so, it is not easy to see, in our view, why any separate public policy, of a kind identified by Kitto J, should apply so as to deprive the name selected by [the building owner] of a capacity to distinguish, in circumstances where there could be no legitimate reason for persons other than those carrying on business within The Chifley Tower to use its name in connection with their goods or services.”
It is the absence of association and signification that accounts for invented words often being found to be inherently adapted to distinguish a trader’s product.[25]
[25] Ibid [147]-[148].
The conclusion of Stone J in Kenman Kandy was as follows: [26]
A shape (or word) that is entirely concocted does not have the associations that would lead to confusion. I do not regard such a shape as being part of the “great common” any more than does a concocted word or a novel combination of common words; see for example Mark Foy’s and Wella. The learned primary judge drew a distinction between concocted words, which, he said, were possibly infinite in number and the possibilities for concoction of animal-like shapes, which, he said were finite. With respect, I do not see the justification for this distinction. If there is any distinction I would have thought the advantage of greater variety lay with the category of three dimensional shapes which may involve any number of combinations of planes, arcs, angles and so forth.
Although the bug shape is suggestive of insect life it is not the shape of any specific insect or bug. Indeed, were it not for the description given by the appellants, it might as easily be seen as some extra-terrestrial object or space equipment such as a modified lunar landing module. Registration of the bug shape as a trade mark would not give the appellant a monopoly over all bug or insect shapes – only this particular shape and any substantially identical or deceptively similar shape. I see no reason in principle or policy why this should be so.
[26] Ibid [162]-[163] (Applicant’s emphasis added).
In Chocolaterie Guylian NV v Registrar of Trade Marks (‘Guylian’) Sundberg J expressed the relevant test in respect of shape trade marks as follows:
The ultimate question on the issue of inherent adaptation is whether a sign – in this case, a shape – possesses any ordinary significations and, if it does, whether or not other traders might think of the shape and want to use it for those ordinary significations in a manner which would infringe a registered mark in respect of the sign. In cases where a shape depicts a known object or concept (cf. wholly concocted or ambiguous shapes), and is therefore likely to signify the same to most if not all consumers, then a subsidiary question is whether the shape is nevertheless sufficiently distinctive or unique so that other traders wishing to represent the same or a similar concept will remain free to do so without infringing the mark, that is, without requiring use of the same shape or one substantially identical or deceptively similar. An important consideration in all of this is the nature of the goods for which the shape mark is to be used.[27]
[27] [2009] FCA 891, [75] (‘Guylian’) (Applicant’s emphasis added).
The Applicant submits that Guylian concerned a sign which was a ‘known object or concept’, rather than a ‘wholly concocted’ or ‘ambiguous’ shape.[28] The Court in Guylian found that the sign was to some, though not a sufficient extent, inherently adapted to distinguish under the predecessor sections to the current s 41. The Applicant also places emphasis on evidence relied on by the Court in Guylian which tended to show that registration of the trade mark would present difficulties for other trade marks wishing to make of shapes depicting sea horses for chocolates.
[28] Applicant’s Submissions, [53].
Of the relevant test and as to functionality in features of the trade mark, in Sebel Furniture Limited v Acoustic & Felts Pty Limited, Foster J stated:
In order to function as a trade mark, the shape must be something which is extra or which is added to the inherent form of the particular goods as something distinct which can denote origin. A shape cannot function as a trade mark if it is something that other traders may legitimately wish to use either because it is inherent to the particular goods (ie it is of their nature) or because it provides some technical or functional benefit to the goods.[29]
[29] [2009] FCA 6, [144] (original emphasis).
The Opponent also refers me to the Trade Marks Manual of Practice and Procedure at s 21.3 which states:
Any shape which is commonplace for goods in question is likely to be legitimately needed by other traders. It is therefore unlikely to be registrable prima facie. The conclusion that something is common to the trade should only be reached after research reveals that the shape, or some minor variation of it, is commonly used within the relevant market.
Examples of these types of shapes are standard wine bottles for wines; ordinary cylindrical shaped jars for sauces; a standard umbrella shape for sun umbrellas; a cylindrical mug shape with a standard handle for coffee mugs and egg shaped or rabbit shaped Easter chocolates. … If a shape has significant functional features there is a strong likelihood that other traders will need to use that shape for their similar goods. No one owner should have exclusive ownership of words, devices, symbols or three dimensional shapes which are common to the trade. One way of testing this from a shape mark perspective, is to consider whether the shape is made up of the sort of functional elements that are commonly used in the relevant industry.
…
A starting point for all trade marks including “shape” trade marks is the question “what is common to the trade”? This can be assessed through research into the shape applied for in the relevant trade. If research shows a number of parties using a shape in a nontrade mark sense, this will tend to support a view that the marketplace does not regard it as a trade mark and objections are in order.
…
The shape and colour elements of 2238311 are made up of elements which are commonly used in the relevant industry. That is, functional compartments, embedded on the medium of a film which is rectangular. ‘Not just for the exact shape, but for similar shapes and shapes in the same class or category’. Minor variations are an issue and the Opponent submits that is exactly what we have here.
…
It is important that the examiner look, not just for the exact shape, but for similar shapes and shapes in the same class or category as the one applied for in the application under consideration. If the shape is a minor variation of something already common within the industry, the examiner will need to raise grounds for rejection based on the shape's lack of inherent adaptation to distinguish for the goods claimed.
…
Applications for shapes may face difficulties in demonstrating an adaptation to distinguish. All goods have shapes, and containers for goods come in shapes. Customers expect a variety of shapes for goods within many trades. If a trade mark consists of any one of these shapes, or minor variations on them, it is unlikely to be easy for the applicant to persuade the Registrar that the shape applied for does, or will be able to perform a trade mark function.

Other litigation background to these proceedings

There is also a history of litigation involving the parties which they referred to in these proceedings. I summarise this history from here. The entry of the Opponent’s products into the Australian market was followed by the litigation in RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd (‘RB (Hygiene Home)’) which came before the Full Court of the Federal Court.[30] At the hearing and in the Applicant’s Written Submissions, Mr Tsang referred me to several findings of asserted relevance for the purposes of the matter before me.
[30] [2024] FCAFC 10 (Nicholas, Burley and Hespe JJ) (‘RB (Hygiene Home)’).
In RB (Hygiene Home) the Applicant sued for trade mark infringement of two registered trade marks, including most relevantly the following colour and shape combination trade mark, which I extract below:
Trade mark number: 1008914
Trade mark:
(‘1008914’)
Endorsement: The trade mark consists of the shape and colour of the goods as depicted in the representation attached to the application form, namely, a rectangular shaped capsule with rounded corners; the capsule has a RED cylindrical compartment embedded in the capsule; the RED centre is partly encircled by a BLUE portion of the capsule resembling a wave; the BLUE wave portion of the capsule is made of a gel substance; the remaining portion of the capsule consists of multicoloured granules of powder.
The sign below labelled ‘SE Logo’ was alleged to have infringed 1008914, including by its appearance on the packaging presented to the right below on dishwashing tablets:
(‘SE Logo’)
The primary judge found that the SE Logo was not used as a trade mark and so did not infringe 1008914. On appeal, the Full Court also found that whilst the SE Logo was used as a trade mark, it did not infringe 1008914 because it was not substantially identical with or deceptively similar to 1008914.[31]
[31] RB (Hygiene Home) (n 30) [159]-[164].
The Full Court overturned the decision of the primary judge concerning trade mark use of the SE Logo in the following terms:[32]
In forming the conclusion that theSE Logo was not used as a trade mark, it would appear that her Honour was influenced by the expert evidence of the cognitive process by which a low involvement consumer would approach the branding to reason that consumers may only look to one or two visual cues. From there, the primary judge reasoned that brand name SOMAT is the most diagnostic cue and that next consumers may consider background colour themes to be of assistance in selecting brand. It was in this context that her Honour found that a stylised depiction of the product would have no brand function. That is, it would not perceived to be a designation of origin of the goods, as well as a stylised depiction of the product itself. Influential in that reasoning was the fact that different stylised depictions were used by the respondent for different products (at [263]). In that regard, her Honour found it persuasive that on the supermarket shelf, the product would be located in blocks, and it would not make sense for the consumer to look for the stylised depiction to identify the brand when the names SOMAT, FAIRY and FINISH are prominently displayed.
However, her Honour found at [263] that the stylised product depictions “assist the consumer to differentiate variants available within each brand”. It appears to us that such a finding is very close to a finding that the stylised product enables a consumer to understand, within the SOMAT product range, that this is a particular product or sub-brand. The words BIG MAC will be used as a trade mark, even though the product is always sold with the brand name McDONALDS in close proximity. Similarly, the sale of a TOYOTA vehicle which has the sub-brand name PRIUS will also involve the use of both words as trade marks. It is not to the point that the stylised depiction in the SE Gelcap is a “poor cue” for identifying brand (as her Honour found at [264]), or that the brand name may be a better brand indicator. The question of trade mark use does not call for a consideration of how effective the sign is as a trade mark. Nor, in our respectful view, is it relevant to take into account whether, given the prominent use of the SOMAT name, there is a likelihood that consumers would think that the SE Gelcap products come from the same source as the FINISH products (at [265]). As the appellants submit, the question of likely deception has no role to play in deciding what constitutes trade mark use. The inquiry is not whether the sign indicates a connection between the alleged infringer’s goods and those of the registered owner, but whether the sign used indicates the origin of the goods of the user of the sign; Self Care at [60].
Having determined that the primary judge erred in this respect, it falls to us to consider the question of trade mark use. Considered in the setting in which the SE Logo is presented, in our view it would have appeared to the consumer as possessing the character of a device, or brand. It is true that other features of the SE Packaging are likely also to appear as indicating the trade origin of the product. It is also true that the SOMAT name is likely to be a primary indicia of origin. However, having regard to its central location, the highly stylised rendition of the product with two enlarged, dynamic blue swirls around a red circle and rays of radiating white lines emerging from it, it appears to us that the SE Logo is being used in part to signify that a product with something like this shape originates from the supplier of the product and partially to provide a description of the product in the packaging. That is sufficient to yield the conclusion that the SE Logo has, in context, been used as a trade mark.
[32] Ibid [155]-[157] (full citations omitted).

Also relevant to note of RB (Hygiene Home) is that the Opponent cross-claimed for removal of 1008914 for non-use. Resisting the removal application, the Applicant argued that 1008914 had been used in television commercials, on various packaging and other website matter. The Applicant relied successfully on the evidence of use of 1008914 by selling dishwashing tablets in the following packaging below picturing product embodying 1008914 (‘Finish Packaging’):

Application of the principles

I now turn to consider the question of s 41 in respect of each of the Claimed Marks.
I start with 2238311, which is a shape trade mark consisting of three populated pouch compartments set on a rectangular film. In the representations, two compartments are shown as either blue or white in the representations for 2238311. These surround a round bulbus compartment presented in red. All of these areas are bulbous and appear connected only by the base film. I take note that 2238311 by the Endorsement is ‘limited to the colours blue, white and red as shown in the representations of the trade mark attached to the application form’.
I must consider what if any ordinary signification there is for 2238311. The Opponent submits that the ordinary signification of 2238311 is exactly the thing it says it presents as. That is, a dishwashing gel capsule, which is a type of dishwashing tablet or something similar.
I accept that a dishwashing gel capsule is likely to consist of a rectangular film on which are set, multiple compartments which usually differ in bright and/or contrasting colours. These compartments are usually bulbous and different colours are used apparently to signal to consumers a multitude of cleansing ingredients which become active once the film dissolves in a dishwashing machine. Justice Besanko in Coca-Cola Co v PepsiCo Inc (No 2) said that where a container contains ‘otherwise formless goods’, ‘one of the functions it performs is as a container’.[33] I accept that the shapes of the compartments can vary. However, the compartments of different types also appear to bear some equivalent functionality by shape as to their ability to fit efficiently in an automatic dishwashing machine’s receptable, and also in that the bulb compartments may themselves contain and accommodate and distribute varying quantities of what will become the active components in the overall wash when the Designated Goods are put to use. The Opponent references the material in Sherry in submitting that it is commonplace in the industry for the Designated Goods to consist of a usually rectangular piece of film setting together multiple powder and gel compartments, with some variation also by bright colours. Furthermore, the Opponent submits that 2238311 is nothing but a minor variation on the variety of shapes and colours already common in the industry and 2238311 will not be capable of performing a trade mark function.
[33] [2014] FCA 1287, [200].
The Applicant emphasises that, for example, whilst the Full Court in RB (Hygiene Home) recognised the descriptive function of 1008914, the Full Court also said it operated as a trade mark, and on that basis submits ‘there being no doubt as to its inherent capacity to do so’.[34] I also note that the Full Court found that 1008914 has been used as a trade mark specifically on the Finish Packaging and via packaging which had a window allowing the dishwashing tablets to be seen by consumers or otherwise in a tessellated depiction of the dishwashing tablets. The Opponent submits in reply that what the Full Court said in RB (Hygiene Home) should not be taken as being that dishwashing tablet shapes as such will necessarily be inherently adapted to distinguish. Rather, on this point the Full Court found that only that 1008914 had been used as trade mark in a specific context.
[34] Applicant’s Submissions, [39] (citations omitted).
RB (Hygiene Home) was not specifically concerned with the matter of 1008914’s inherent adaptation to distinguish the Designated Goods. The question of ‘trade mark use’ is a different one to that of ordinary signification, whether a trade mark has inherent adaptation to distinguish or the extent inherently adapted to distinguish. The Full Court in RB (Hygiene Home) alludes to this distinction commenting that the, ‘question of trade mark use does not call for a consideration of how effective the sign is as a trade mark’.[35] The Full Court, and other authorities, have also often focused the inquiry for ‘trade mark use’ as one concerned with, for example, ‘the setting in which the SE Logo is presented’ and overall the use ‘in context’.[36] This is a separate question to that of inherent adaptation to distinguish. Accordingly, these findings as to trade mark use in do not greatly assist the Applicant concerning the issue of inherent adaptation to distinguish the Designated Goods.
[35] RB (Hygiene Home) (n 30) [156].
[36] Ibid [157] (my emphasis added).
The parties referred me to Kenman Kandy which involved an application for a bug or alien shaped confectionary. For reference, I reproduce below the shape of concern in Kenman Kandy:

Shapes where they have functional purposes which render them incapable of being regarded as adapted to distinguish are said to require something ‘special’ or ‘extra’ added by a shape to the goods for the shape to function as a badge of origin.[37] The bug shape was said by the Full Court to have no associations or connotations in respect of the designated non-medicated confectionary goods. Turning to 2238311, taking note of what appears to be common in the industry for dish washing tablets, the shapes, colours and imagery call out to consumers that the Designated Goods are dishwashing gel capsules. That is, the shape and configuration are not taken far from, if at all from, that inherent form or what a consumer might expect of a dishwashing gel capsule. By contrast to the shape in Kenman Kandy, in Guylian the shape was of a clear depiction of seahorse in respect of confectionary, including chocolates. The Applicant attempts to distinguish Guylian by recourse to the words ‘known object or concept’ as opposed to a ‘wholly concocted’ shape. 2238311 depicts what I consider to be a known object being a dishwashing gel capsule with multiple compartments of differing colours. I do not consider the shape of 2238311 to be ‘wholly concocted’ in the manner at play in Kenman Kandy. The Opponent submits that if the sea horse was a known object for chocolate, then certainly in the matter before me the shape of 2238311 is the Designated Goods, being a dishwashing tablet. I am satisfied that 2238311 carries with it the ordinary signification of a dishwashing gel capsule. I also confirm that I consider a dishwashing gel capsule to fall within the description of, or to be similar goods to, the Designated Goods.
[37] Koninklijke Douwe Egberts BV v Cantarella Bros Pty Ltd [2024] FCA 1277, [255] (Wheelahan J) (‘Koninklijke’).
I next must consider whether other traders may be motivated by a legitimate desire to make use of the shape of 2238311, or something nearly resembling it, for the sake of that ordinary signification in a way which may infringe. The Applicant emphasises the variety of shapes and forms in which a dishwashing gel capsule could potentially take. It submits that I must exercise caution on application of these principles and pressed me to depart from the conclusion in Guylian. I also note that, the ultimate question posed by Sundberg J is not phrased in such a way that the desire must be to use the exact same shape, their honour phrased the issue as being that, ‘in my view it is quite possible [not certain]’ … a person might wish to make chocolates in the shape of a sea horse’. I agree with the Opponent’s submission that s 41 does not require desire for use of an identical trade mark.
I accept that there might be automatic dishwashing tablets of a variety of shapes and sizes and it is not always necessary for a dishwashing tablet to be of a very particular shape for the various compartments as shown in the representations of 2238311. Shapes could also vary based on the design of any given dishwashing receptable for dishwashing tablets. However, as with descriptive words, the fact that there are different shapes available to other traders to create the same end-functionality does not necessitate a conclusion that 2238311 is inherently adapted to distinguish. There may also be cases where a shape may distinguish or differentiate the goods as goods, but not necessarily as the trade source.[38] The ultimate question I must consider is whether 2238311, or something nearly resembling 2238311, is one which other traders are likely to desire to use in the ordinary course of their business without improper motive for the sake of any ordinary signification.[39]
[38] Mayne Industries v Advanced Engineering Group Pty Ltd [2008] FCA 27 (Greenwood J).
[39] Guylian (n 27) [75].
The Opponent refers me to various marketing materials such as television commercials where the Applicant suggests to consumers that the design of the object shown in the representations for 2238311 and colours have various functional advantages. The shape of the dishwashing tablet will have accommodative and shape qualities which allow for efficient accommodation in receptables of various shapes and sizes. I consider this to heighten the likelihood of the relevant desire to use similar overall shapes by other traders. 2238311 is a basic shape of a dishwasher tablet with various coloured compartments, each with likely different ingredients which indicate the nature of the Designated Goods. Compartmentalisation by protruding bulbs, each set on a plain clear medium are common elements of dishwasher tablets. These elements and 2238311 as a whole trade mark are not a ‘wholly concocted or ambiguous shape’,[40] nor do I consider these elements to be ‘unusual’ individually or in their combination. Although the evidence does not establish that there is a very exact and a single necessary inherent form for the Designated Goods, there are some necessary functional elements and some very common elements.
[40] Applicant’s Submissions, [102], referring to Guylian (n 27).
The Applicant says that the concerns expressed by Sundberg J in Guylian do not here arise. The Applicant refers me to the findings of the Full Court in RB (Hygiene Home), where the Court did not consider 1008914 to be infringed by the SE Logo. The Applicant says that this is a strong indicator that other traders would not likely think of and desire to use a sign that would infringe 2238311. That finding on the difference between the SE Logo and 1008914 is a specific scenario concerning signs with specific characteristics and does not detract from the likelihood of other traders desiring to make use of signs nearly resembling 2238311. Mr Tsang also referred me to Kenman Kandy where Stone J commented that when considering the great common for shape trade marks, ‘the advantage of greater variety lay with the category of three dimensional shapes which may involve any number of combinations of planes, arcs, angles and so forth’.[41] The Applicant submits that there is a great deal of freedom in the manner which the shapes of the Designated Goods can be designed.
[41] Kenman Kandy (n 21) [162].
The Applicant also relies on the Endorsement, noting that what might infringe 2238311 is here also limited by colour. As to the Endorsement in 2238311, the Opponent submits that the limitations as to colours do not assist the Applicant, relying again on the marketing materials of the Applicant. In those materials the Opponent appears to suggest that colour has a functional or signal impact on consumers of dish washing tablets. That is, the colours signify different functions, such as degreasing or shining, of dishwashing tablets. I do not accept this submission. However, I also do not accept on the balance of probabilities that consumers have been so educated that colours always signify a trade origin. I am satisfied that other traders are likely to use individual and/or a variety of bright colours to signify fragrance or other aesthetics. Further, when used in a multitude, colours of the physical compartments may also signify, and efficiently allow for, a multitude of active cleansing ingredients in varying measurements as part of the Designated Goods. I also accept that each compartment in dishwasher tablets are commonly different bright colours, such as red, yellow, blue and green in varying combinations. Overall, I do not consider the shape and colour combination to be a wholly concocted shape. Further, my view is that, in the words of Wheelahan J in Koninklijke Douwe Egberts BV v Cantarella Bros Pty Ltd, 2238311 is a shape trade mark that is both functional and, to the extent that it contains features which are not functional 2238311 draws on features of the common heritage for the Designated Goods that are not apt to distinguish the Designated Goods of any one trader.[42]
[42] Koninklijke (n 37) [267].
I confirm that I have also considered the findings of French J in Kenman Kandy which concluded that:
The shape of the millennium bug involves a symmetrical disposition of projections (“legs”) and recesses (“eyes”). Theoretically it may be the case that the number of possible symmetrical arrangements of projections and recesses is not infinite. Assuming that to be so, it is speculative, absent evidence, to draw conclusions about that number and whether the particular arrangement has any significant impact upon the access of other traders to the use of insect like shapes as trade marks. In that connection it is necessary to bear in mind that this trade mark is still at the registration stage. It enjoys the benefit of the presumption of registrability mandated by s 33. To the extent that critical criteria upon which registration might be rejected are in doubt, the application should be accepted. Closer adversarial scrutiny may occur in opposition – Registrar of Trade Marks v Woolworths at 377. In my opinion the appeal should be allowed.[43]
[43] Kenman Kandy (n 21) [50].
I note that unlike Kenman Kandy these are opposition proceedings which feature evidence as to the trade and Designated Goods. The evidence in these proceedings takes the matter of the lack of inherent adaptation to distinguish beyond mere speculation and establishes on the balance of probabilities that other traders do use signs which incorporate or consist of colourful bulbous elements set on a plain, four sided medium and offer them for sale in respect of the Designated Goods. The overall shapes of gel capsules accommodate the fitting with dish washing machinery and the bulbous elements have a necessary function of separating core ingredients in varying amounts, which is implied in the Applicant’s own evidence. The separation is necessary and efficiently achieved by compartmentalising through film, before use of the Designated Goods. I also consider it likely that other traders might desire to depict a shape of a three-dimensional configuration of a dish washing tablet, with a number of protruding contrasting colourful elements set on a rectangular medium. Overall, my assessment is that other traders are likely to be desirous of the use 2238311, or a sign nearly resembling it for the sake of 2238311’s ordinary signification.
For the reasons given above, I am satisfied that 2238311 is not to any extent inherently adapted to distinguish the Designated Goods.
I must next consider 2238310 and the ground of opposition under s 41. 2238310 is a depiction of a dishwashing gel capsule and as a sign carries that ordinary signification. Many of the comments concerning 2238311 apply equally to 2238310. However, I note that 2238310 is not limited by colour. I accept that it is common in the industry for the Designated Goods, for traders to display images of the product offering as to gel capsules on packaging.[44] The Applicant submits that the Opponent’s current use would not infringe this mark. The Opponent does not need to show that its own current use would infringe in order to demonstrate the ground of opposition under s 41; the use of exactly 2238310 need not be desired. 2238310 as applied for or a depiction of a shape which is deceptively similar is enough. That the Applicant could wield 2238310 as if it is a shape mark for these Designated Goods is also shown by fact that this is what the Applicant did in RB (Hygiene Home) concerning the use of the SE Logo.[45] I am satisfied that other traders might legitimately desire to use signs which nearly resemble 2238310 for the sake of its ordinary signification.
[44] Sherry, Exhibit MS-1, 14.
[45] RB (Hygiene Home) (n 30) [93].
For the reasons given above, I am also satisfied that 2238310 is not to any extent inherently adapted to distinguish the Designated Goods.

Evidence of the use of the Claimed Marks

I must now consider the Applicant’s use of each of the Claimed Marks prior to the filing date and determine whether the Claimed Marks have each been used to such an extent that they each do in fact distinguish the Designated Goods as being those of the Applicant.
In respect of the evidence, Opponent refers to me to the Trade Marks Manual of Practice and Procedure at s 21.3 which states:
Shapes of these kinds which are commonly used by many competing traders are likely to attract grounds for rejection under the provisions of subsection …41(3)…. It will be necessary for the applicant to supply evidence of use demonstrating that the shape, at the date of filing, did distinguish the applicant's goods/services from those of other traders. In such situations, it will be the responsibility of the applicant to show convincingly that the trade mark has acquired a secondary meaning and has come to identify the goods or services of the owner in a trade mark way.
…
For a shape to have acquired recognition as a trade mark, it will need to have been promoted as something apart from the goods. Entries in catalogues or brochures showing pictures of the goods in the shape claimed are not definitive, even if the applicant is able to show many years of such material. To be of more weight, the use should show examples of how the applicant has referred, promoted or demonstrated to potential purchasers that the shape being claimed is intended to have a trade mark function. What may be more useful are examples of advertising text referring specifically to the shape in respect of the goods in ways which would lead the examiner to conclude that the shape was not only unusual and different from others available in the particular market, but it was also being promoted as a brand.
Statements such as “Look for the star shaped box” or “Attractive colours; unusual shape” are the type of promotional terms that may assist an applicant in demonstrating that the shape has a capacity to distinguish. ]
…
Consumer surveys based on recognition of the shape as denoting the applicant, declarations from the trade and declarations from consumers relating to recognition of the shape as an indicator of trade source may also be useful.
The Applicant has provided declarations from persons who have experience in the industry for the Designated Goods. I note that some of these persons are employees or persons related to the Applicant. The fact that these declarants might associate the features of the Claimed Marks with the Applicant will not of itself show the capacity of the Claimed Marks to distinguish one trader’s goods from those of another trader. The association must be one which results from the use of the Claimed Marks each as a trade mark.[46] Ultimately, I must decide whether the evidence establishes that each of the Claimed Marks act, each in their own right, as badges of origin in relation to the Designated Goods. Use as a trade mark itself is not sufficient. It is the total gravity and weight of use which will usually decide the matter. I have noted that much of the evidence, though I acknowledge that this is not all, shows the use of the Claimed Marks alongside other highly prominent signs. This point also diminishes the effectiveness of the evidence in demonstrating the Claimed Marks act as badges of origin.
[46] Woolworths Limited v BP Plc (No 2) [2006] FCAFC 132, [117] (Heerey, Allsop and Young JJ).

Regardless, the use of the Claimed Marks to the extent shown in the evidence has several issues I cannot ignore. Firstly, I cannot know what proportion of sales should be attributed to goods specifically bearing either of the Claimed Marks. The Applicant provides only indications of its dominant position in the marketplace as a business and overall figures not specific to sales that attach to goods in relation to which the Claimed Marks have been used. The television commercials at various points are fleeting in the manner they show the Claimed Marks such that there are questions whether they even demonstrate trade mark use; this issue was noted by the Full Court in RB (Hygiene Home). Further, the dates and distribution rates for the airing of the various television commercials are unspecified. I also note that the rate of circulation of the printed marketing material such as catalogues is not explained. Overall, little to no analytics are provided. I also note that the manner or promotion, for example in some of the television commercials, also tends to focus on the product’s functionality alongside use of colour, rather than trade origination even if there is a dual function of the signs shown. This also lessens the effectiveness of the evidence in demonstrating that each of the Claimed Marks act as a badge of origin.
I must acknowledge, as the Applicant submits, that it is possible for a sign to operate as a trade mark even alongside other trade marks.[47] In Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd the High Court commented on situations where several signs are used in combination stating, ‘[w]here there are several words or signs used in combination, the existence of a clear dominant “brand” is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also’.[48] In RB (Hygiene Home a trade mark, used in combination with other trade marks, was found to have been used as a trade mark in part because it was used, ‘to provide a visual prompt to the consumer’.[49] Even noting this aspect of the law concerning trade mark use in terms of shape trade marks, the evidence overall has several gaps already canvassed in terms of the demonstrated volume of trade in goods in relation to which the Claimed Marks have been used. Overall, considering the evidence, I am satisfied that as at the Relevant Date, the Claimed Marks did not in fact distinguish the Designated Goods based on the extent of the Applicant’s use.
[47] [2023] HCA 8, [23]-[25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (‘Self Care’); RB (Hygiene Home) (n 30) [111]; Guylian (n 27) [97]; Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664, [133] (Kenny J); Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited [2014] FCA 373, [245] (Murphy J).
[48] Self Care ibid [25].
[49] RB (Hygiene Home) (n 30) [93].
For completeness, I confirm that even if the Claimed Marks each do have some inherent adaptation to distinguish in the way asserted by the Applicant, such as by some aspect of shape and configuration, or for 2238310 by the combined limitation as to the colour, I am satisfied that, after considering the level of inherent adaptation of each of the Claimed Marks, the extent of the Applicant’s use of the Claimed Marks as established in the evidence filed during these proceedings, and other relevant circumstances, the Claimed Marks do not and will not distinguish the Designated Goods.
Accordingly, the ground of opposition under s 41 has 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 established the ground of opposition under s 41 in respect of both of the Claimed Marks. Accordingly, I refuse registration of trade marks 2238310 and 2238311.
The Opponent has requested costs and it is normal for costs to follow the event. Whilst the Opponent did file additional material which I consider unnecessary and late in the proceedings, it concerned matters of which all parties had knowledge.
There was a joint hearing and I have noted that the evidence across the proceedings for the Claimed Marks has largely been the same. Therefore, I award costs against the Applicant under s 221 in accordance with Scheule 8 to the Regulations, in the same manner as in Hume Industries (Malaysia) Berhard v James Hardie & Coy Pty Ltd.[50]

Benjamin Goldsworthy

Hearing Officer

Delegate of the Registrar of Trade Marks

19 September 2025

[50] [2001] ATMO 78 (Hearing Officer T. Williams).

Schedule 1