Opposition by KJ Ince Pty Ltd to registration of trade mark application number 2310786 (classes 31, 35, 39, 44) – FLOWERS FOR EVERYONE (Composite) - in the name of Flowers For Everyone Sydney Pty Ltd - [2025] ATMO 55

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by KJ Ince Pty Ltd to registration of trade mark application number 2310786 (classes 31, 35, 39, 44) – FLOWERS FOR EVERYONE (Composite) - in the name of Flowers For Everyone Sydney Pty Ltd

Delegate:

Jonathon Galloway

Representation:

Opponent: Jon Gottschall of counsel, instructed by Nakat Law

Applicant: Melissa McGrath of counsel, instructed by BrandU Legal

Decision:

2025 ATMO 55

Trade Marks Act 1995 (Cth) – opposition under s 52 – ss 42(b), 44, 58, 58A and 60 – no grounds established – trade mark to proceed to registration

Background

This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by KJ Ince Pty Ltd (‘Opponent’) to registration of the following trade mark:
Trade mark number: 2310786
Trade mark: (‘Trade Mark’)
Applicant: Flowers For Everyone Sydney Pty Ltd (‘Applicant’)
Filing date: 27 October 2022
Specification: Class 31: Floral decorations (fresh); Floral decorations (natural); Floral decorations (dried); Fresh flowers; Fresh flower arrangements; Natural flowers; Live flowers; Arrangements of dried flowers for decorative purposes; Arrangements of natural flowers; Bouquets of fresh flowers; Bouquets of dried flowers; Cut flowers; Edible flowers, fresh; Flower bulbs; Dried flowers; Wreaths of natural flowers; Flowering plants; Fresh plants; Plants; Potted plants; Seeds for planting; Roses (plants); Plant bulbs; Nursery plants; Natural plants; Live plants; House plants.
Class 35: Online retail services; Wholesale services; Retail services for hampers; Retail services for gift sets; Retail services for gift baskets; Retailing, wholesaling and distributorship services in this class relating to flowers, including roses; advice and consultancy services in this class relating to the foregoing; Retail services; Online retail services; Retailing and wholesaling of flowers, plants, hampers and gift packs, alcoholic beverages, confectionary, giftware; advice and consultancy services in this class relating to the foregoing; Retailing, wholesaling and distributorship services, including online; retailing, wholesale and distributorship services, including online, relating to flowers, plants and garden accessories; advice and consultancy services in this class relating to the foregoing.
Class 39: Flower delivery; Gift delivery; Distribution (delivery) of flowers, including roses; Delivery of goods including flowers, plants, hampers and gift packs, alcoholic beverages, confectionary and giftware.
Class 44: Floral arrangement design services; Flower arrangement design services; Flower arranging; Care of plants; Flower arrangement; florist services including the provision of flowers for ceremonies, events and functions; advice and consultancy services in this class relating to flowers. (‘Applicant’s Goods and Services’).
[1] Unless otherwise stated, each reference to a section or regulation is a reference to the Trade Marks Act 1995 (Cth) (‘Act’) or Trade Marks Regulations 1995 (Cth) (‘Regulations’) respectively.
The Trade Mark was examined as required by s 33 and advertised as accepted for possible registration on 28 March 2023.
On 31 March 2023, the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark. On 1 May 2023, the Opponent filed its Statement of Grounds and Particulars (‘SGP’), later rectified to provide further particulars in respect of the s 58A ground of opposition.
On 16 August 2023, the Applicant filed a Notice of Intention to Defend.
On 23 November 2023, the Opponent filed the following Evidence in Support (‘EIS’):
- Declaration by Michael Ince, director and secretary of the Opponent, made on 14 July 2023, with ‘supporting material’ (‘Ince Declaration’).
On 29 February 2024, the Applicant filed the following Evidence in Answer (‘EIA’):
- Declaration by Ryan Primrose, director of the Opponent, made on 29 February 2024 with exhibits RP-1 to RP-42 (‘Primrose’).
Once the time for filing evidence had ended, both parties requested to be heard by way of video conference. As a delegate of the Registrar of Trade Marks, I heard the matter on 10 February 2025. The Opponent was represented by Jon Gottschall of counsel, instructed by Adam Nakat of Nakat Law. The Applicant was represented by Melissa McGrath of counsel, instructed by Natalie Murray-Jones of BrandU Legal. The parties’ oral submissions were supplemented by written submissions filed prior to the hearing.
The following constitutes my decision on this matter as required by s 55 based on the evidence set out above and the parties’ submissions.
Grounds and Onus
In the SGP the Opponent nominated grounds of opposition under ss 42(b), 43, 44, 58, 58A and 60. The Opponent did not press the s 43 ground of opposition. As such, I find that the Opponent has not satisfied me that s 43 is established to any extent.
The Opponent carries the burden of establishing one or more of the grounds of opposition.[2] The standard of proof is on the balance of probabilities.[3] The date at which the parties’ rights are assessed is 27 October 2022 (‘Relevant Date’), being the filing date of the Trade Mark and the priority date of the Trade Mark 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 Edelman JJ).
EIS
The EIS provides that the Opponent has been using its trade mark ‘Flowers for All’ since 15 April 2015. The EIS attaches various social media posts featuring the Opponent’s trade marks, as well as an image of the Opponent’s webpage sourced from a webpage archive service. In addition, the EIS includes invoices related to the Opponent’s advertising expenditure, photos of the Opponent’s trade marks at various events for which the Opponent supplied flowers and/or services related to the provision of flowers, and customer reviews posted to Google. The EIS also attaches a document titled ‘Application For Variation To Existing Public Space Licence Agreement’ concerning the Opponent’s business premises in Fitzroy, Victoria.
The EIS provides annual trading figures from the financial year ending 30 June 2015 until the financial year ending 30 June 2022, and states that the decrease in revenue from 2019 to 2022 is explained by the economic impact of COVID-19.
EIA
The EIA is primarily directed towards the Applicant’s assertion that its use of the words ‘Flowers For Everyone’ pre-dates the use by the Opponent of its trade marks set out at [17] of this decision.
The EIA provides that the Applicant was founded in 1999. Annexed to the EIA are numerous exhibits, including photographs of flower arrangements located around shopfronts as well as screenshots taken from the Applicant’s webpage using a webpage archive service which span the years 2009 to 2022. The EIA also includes advertisements used on various Australian radio stations and television programs, which include the words ‘Flowers For Everyone’. The EIA provides the Applicant’s advertising expenditure between the years 2016 to 2023, and declares that the Applicant’s revenue has been ‘consistently in the millions of dollars annually from at least 2016 to 2022’.[4]
[4] Primrose [22].
Discussion
Section 44 relevantly provides:
44 Identical etc. trade marks
(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:
(a) the applicant’s trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; 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.
(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a) it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
In order to establish the ground of opposition under s 44, the Opponent must identify a trade mark which is registered or pending registration, in the name of a person other than the Applicant, which has an earlier priority date than the Relevant Date, is substantially identical with, or deceptively similar to, the Trade Mark, and is registered in respect of goods or services which are similar and/or closely related to the Applicant’s Goods and Services.
The SGP provides that the Opponent relies on the following trade marks in respect of this ground of opposition:
Trade mark number: 2263688
Trade mark:
(‘Composite Mark’)
Priority date: 14 April 2022
Goods and Services:
Class 31: Arrangements of dried flowers for decorative purposes; Arrangements of natural flowers; Bouquets of dried flowers; Bouquets of fresh flowers; Cut flowers; Dried flowers; Flower bulbs; Edible flowers, fresh; Flower seeds; Flowering plants; Flowers, dried, for decoration; Flowers, natural; Fresh flower arrangements; Fresh flowers; Gilded flowers; Live flowers; Natural flowers; Wreaths of natural flowers.
Class 35: Retail sale of natural and synthetic flowers and flower arrangements.
Class 39: Flower delivery.
Class 44: Flower arranging; Flower arrangement design services; Rental of flower arrangements; Rental of flowers; Rental of natural and synthetic flower arrangements and indoor plants.
Trade mark number: 2263689
Trade mark:
Flowers For All (‘Word Mark’)
Priority date: 14 April 2022
Goods and Services:
Class 31: Floral decorations (natural); Floral decorations (fresh); Floral decorations (dried); Arrangements of dried flowers for decorative purposes; Arrangements of natural flowers; Bouquets of dried flowers; Bouquets of fresh flowers; Cut flowers; Dried flowers; Edible flowers, fresh; Flower bulbs; Flower seeds; Flowering plants; Flowers, dried, for decoration; Flowers, natural; Fresh flower arrangements; Fresh flowers; Gilded flowers; Live flowers; Natural flowers; Wreaths of natural flowers.
Class 35: Retail sale of natural and synthetic flowers and flower arrangements.
Class 39: Flower delivery.
Class 41: Flower shows.
Class 44: Floral arrangement design services; Floral display hire services; Flower arrangement design services; Flower arranging; Rental of flower arrangements; Rental of flowers
I confirm that the Composite Mark and the Word Mark have an earlier priority date than the Relevant Date.
Substantial Identity
I will now consider whether the Trade Mark is substantially identical or deceptively similar to the Composite Mark or the Word Mark, I note that the Word Mark is wholly contained in the Composite Mark and both have various claims related to the provision of flowers. Rather than consider each trade mark in turn, I will begin with a consideration of the Word Mark.
Whether two trade marks are substantially identical is determined on a side-by-side comparison having regard to the essential features of the trade mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[5] In consideration of the Word Mark and the Trade Mark, I note that these two trade marks comprise three words and share the words ‘FLOWERS FOR’. However, there is a difference in the third word of each mark – namely, the word ‘All’ in the Word Mark and ‘Everyone’ in the Trade Mark. This creates an aural and visual difference that is sufficient to differentiate the trade marks on a side-by-side comparison. I am satisfied that there is not a total impression of resemblance between the Trade Mark and the Word Mark and therefore they are not substantially identical. I turn now to consider whether the Trade Mark is deceptively similar to the Word Mark.
[5] Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [12] (Windeyer J).
Deceptive Similarity
Section 10 defines ‘deceptive similarity’ in the following terms:
For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
The test for assessing deceptive similarity was set out by Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd:
The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [mark].[6]
[6] Ibid [13].
In determining whether two trade marks are deceptively similar, a mere possibility of confusion is not enough. There must be a real likelihood that some people will wonder or be left in doubt about whether the goods come from the same source.[7] The focus of assessing deceptive similarity is in evaluating the effect or impression produced on the mind of potential customers.[8] The estimation of the effect or impression of the trade mark requires an allowance for the imperfect recollection a person may have of the registered trade mark in determining whether use of another trade mark is likely to deceive or cause confusion.[9] The impression comes from judging the trade marks as whole, having regard to the look, sound and ideas conveyed by the trade marks.[10]
[7] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [4] (Kitto J).
[8] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [28] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).
[9] Crazy Ron’s Communications Pty Limited v Mobileworld Communications Pty Limited [2004] FCAFC 196, [77] (Moore, Sackville and Emmett JJ).
[10] Blend A/S v Barefoot Dreams, Inc. [2024] ATMO 216, [17] (Hearing Officer Lyons).
The Opponent asserts that the trade marks convey similar ideas and claims that the shared use of the words ‘Flowers for’ in each trade mark creates aural and visual similarities.
When the trade marks are considered as wholes, it is apparent that the final word of the Trade Mark and the Word Mark are aurally different. The final word in the Word Mark is ‘All’ which is a three letter word. In contrast, the final word of the Trade Mark, ‘Everyone’ is made up of eight letters. These are not words which are prone to confusion based on aural similarity. They sound distinctly different, and I consider that the likelihood of confusion between them is diminished because of the clear aural difference. The words ‘All’ and ‘Everyone’ lack phonetic resemblance and are unlikely to be mispronounced.[11] In addition, the words ‘All’ and ‘Everyone’ differ in their number of syllables. Therefore, I consider that the aural difference between the words ‘All’ and ‘Everyone’ weighs against a finding of deceptive similarity.
[11] Singtel Optus Pty Ltd v Optum Inc [2018] FCA 575, [138] (Davies J).
When the Trade Mark and the Word Mark are considered as wholes, the words ‘All’ and ‘Everyone’ create a visual difference. I note that the words which comprise the Trade Mark are stacked on top of each other with an incomplete flower device spanning from top to bottom while the words in the Word Mark are presented in plain text alongside one another. However, I consider the orientation in the Trade Mark amounts to relatively inconsequential visual difference. The main visual points of difference lie in the contrast of the words ‘All’ and ‘Everyone’, as well as the incomplete flower device which spans the Trade Mark from top to bottom and the absence of any device in the Word Mark. The words ‘All’ and ‘Everyone’ do not share any resemblance in terms of their length, or the letters which comprise the words. Therefore, when considered as wholes, the trade marks contain visual dissimilarities.
In considering the idea of the trade marks, I note in KJ Ince Pty Ltd[12] the delegate made the following observation:
The [Word] Mark as a whole appears to have a fairly obvious ordinary signification in respect of the Applicant’s Goods and Services, that is, that they concern the goods of flowers for all people, or the provision of services concerning flowers to all people. The ‘For All’ component of the [Word] Mark has an apparent meaning similar to the relatively well-known phrase that concludes the Pledge of Allegiance (to the flag of the United States of America), being, ‘with liberty and justice for all’; this is undoubtedly a reference to ‘all people’ (of the United States, presumably).[13]
[12] KJ Ince Pty Ltd [2023] ATMO 139 (Hearing Officer Wilson) (‘KJ Ince’).
[13] Ibid [18].
I agree with the delegate’s view that the Word Mark has a ‘fairly obvious’ ordinary signification. In my view the ordinary signification of the words that comprise the Trade Mark convey a similar idea, being the provision of flowers or flower related services for every person. Therefore, the Trade Mark and the Word Mark share a degree of ideational similarity.
However, ideational similarity itself is not always enough to establish deceptive similarity. In Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd, the High Court considered whether the trade marks ‘RAINMASTER’ and ‘RAIN KING’ were deceptively similar and the extent to which the shared idea was likely to contribute to a finding of deceptive similarity. The High Court stated:
The two words are so unlike to the eye and to the ear that counsel for the appellant was forced to rely on the likelihood of deception arising from the two words conveying the same idea of the superiority or supremacy of the article as a mechanism for making a spray similar to falling rain or artificial rain as it was called during the argument. But it is obvious that trademarks, especially word marks, could be quite unlike and yet convey the same idea of the superiority or some particular suitability of an article for the work it was intended to do. To refuse an application for registration on this ground would be to give the proprietor of a registered trademark a complete monopoly of all words conveying the same idea as his trademark. The fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them, although this fact could be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive.[14]
[14] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd [1952] HCA 15, [3] (Dixon, Williams and Kitto JJ).
In Telstra Corporation Limited v Phone Directories Company Pty Ltd the Full Federal Court stated:
There are statements in some of the authorities that, if read in isolation, might suggest that the idea of a mark can only be considered once visual or aural similarity is found. For instance, in Sports Café Ltd v Registrar of Trade Marks [1998] FCA 1614; (1998) 42 IPR 552 (“Sports Café Ltd”) at 557, the Full Court of this Court said that:
the fact that two marks convey a common idea becomes relevant only if the marks themselves look or sound alike. Commonality of idea might then tip the balance in favour of a finding that the likeness is deceptive.
We consider that the point that the Full Court was expressing in this passage was that ideational similarity is not sufficient independently of a consideration of whether the marks look or sound alike.[15]
[15] [2015] FCAFC 156, [210]–[211] (Besanko, Jagot and Edelman JJ) (emphasis in original).

Although the Trade Mark and the Word Mark share similar ideas, this similarity does not outweigh the aural and visual differences discussed above. The look and sound of the Trade Mark is sufficiently different to the Word Mark when considered as a whole. Further, to restate the finding in KJ Ince, the expression ‘Flowers for All’ is ‘likely to strike the listener as odd’, whereas ‘Flowers for Everyone’ is more likely to be used as an expression ‘in common parlance in Australia today’.[16] This is another factor that weighs against a finding of deceptive similarity as the comparison is between a phrase that is likely to strike the listener as odd and one that is considered to be a more apt or normal expression in relation to the goods and services. The similar ideas conveyed by the trade marks do not outweigh the aural and visual differences that are present. This is because the idea in the Trade Mark and the Word Mark is plainly indicating the offering of flowers or the provision of services concerning flowers, in respect of goods and services that are or relate to the provision of flowers.
[16] KJ INCE (n 12) [22].
For the reasons set out above, I am satisfied that the Trade Mark is not deceptively similar to the Word Mark.
I note that the Composite Mark contains additional elements, being an encircled letter ‘F’ and the words ‘Floral design’. I consider that the additional elements in the Composite Mark provide further aural and visual points of difference when compared to the Trade Mark. Because of these additional elements and my reasons set out above in respect of the Word Mark, I am satisfied the Trade Mark is not substantially identical with, or deceptively similar to, the Composite Mark.
Accordingly, I find that the Opponent has not established a ground of opposition under s 44.
Section 58A
Section 58A relevantly provides:
(1)This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:
(a) subsection 44(4); or
(b) a similar provision of the regulations made for the purposes of Part 17A.
…
(2) The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:
(a) first used the similar trade mark in respect of:
(i) similar goods or closely related services; or
(ii) similar services or closely related goods;
before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and
(b) has continuously used the similar trade mark in respect of those goods or services since that first use.
The Applicant contends that this ground of opposition is not available to the Opponent as the acceptance of the Trade Mark was not because of the provisions of s 44(4). This literal interpretation of the operation of the s 58A ground of opposition is not a settled view. It has been suggested that a broader interpretation of s 58A, wherein s 44(4) might be established by an applicant during opposition proceedings, is more closely aligned with the intention of the provision.[17] However, consideration of whether s 58A is a ground of opposition available to the Opponent in the current matter is not necessary. As I have already found above, the Trade Mark is not substantially identical with, or deceptively similar to, either of the trade marks relied on by the Opponent. There is therefore no need to consider whether the provisions of s 44(4) apply to the Trade Mark, and therefore the ground of opposition under s 58A is not enlivened.
[17] K-Tec, Inc v Healthy Foods, LLC [2016] ATMO 4, [16]-[22] (Hearing Officer Richards).
Accordingly, I find that the Opponent has not established a ground of opposition under s 58A.
Section 58
Section 58 provides:
Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Under this ground of opposition the Opponent must establish that a person other than the Applicant has made use of the same or a substantially identical trade mark[18] prior to the filing date of the application or any use by the Applicant, in relation to goods/services that are the same kind of thing as the goods and services of the Trade Mark.[19]
[18] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [62] (Gummow J).
[19] Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184, [89] (Allsop J).
As discussed in my reasoning under s 44, the Trade Mark and the Opponent’s trade marks are not substantially identical. As the Opponent has failed to establish that the Trade Mark and the Opponent’s trade marks are substantially identical, the Opponent is not able to establish the ground of opposition under s 58.
Section 60
Section 60 relevantly provides:
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first- mentioned trade mark would be likely to deceive or cause confusion.
To establish this ground of opposition, the Opponent must demonstrate:
- A reputation was acquired by another trade mark in Australia before the Relevant Date; and
- That because of the reputation of the other trade mark, use of the Trade Mark would be likely to deceive or cause confusion.
The SGP particularises this ground of opposition as follows:
The trade mark/s have been used before the priority date of the trade mark being opposed.
KJ Ince Pty Ltd as trustee for the Ince & Lu Family Trust own Registered Trade Marks 2263688 (Floral Design Logo) and 2263689 (Brand Name Flowers for All), both of which are used continuously in conducting their business “Flowers For All”, in which the following goods and services are provided from their flower shop and website without limitation; sale and delivery of flowers per order and floral design, selling and delivering of flowers, plants, floral designs, bouquets, curating and designing the floral arrangements for intimate to large scale events, etc (the list of classes for which each trademark has been registered have been attached hereto.
Reputation
Reputation in the context of s 60, refers to the ‘recognition of the [mark] by the public generally’.[20] Reputation is not assumed, it must be established by the Opponent as a matter of fact.[21]
[20] McCormick & Co Inc v McCormick [2000] FCA 1335, [81] (Kenny J) (‘McCormick’).
[21] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J) (‘ConAgra’).
The relevant reputation must be amongst a significant or substantial number of persons.[22] What amounts to a significant or substantial number of people is informed by the relevant market and the nature of the goods or services in question.[23]
[22] Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).
[23] Le Cordon Bleu Bv v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).
There are a number of factors that are relevant in establishing reputation, such as demonstrating that a large number of people have been exposed to the trade mark,[24] evidence that demonstrates high sales volumes, and expenditure in relation to advertising and promotion of goods bearing the trade mark.[25] There are also qualitative aspects to the reputation of a trade mark, these concern ‘the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally’.[26]
[24] ConAgra (n 23) [118].
[25] McCormick (n 22) [86].
[26] Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [83] (O’Bryan J).
The Opponent’s written submissions do not address the s 60 ground of opposition. At the hearing, counsel for the Opponent relied on the fact that the Opponent’s trade marks had a priority date of 14 April 2022 which is earlier than the Applicant’s alleged date of first use of the Trade Mark, being October 2022. Further, counsel for the Opponent sought to rely on the promotional material and advertising expenditure, as well as the sales figures set out in the EIS. It was also submitted that the evidence showed the Opponent’s trade marks had strong customer approval, which leads to return trade.
The EIS is a declaration with attachments that were originally prepared in respect of revocation proceedings relating to the Word Mark. It is not tailored to address the s 60 ground of opposition in the current matter. Nevertheless, the EIS does provide some relevant information. The Opponent’s promotional expenditure across its own website and ‘google boosting’ is declared as an annual figure which is a relatively significant sum. The sales figures show consistent increases on an annual basis from 2015 to 2018 with a decrease from 2019 which the Opponent attributes to the impact of COVID-19. The Opponent declares that it has used the Word Mark since 15 April 2015 in operating from St Vincent’s Private Hospital, with a store front that is visible to oncoming traffic from Melbourne CBD. The EIS declares that the Opponent has received 173 customer reviews on Google.
The EIS does not express how the advertising expenditure relates to either or both of the Opponent’s trade marks. In addition, the sales figures are expressed as an annual sum and likewise do not distinguish between the Opponent’s trade marks. Further, there is no information regarding the number of consumers or average cost of the goods and services offered under the Opponent’s trade marks, which could contextualise the relevance of the Opponent’s sales figures.
The Opponent has not given an indication of the number of consumers that may be aware of the Word Mark, beyond the assertion that the Opponent’s shopfront is exposed to a high volume of foot traffic and the evidence of Google reviews. I do not consider that the volume of Google reviews is sufficient to demonstrate that either of the Opponent’s trade marks have had wide exposure. Regardless, the EIS only attaches one customer review, which itself is undated and insufficient to support a finding that either of the Opponent’s trade marks are recognised by the relevant market.
In respect of the Composite Mark, the EIS does not provide sufficient evidence to establish a reputation. The Ince Declaration does not directly refer to the Composite Mark, and the evidence in respect of the Composite Mark generally is confined to a few social media posts, without any supporting statements.
Overall, the evidence relating to advertising expenditure and sales revenue does not contain sufficient detail to determine how those figures may be attributed to one or both of the Opponent’s trade marks. That is, even if the advertising expenditure and sales revenue supported a finding of reputation, the evidence does not clearly set out how these figures were achieved in respect of each of the Opponent’s trade marks nor does it explain on what goods or services these marks were applied to.
Given my finding that the Opponent’s evidence is not sufficient to establish a reputation in either of its relied upon trade marks, it is not necessary to consider whether use of the Trade Mark would be likely to cause deception or confusion on the basis of an alleged reputation in either of the trade marks relied on by the Opponent.
Accordingly, I find that the Opponent has not established a ground of opposition under s 60.
Section 42(b)
Section 42(b) relevantly provides:
An application for the registration of a trade mark must be rejected if:
(a) …
(b) its use would be contrary to law.
The SGP particularises this ground of opposition as follows:
Tort of passing off; Competition and Consumer Act 2010.
The Opponent’s written submissions do not elaborate on this ground of opposition.
At the hearing, counsel for the Opponent focused his submissions on s 18 of the Australian Consumer Law (‘ACL’) of Schedule 2 of the Competition and Consumer Act 2010 (Cth) as the basis for this ground of opposition.
In order to establish an opposition under s 42(b), the Opponent must demonstrate on the balance of probabilities that use of the Trade Mark would, as opposed to could, contravene s 18 of the ACL.[27]
[27] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).
The test for conduct contravening the ACL is stricter than the test under s 60.[28] Given I am not satisfied that the ground of opposition under s 60 has been established, it follows that in consideration of the stricter test to be applied under the ACL, I am likewise not satisfied that the Applicant’s use of the Trade Mark would be likely to mislead or deceive or amount to a false or misleading representation under the ACL. Where use of a trade mark does not contravene s 18 of the ACL it will not amount to the tort of passing off.[29]
[28] Monster Energy Company v Mixi Inc [2020] FCA 1398, [33] (Stewart J).
[29] Hachette Filipacchi Presse v KIND TO ME Pty Ltd [2024] ATMO 204, [96]-[97] (Hearing Officer Robertson).
The ground of opposition under s 42(b) is not established.
Decision
Section 55 relevantly provides:
(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
The Opponent has not established any ground of opposition. Accordingly, trade mark application 2310786 may proceed to registration one month from the date of this decision.
Should the Registrar be served with a notice of appeal before registration of the Trade Mark, I direct that the registration of the Trade Mark not occur until the appeal has been decided or discontinued, and that any disposition of the application be in accordance with the Court’s orders or direction.
Costs
Costs generally follow the event, and given there is no apparent reason to depart from this principle I award costs against the Opponent under s 221 in accordance with Schedule 8 of the Regulations.
Jonathon Galloway
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
~~<DD Month YYYY>~~12 March 2025

Opposition by KJ Ince Pty Ltd to registration of trade mark application number 2310786 (classes 31, 35, 39, 44) – FLOWERS FOR EVERYONE (Composite) - in the name of Flowers For Everyone Sydney Pty Ltd

[2025] ATMO 55

12 March 2025