Opposition by Rhino Rack Australia Pty Limited to registration of trade mark application number 2225194 (class 12) -
[2025] ATMO 121
•23 June 2025
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Rhino Rack Australia Pty Limited to registration of trade mark application number 2225194 (class 12) - RHINO - in the name of Rhino Manufacturing Limited
Delegate: | Timothy Brown |
Representation: | Opponent: Jessie McKenna of Counsel, instructed by IP Solved Applicant: Melissa McGrath of Counsel, instructed by By George Legal |
Decision: | 2025 ATMO 121 Trade Marks Act 1995 (Cth) – opposition under section 52 – s 44 considered – honest concurrent use, prior use and other circumstances considered – s 44 established – trade mark refused |
Background
This decision concerns an opposition brought by Rhino Rack Australia Pty Limited (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth)[1] to the registration of the following trade mark:
Trade Mark Number: 2225194
Trade Mark: RHINO (‘Trade Mark’)
Owner: Rhino Manufacturing Limited (‘Applicant’)
Priority Date: 11 November 2021
Goods:Class 12: Mudguards; Mudguards for vehicles; Splash preventers (mudguards) for vehicles; Splash guards (mudguards) for vehicles; all of the foregoing being for trailers, heavy trucks and heavy trailers attached to trucks; none of the aforementioned being for use on cars, utes or vans.; all of the foregoing being for trailers, heavy trucks and heavy trailers attached to trucks; none of the aforementioned being for use on cars, utes or vans. (‘Applicant’s Goods’)
Endorsement: Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.
[1] Unless stated otherwise, 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’).
The application to register the Trade Mark was examined and its acceptance was advertised for opposition on 9 March 2023.
The Opponent filed a Notice of Intention to Oppose on 20 March 2023, followed by a Statement of Grounds and Particulars (‘SGP’) on 20 April 2023. The Applicant filed a Notice of Intention to Defend on 22 June 2023.
The Opponent filed evidence in support (‘EIS’) of its opposition on 26 September 2023. The parties then entered a cooling off period on 19 December 2023. The cooling off period ended on 9 February 2024. The Applicant filed evidence in answer (‘EIA’) on 9 May 2024. The Opponent filed evidence in reply (‘EIR’) on 9 July 2024.
Following the end of the evidence stage, the parties requested a hearing. The Opponent filed written submissions of 10 March 2025, and the Applicant filed written submissions on 17 March 2025. The matter was heard before me, a delegate of the Registrar of Trade Marks (‘Registrar’), on 24 March 2025, by video conference. The Opponent was represented by Jessie McKenna of Counsel with instruction from Brian Shortt of IP Solved. The Applicant was represented by Melissa McGrath of Counsel with instruction from Natalia Blecher and Joel Masterson of By George Legal. Also in attendance was Harry Crowe of By George Legal, Jullion Parker and Angela Wray of PIP Law (the Applicant’s legal representatives in New Zealand) as well as William Samuel of the Applicant.
Grounds, Onus and relevant Date
The nominated grounds of opposition are ss 42(b), 43, 44, 58, 58A, 60 and 62A. The Opponent did not press ss 58 and 58A.
The Opponent bears the onus of establishing the ground of opposition.[2] The required standard of proof is on the balance of probabilities.[3] The date at which the rights of the parties will be determined is the priority date of the Trade Mark, 11 November 2021 (‘Relevant Date’).
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] ((Keane CJ, Stone and Jagot JJ).
[3] Pfizer Products Inc v Karam (2006) FCA 1663, [6]-[26] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
Evidence
The following evidence was filed:
| Declarant and Position | Date | Annexure or Exhibits |
| EIS | ||
| Nicholas Clarke, General Manager – Product Development of the Opponent (‘Clarke’) | 26 September 2023 | 1 to 20, including Confidential Exhibits 11 and 20 |
| EIA | ||
| Harry Crowe, Lawyer at By George Legal (‘Crowe’) | 8 May 22024 | HC-1 to HC-4 |
| William David Samuel, General Manager of the Applicant (‘Samuel’) | 9 May 2024 | WS-A to WS-R, including Confidential Exhibits WS-A, B and C. |
| EIR | ||
| Chris Radford, Head of Sales and General Manager of the Opponent (‘Radford’) | 5 July 2024 | 1 to 4 |
Opponent
Clarke exhibits the declaration of Ernesto Fernandez, Marketing and Business Developer Manager of the Applicant, dated 25 February 2013 (‘Fernandez’) with Exhibits EF-1 to EF-7.
Mr Clarke declares that the Opponent is a manufacturer of automotive products founded in 1992 in Australia. I note that Exhibit 2 of Fernandez indicates that only a business name was registered in 1992 and that the Opponent was subsequently incorporated on 15 November 2006.[4] According to Clarke, the trade mark, RHINO-RACK, was first used in Australia in 1992 by a predecessor in title. The predecessor in title appears to be the company Fetovu Pty Ltd (‘Fetovu’). Fernandez further states the trade mark was adopted and used by the Opponent on 13 March 1992.
[4] Fernandez EF-2.
The Opponent is the owner of a number of registered trade marks, relevantly:
| Trade Mark No. | Trade Mark | Priority Date | Class/es |
| 603068 | (‘068 Mark’) | 25 May 1993 | Class 12: metal and plastic roof racks for use on vehicles |
| 1347991 | (‘Opponent’s Composite Mark’) | 28 August 2009[5] | 6, 12 and 22[6] |
| 1959310 | RHINO-RACK (‘Opponent’s Word Mark’) | 3 October 2018 | 6, 12 and 22[7] |
| 1959891 | RHINO-RACK (‘891 Mark’) | 4 October 2018 | 8, 18, 20, 25 and 35[8] |
[5] Convention priority claimed on basis of European Union Intellectual Property Office trade mark 008516163.
[6] See Schedule A for full specification.
[7] See Schedule B for full specification.
[8] See Schedule C for full specification.
(collectively, ‘Opponent’s Marks’)
The Opponent’s Marks are primarily used in relation various roof top carriers and mounting systems for vehicles. Exhibited to Clarke is a catalogue from 2020/2021 demonstrating the Opponent’s automotive products,[9] which include roof racks, trays and mounts for vehicles, luggage boxes, bike carriers, kayak carriers and various accessories for securing cargo to vehicles.
[9] Clarke Exhibit 3.
According to Clarke, there has been continuous use of the Opponent’s marks by the Opponent and Fetovu since 1992. In support, Clarke exhibits the following evidence of use of the Opponent’s Marks:
Use of the Opponent’s Marks on the Opponent’s Website, (‘Opponent’s website’).[10] Fernandez exhibits screen captures of the Opponent’s website featuring the Opponent’s Marks from 2000 to 2011,[11]and Clarke exhibits use of the Opponent’s Marks on the Opponent’s website in 2001, 2003, and 2009 through to 2020.[12]
Use of the Opponent’s Marks on labels and packaging. Samples of photographs are exhibited to Clarke.[13]
[10] Ibid Exhibits 9 and 13; Fernandez Exhibit EF-6.
[11] Fernandez Exhibit EF-6.
[12] Clarke Exhibit 9.
[13] Clarke Exhibit 6.
Mr Clarke declares that Opponent has promoted the Opponent’s Marks via traditional print media, catalogues, brochures and flyers, the Opponent’s website, television advertisements, events, and trade expos and across various social media platforms. Examples exhibited in Clarke include:
Pages from catalogues from the years 2013, 2015, 2016, 2018, 2019, and 2020.[14]
[14] Ibid Exhibit 12.
Screenshots from the television show All 4 Adventure and Australia by Design, which featured the Opponent’s Marks.[15]
[15] Ibid Exhibit 15.
Use of the Opponent’s Marks on invoices.[16]
[16] Ibid Exhibit 10.
Use of the Opponent’s Marks in promotional videos on YouTube.[17] Clarke also includes screenshots of the Opponent’s Marks from its Facebook account.[18]
Screen captures from third party websites featuring use of the Opponent’s Marks.[19]
Photographs of the Opponent’s Marks at trade shows.[20]
Use of the Opponent’s Marks on stationery and corporate documentation.[21]
Appearances in third party product reviews and news articles. A sample of articles and reviews is exhibited to Clarke.[22]
[17] Ibid Exhibits 16 and 17.
[18] Ibid [40].
[19] Ibid Exhibit 14.
[20] Ibid [42].
[21] Fernandez Exhibit EF-3.
[22] Clarke Exhibit 19.
According to Clarke, goods bearing the Opponent’s Marks have been sold by authorised dealers in Australia. Exhibited to Clarke is a list of some of these authorised dealers,[23] and screen captures from the websites of a selection of authorised dealers.[24]
[23] Ibid Exhibit 7.
[24] Ibid Exhibit 8. See also Fernandez EF4.
Clarke includes the Opponent’s revenue from 2008 to July 2023 for goods sold bearing the Opponent’s Marks.[25] Fernandez also includes sales revenue for the period of 1 July 2001 to 30 June 2002.[26] Also included in Fernandez is the Opponent’s marketing expenditure from 1996 to 2012.[27] The Opponent’s marketing expenditure from 2013 to 2021 is exhibited to Clarke.[28]
[25] Clarke Confidential Exhibit 11.
[26] Fernandez exhibit EF-5.
[27] Ibid EF-7.
[28] Clarke Confidential Exhibit 20.
Radford provides screenshots from various third-party websites claiming to show traders selling accessories for both regular vehicles and heavier motor vehicles.
Applicant
Samuel exhibits a previous declaration of William David Samuel, dated 24 February 2023 (‘Samuel 2’) with Exhibits A to Q. Samuel 2 was filed during the examination stages of the application to register the Trade Mark.
The Applicant was established in 1988 in New Zealand and was acquired by the current owners in 2019. According to Samuel and Samuel 2, the Applicant first used the Trade Mark in Australia in 1994 and has continuously used the Trade Mark since that date. In support, Samuel 2 exhibits invoices featuring the trade mark issued in 1994,[29] and facsimile correspondence between the Applicant and a customer from between 1995 and 1996.[30] Samuel 2 includes a sample of invoices with Australian customers from between 2017 and 2022.[31] Mr Samuel declares that the Applicant uses the Trade Mark in connection with a range of mudguards and pole caps designed for trucks, trailers and heavy vehicles.[32]
[29] Samuel 2 [12] and Confidential Exhibit B.
[30] Ibid.
[31] Ibid Exhibit J.
[32] Samuel 2 [29].
Mr Samuel declares that in 1994, the Applicant was not aware of any businesses or trade marks using the term ‘Rhino’. The Applicant had previously used the Trade Mark in New Zealand and continued using the Trade Mark when it entered the Australian market in 1994.[33] In 2023, the Applicant established an Australian business called Rhino Manufacturing Australia Pty Ltd (‘Rhino Manufacturing Australia’) to import products from New Zealand to Australia.
[33] Samuel [20].
The Applicant promotes the Trade Mark via its website, (‘Applicant’s website’), Google advertisements, trade shows and exhibitions, catalogues and flyers, social media and through direct outreach to customers.[34] An example of a digital newsletter provided by the Applicant is exhibited to Samuel.[35] Also exhibited to Samuel are screenshots of the Applicant’s Facebook account from 2022, 2023 and 2024 showing photos of mudguards featuring the Trade Mark.[36] However, Samuel states that the Applicant does not use Facebook as a primary marketing tool because most Facebook users are members of the general public rather than truck manufacturers. A screenshot of the Applicant’s LinkedIn profile is also included in Samuel.[37]
[34] Samuel [34].
[35] Samuel WS-F.
[36] Ibid WS-J.
[37] Ibid WS-K.
Samuel explains that the Applicant’s website diverts its Australian customers to A screenshot from is included in Samuel.[38] According to Samuel, Australian visitors to that website account for ‘41% of all visitors’.[39]
[38] Samuel WS-H.
[39] Samuel [40] and Exhibit WS-I.
Samuel includes the revenue figures from the 2017/2018 financial year to the 2023/2024 financial year.[40]
Samuel provides a list of the Applicant’s customers,[41] and notes that its customers are specialist truck manufacturers, heavy trailer manufacturers, and service and repair workshops for these vehicles. Samuel opines that the Applicant’s customers are not the general purchasing public. Crowe also includes a list of businesses said to sell goods similar to the Applicant in Australia.[42]
Discussion and Reasons
[41] Samuel Exhibit WS-E.
[42] Crowe Annexure HC-2.
Section 44
(1)Section 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.
…
(3) If the Registrar in either case is satisfied:
(a)that there has been honest concurrent use of the 2 trade marks; or
(b)that, because of other circumstances, it is proper to do so
the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
(4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:
(a) beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b) ending on the priority date for the registration of the applicant's trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
In order to succeed under this ground of opposition, the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, in the name of person other than the Applicant, in respect of goods that are similar to, or services that are closely related to the Applicant’s Goods.
The Opponent relies on the Opponent’s Marks as the basis for this ground of opposition. I note that trade mark registration number 603068 (‘068 Mark’) was not referenced in the SGP as a basis for this ground of opposition. The 068 Mark was first referenced in Clarke as one of the trade marks owned by the Opponent.[43] Generally, it would be appropriate for the Opponent to amend its SGP accordingly in these circumstances. Failing to do so may result in the delegate not considering the material excluded from the relevant particulars of the SGP. Whether to consider this aspect of the opposition depends on whether it has been fairly contested between the parties.[44] I note that the 068 Mark was identified in the Applicant’s EIA,[45] but that the Applicant has not responded to the existence of, or otherwise referenced, the 068 Mark. It is debatable whether this aspect of the opposition has been fairly contested. However, as will become apparent, the 068 Mark did not play a decisive role in this opposition. Accordingly, for clarity I note that I have not considered the 068 Mark as a basis for s 44 and only referenced that trade mark in the context of the Opponent’s EIS.
[43] Clarke [7].
[44] Halal Certification Authority Pty Limited v Flujo Sanguineo Holdings Pty Limited [2023] FCAFC 175, [141]-[144] (Nicholas, Burley, and Cheeseman JJ).
[45] Samuel Exhibit WS-Q.
I note that the remaining Opponent’s Marks each have an earlier priority date and are held in the name of a person other than the Applicant.
Comparison of Goods
Section 14 provides:
(1) For the purposes of this Act, goods are similar to other goods:
(a) if they are the same as the other goods; or
(b) if they are of the same description as that of the other goods.
(2)For the purposes of this Act, services are similar to other services:
(a) if they are the same as the other services; or
(b) if they are of the same description as that of the other services.
Whether goods are of the same description depends on ‘whether the goods belong to the same or different trades’[46]. This is determined through consideration of a number of factors, including the nature of the goods,[47] the purpose for which the goods will be used,[48] and the trade channels through which the goods are bought and sold.[49] Any single factor is not conclusive.[50] In Reckitt and Colman (Australia) Limited v Boden, Dixon J stated:
What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business.[51]
[46] Re Ladislas Jellinek for the Registration of a Trade Mark (1947) 63 RPC 59, 64 (Romer J).
[47] Ibid.
[48] Ibid.
[49] Ibid; see also: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [5] (Kitto J) (‘Southern Cross’).
[50] Southern Cross (n 49) [5].
[51] (1954) 70 CLR 84, 94.
Overall, the question is to be determined from a commercial point of view having regard to fair and notional use of goods or services.[52]
[52] Sam Remo Macaroni Co Pty Ltd v Sam Remo Gourmet Coffee Pty Ltd [2000] FCA 1842, [35] (Goldberg J).
The Applicant’s Goods cover mudguards, splash guards and splash preventors, specifically for ‘trailers, heavy trucks and heavy trailers attached to trucks’. The specification explicitly excludes use of the goods on ‘cars, utes or vans’.
From the outset, I do not consider there to be any similarity between the Applicant’s Goods and those of 891 Mark. The goods of the 891 Mark can be characterised generally as hand tools in class 8, bags, and luggage in class 18, fastening devices for use with vehicles and storage boxes, clothing in class 25 and retail services for these goods in class 35. Apart from the connection of some of these goods with motor vehicles, there is no similarity in the nature and purpose of these products and the Applicant’s Goods. Nor is there any evidence before me that indicates these goods are offered through the same trade channels or that they are derived from similar traders.
The goods of the Opponent’s Composite Mark and Opponent’s Word Mark include roof racks for vehicles and a variety of what is described as ‘automotive spare parts and accessories’, including, amongst other goods, trailers, mounting brackets for vehicles, cargo and luggage carriers for vehicles and trailers, transmission coolers, and vehicle hood shades.
The Opponent submits that the goods are of the same description for the following reasons:
The Opponent’s goods and the Applicant’s Goods can both be characterised as vehicle parts and accessories.
Vehicles, such as trailers and semi-trailers, use both the Opponent’s goods and mudflaps.
There is an overlap in market for the Applicant’s Goods and the Opponent’s goods. The Opponent points to Exhibits 1 and 2 of Radford, which include screenshots from third party traders showing unimogs with mudflaps, splash guards and roof racks.
The Applicant submits that the customers of the Opponent’s goods and the Applicant’s Goods are not similar. Further, the Applicant submits that the trade channels are different, and that the Applicant’s Goods are generally purchased by commercial entities, or otherwise specialised customers that need to be aware of the specifications of their vehicle, its load and how the vehicle operates in order to comply with legal requirements. Samuel further notes that mudguards are legal requirement for trucks and trailers,[53] and that the Opponent’s goods are subject to no such requirements.
[53] Samuel [84].
Although both the Opponent’s goods and Applicant’s Goods are used in relation to vehicles, they are not utilised for the same purpose, nor could they be said to serve the same function. Mudguards and splash preventors protect a vehicle against dirt, mud, debris, and environmental factors. The majority of the Opponent’s goods are for carrying or securing luggage to vehicles, or, in the case of trailers, for transporting goods.
I also accept that heavy vehicles such as semi-trailers, prime movers and trucks are a different class of vehicles to cars, utes and other lighter automotives. Crowe adduces evidence showing the websites of third party truck parts suppliers,[54] noting the majority do not provide parts and accessories for cars. Whilst this may be the case, the Applicant’s position only emphasises the differences between its goods and the parts of cars, utes, and other light weight vehicles. However, the Opponent’s goods are not limited to certain types of vehicles, and notionally include goods for the same heavy vehicles, trucks and trailers specified in the Applicant’s Goods. For example, the Opponent’s goods specifically include ‘trailers for vehicles’ and various accessories for trailers. This is also evident in Annexure HC-3 of Crowe, which includes screenshots of traders selling ‘truck parts’ and ‘trailer parts’. Goods falling under these descriptions are specified in both the Applicant’s Goods and the goods specified in the Opponent’s Word Mark and Opponent’s Composite Mark.
[54] Crowe Annexure HC-3.
I also consider there to be a similarity in the nature of the goods. Despite the Applicant’s submissions to the contrary, I consider the Opponent’s goods and the Applicant’s Goods to be vehicle parts and accessories. The respective goods are attachments to vehicles, and there is a real risk that goods bearing the trade marks would be viewed by consumers on the same vehicle. For example, if a trade mark was used on mudguards for trailers and a similar trade mark was used on trailers, I would consider there to be a real tangible danger of confusion.
For these reasons I am satisfied that the Applicant’s Goods and the goods of the Opponent’s Word Mark and the Opponent’s Composite Mark in class 12 are goods of the same description.
Comparison of Marks
The representations of the Trade Mark and the relevant Opponent’s Marks are reproduced below:
| Trade Mark | Opponent’s Marks |
| RHINO | RHINO-RACK |
Whether two trade marks are substantially identical is determined by a side by side comparison having regard to the essential features of the trade marks and the total impression of resemblance or dissimilarity that emerges from the comparison.[55] The Opponent did not submit that the trade marks are substantially identical. I am also satisfied that the trade marks are not substantially identical noting the presence of the additional word element ‘RACK’ and the hyphenation of the Opponent’s Marks, as well as the additional device element in the Opponent’s Composite Mark. When compared side by side, the trade marks do not have an overall impression of resemblance.
[55] Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [12] (Windeyer J).
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 approach for assessing whether trade marks are deceptively similar was outlined by Windeyer J in Shell Company 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].[56]
[56] Ibid [13].
The basis for any deception or confusion is the impression or recollection of the trade marks that is carried away and retained by the ordinary consumer.[57] Accordingly, an allowance is made for imperfect recollection of the trade marks.[58] The impression comes from the trade marks in their entirety,[59] and is informed by the look, sound and ideas conveyed by the trade marks.[60]
[57] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ).
[58] Crazy Ron's Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [77] (Moore, Sackville, and Emmett JJ).
[59] Clarke v Sharp (1898) 15 RPC 141, 146 (Byrne J).
[60] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).
For trade marks to be considered deceptively similar there must be a real and tangible danger of deception or confusion occurring.[61] This will be the case where there is a real likelihood that an ordinary person would be caused to wonder whether the goods or services come from the same trade source.[62]
[61] Southern Cross (n 49) 595 ; Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French J).
[62] Ibid.
The Opponent submits that the trade marks are deceptively similar because:
The word ‘RHINO’ is a first word of each mark and the distinctive elements of the trade marks ordinary consumers are likely to recall;
The additional word ‘-RACK’ is descriptive of the goods claimed by the Opponent’s Marks;
The device of a rhino in the Opponent’s Composite Mark only places further emphasis on the word ‘RHINO.’
Conversely, the Applicant submissions focus on the impact of the additional elements and contend that the additional word ‘-RACK’ should not be disregarded, that the hyphenation and alliteration encourages consumers to remember the trade mark in its entirety. Similarly, the Applicant contends that consumers are not likely to dismiss the device elements, and that the depiction of a rhino does not illustrate a ‘Rhino-Rack.’
There are clear aural and visual similarities between the trade marks. RHINO is the sole element of Trade Mark whilst the Opponent’s Marks consist of the words RHINO-RACK, and in the case of the Opponent’s Composite Mark, a device depicting a rhino. As the Opponent notes, the word ‘RHINO’ is the leading element of each trade mark. Whilst I acknowledge the presence of ‘-RACK’ and the hyphenation of the Opponent’s Marks, these elements do not change the overall idea conveyed by the Opponent’s Marks. ‘RACK’ is directly descriptive in the context of the Opponent’s goods, and whilst its presence is not likely to be dismissed by consumers, it is far less memorable aurally and visually than the ‘RHINO’ element of the Opponent’s Marks.
Regarding the Opponent’s Composite Mark, the rhino device, whilst memorable, only serves to further reinforce the rhino impression conveyed by the trade marks. The Trade Mark, itself, lacks any further elements or stylised aspects that could serve to further differentiate the trade marks.
Although the Opponent’s Word and Composite Mark each contain additional elements, ‘RHINO’ the sole element of the Trade Mark and it retains its identity within the Opponent’s Marks. Even allowing for imperfect recollection, in my view, the lasting impression consumers would retain from perceiving the trade marks is the impression of a rhino.
For these reasons, I am satisfied that there is a real and tangible danger of confusion between the Trade Mark and the Opponent’s Word and Composite Marks. Accordingly, the Opponent has established a prima facie ground of opposition under s 44(1). I will now consider whether there has been prior use and/or honest concurrent use of the Trade Mark, or whether there are other circumstances that might justify acceptance of the Trade Mark.
Honest Concurrent Use and/or Other Circumstances
The relevant date for determining honest concurrent use is the priority date of the Trade Mark.[63] The Applicant bears the onus of establishing that there has been honest concurrent use of the Trade Mark.[64] In McCormick & Company Inc v McCormick (‘McCormick’), Kenny J stated that the criteria for determining whether registration of a trade mark should be permitted pursuant to s 44(3) of the Act are:
(i) the honesty of the concurrent use;
(ii) the extent of the use in terms of time, geographic area, and volume of sales;
(iii) the degree of confusion likely to ensue between the marks in question;
(iv) whether any instances of confusion have been proved;
(v) the relative inconvenience that would ensue to the parties if registration were to be permitted.[65]
[63] Hill Industries Ltd v Bitek Pty Ltd [2011] FCA 94, [163]-[164] (Lander J).
[64] Trident Seafoods Corporation v Trident Foods Pty Ltd Limited [2018] FCA 1490, [186] (Gleeson J).
[65] [2000] FCA 1335, [30]-[32].
The honesty of the adoption is a paramount consideration for establishing honest concurrent use.[66] In Tivo Inc v Vivo International Corporation Pty Ltd,[67] Dodds-Streeton J identified the following factors relevant to determining whether a trade mark was honestly adapted:
[66] Re Parkington & Co Ltd’s Application (1946) 63 RPC 171, 181-182 (Romer J).
[67] [2012] FCA 252.
whether the words which make up the trade mark are common everyday words. If they are, it is more likely that the use will be found to be honest than would be the case if the words are ‘invented’ or are not such as to be obviously attractive to other traders;
the subsequent conduct of the applicant;
the likelihood of confusion;
the applicant’s knowledge of the opponent’s mark; and
whether the adoption of the mark, and the continued use of it, was surreptitious.[68]
[68] Ibid [246].
The Opponent submits that given the reputation and use of the Opponent’s Marks since 1992, it is inconceivable that the Applicant was not aware of the Opponent’s Marks prior to its entry into the Australian market. However, the evidence does not indicate that the Opponent's Marks had established a reputation by the time the Applicant entered the Australian market in 1994. The Opponent has not provided any revenue figures or advertising expenditures pertinent to this period, and only limited examples of the use of the Opponent’s Marks during this timeframe. Further, what use there is appears to be is by Fetovu, the claimed predecessor in title of the Opponent’s Marks. It is unclear based on the Opponent’s evidence when the Opponent acquired Fetovu.
The Applicant states that its business was founded in 1988 in New Zealand, although the first use of the Trade Mark relied on by the Applicant is an invoice referencing payments between the company Dynaplas Pty Ltd (‘Dynaplas’) and ‘Rhino Products’. The earliest date referenced is 16 June 1994.[69] Exhibit-C of Samuel 2 also includes a facsimile of a communication between Dynaplas and ‘Rhino Products’ dated 13 December 1995, and an order from Dynaplas to ‘Rhino Manufacturing’ dated 9 October 1996. The invoices demonstrate use of the following trade marks:
[69] Samuel 2 [9] and Exhibit B.
According to Samuel, in 1994 the Applicant was not aware of any businesses or trade marks in Australia utilising the term ‘Rhino’.[70] The Applicant also emphasises that it adopted the Trade Mark in New Zealand at a time where there was no access to the internet. The Applicant does not provide any further explanation, nor any indication if inquiries were made regarding possible registered trade marks. Although I acknowledge the challenges in providing evidence from 30 years ago, there is ultimately limited evidence of the Applicant’s activities or their adoption of the Trade Mark at this time.
[70] Samuel [20].
From 1996 onwards, the Applicant’s evidence only demonstrates intermittent use of the Trade Mark. A screenshot of the Applicant’s Website dated 4 November 2003 features the Applicant’s business name but does not include the Trade Mark or demonstrate any clear indication of an offer of sale of the Applicant’s Goods. The other screenshots of the Applicant’s Website are undated.[71]
[71] See: Samuel 2 Exhibit K.
Invoices included in Samuel 2 establish the Applicant was exporting goods to Australia from 2017 to the priority date,[72] but only reference the Applicant’s business name ‘Rhino Manufacturing Ltd’ and demonstrate no use of the Trade Mark. Other invoices issued by Rhino Manufacturing Australia are included in Samuel but are issued after the Relevant Date.
[72] Samuel 2 Exhibit J.
Another issue with the Applicant’s evidence is the use of different representations of the signs containing the element RHINO, including several with additions or alterations which affect the identity of the Trade Mark within the meaning of s 7(1). For example:
Much of the use of the Trade Mark demonstrated on social media is from after the Relevant Date, but for an example from the Modern Transport Engineers Australia P/L’s Facebook account dated 9 June 2021, which referenced ‘RHINO MUDGUARDS’ being available for purchase.[73]
[73] Samuel 2 Exhibit E.
Samuel includes revenue figures from between the 2017/18 financial year and the 2023/24 financial year. Whilst the figures between 2017/18 and the Relevant Date are modest, there appears to have been ongoing growth in Australia. However, in the context of the issues with the Applicant’s evidence identified above, this information is not sufficient to demonstrate honest concurrent use of the Trade Mark. For these reasons, I am not satisfied that there has been honest concurrent use of the Trade Mark. Accordingly, s 44(3)(a) has not been established.
In regard to any other circumstances which would make registration appropriate under s 44(3(b), the Applicant has drawn my attention to the following factors:
The honest adoption of the Trade Mark;
The extensive use of the Trade Mark and its significant reputation;
The absence of any evidence of consumer confusion between the trade marks despite a lengthy period of coexistence;
The use of the Opponent’s Marks is limited to carriers for motor vehicles;
The fact that the Opponent has not objected to the use of the Trade Mark at any time prior to this opposition; and
The inconvenience to the Applicant should the Trade Mark be refused.
I am not persuaded by the Applicant’s submissions. Many of the Applicant's claims rely on the assumption of honest concurrent use of the Trade Mark. As discussed above, the Applicant has not demonstrated honest concurrent use, and what use has been demonstrated falls well short of establishing any form of reputation in the Trade Mark. Section 44(3)(b) requires there to be ‘other circumstances’ that justify registration. These tend to be circumstances apart from those that would support a finding of honest concurrent use.[74]
[74] Ceramiche Caesar S.p.A v Caesarstone Ltd [2020] FCAFC 124, [80] (Nicholas, Burley and Thawley JJ).
Turning to the other discretionary factors, I acknowledge that the evidence does not demonstrate any instances of confusion and that this is a factor that weighs in favour of the Applicant. However, there is also a significant degree of ambiguity surrounding the extent of the Applicant’s use of the Trade Mark in Australia.
The relative inconvenience concerns both parties. The Opponent’s Marks are longstanding registrations, and the registration of a deceptively similar trade mark would dilute the distinctiveness of the Opponent’s Marks. The Applicant has claimed use of the Trade Mark in Australia since 1994, but its submission regarding the inconvenience would have been more persuasive had the Applicant been able to substantiate its long term use of the Trade Mark in Australia. I consider the balance of inconvenience equal between the parties. For these reasons, I do not consider it appropriate to exercise the discretion under s 44(3)(b).
Prior Use
Section 44(4) enables a trade mark which would otherwise have been rejected under s 44(1) and/or 44(2) to be registered due to prior continuous use of the trade mark. For s 44(4) to be established, the Applicant must demonstrate continuous use of the Trade Mark in relation to the Applicant’s Goods from before the priority dates of the Opponent’s Composite Mark, 28 August 2009, and the Opponent’s Word Mark, 3 October 2018, until the Relevant Date.
The issues identified with the Applicant’s evidence of honest concurrent use are also applicable to s 44(4). Although the invoices adduced by the Applicant show use of the Trade Mark between 1994 and 1996, there is a significant period between 1996 and the next claimed instance of use, which is the screenshot from the Applicant’s Website dated 4 November 2003. As stated earlier, I am not persuaded that the screenshot shows use of the Trade Mark in relation to the Applicant’s Goods. There is no further demonstrated use before the priority date of the Opponent’s Composite Mark. For these reasons, I am not satisfied that there has been prior and continuous use of the Trade Mark, and it is not appropriate to apply the provision of s 44(4).
Accordingly, the ground of opposition under s 44 has been established.
Decision
Section 55(1) relevantly provides:
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 established a ground of opposition under s 44. Accordingly, I refuse to register trade mark application number 2225194.
Costs
The Opponent sought an award of costs. As the Opponent has been successful, I award costs against the Applicant under s 221 in accordance with Schedule 8 of the Regulations.
Timothy Brown
Hearing Officer
Delegate of the Registrar of Trade Marks
23 June 2025
Schedule A
Class 6: Cable straps of metal; straps of metal; straps, bands, braces, cables and harnesses impregnated with metal, straps lined with metal; metallic webbing straps; metallic webbing belts for handling loads; protective metal edging for straps; braces, belts, bands, cables and harnesses, of metal for handling loads; cam buckle tighteners of metal; pipe clamps of metal; winch tensioners of metal; straps, bands, braces, cables and harnesses reinforced with metal
Class 12: Automotive spare parts and accessories including non-electrical automotive accessories namely roof racks, ski carriers, water craft carriers, sporting goods carriers, ladder carriers, bike carriers, luggage carriers, roof top boxes and mountings for roof racks and roof bars; vehicle and trailer hitches; trailer hitch receivers; cargo carriers for vehicles and trailers; truck bed extenders; trailers for vehicles; trailer hitch mounts and balls, sway controls, hitch balls, hitch ball covers, couplers, safety chains, clips, tow hooks, pintle hooks, pole tongue adapters, and towing bars; bicycle carriers; bicycle carrier adapters; torsion hitch kits including receiver tubing, receiver tube covers, hook-up brackets; hitch boxes, bolts and angles; license plate brackets, hood shields, vehicle side window vent shades, tube steps, brush bars, tonneau covers, truck bed covers, tail-light covers, vehicle side window louvres, cargo carrier nets, cargo barriers, dog guards, roof rails and side view mirrors; hub caps; vehicular transmission coolers and mounting brackets therefor; vehicle canopies and hardtops
Class 22: Awnings for tents; bags made of textile for the storage of tents; camping tents; tents; tents (awnings) for caravans; tents (awnings) for vehicles; tents for camping; tents for mountaineering; tents for use as an adjunct to vehicles; tents made of textile materials; awnings; awnings of synthetic materials; awnings of textile; beach awnings and canopies, not of metal; canopies (awnings); market awnings and canopies, not of metal; shade awnings and canopies, not of metal; tents (awnings) for caravans; tents (awnings) for vehicles; canopy awning incorporating a clothesline
Schedule B
Class 6: Metal accessories for automobiles namely, carry bars, cargo bars, cargo securing systems, hooks; pipe clamps of metal; winch tensioners of metal; straps, bands, braces, cables and harnesses reinforced with metal; lock barrels of metal; lock bolts; locks (other than electric) of metal for vehicles; locks of metal for vehicles; locking apparatus (non-electric) of metal; metal releasable locking devices (non-electric); keys; cable straps of metal; security devices (locks) of metal for vehicles; straps of metal; straps, bands, braces, cables and harnesses impregnated with metal, straps lined with metal; metallic webbing straps; metallic webbing belts for handling loads; protective metal edging for straps; braces, belts, bands, cables and harnesses, of metal for handling loads; cam buckle tighteners of metal
Class 12: Automotive spare parts and accessories including non-electrical automotive accessories namely roof racks, roof bars for vehicles, ski carriers, water craft carriers, sporting goods carriers, ladder carriers, bike carriers, luggage carriers, roof top boxes and mountings for roof racks and roof bars; vehicle and trailer hitches; trailer hitch receivers; cargo carriers for vehicles and trailers; truck bed extenders; trailers for vehicles; trailer hitch mounts and balls, sway controls, hitch balls, hitch ball covers, couplers, safety chains, clips, tow hooks, pintle hooks, pole tongue adapters, and towing bars; bicycle carriers; bicycle carrier adapters; torsion hitch kits including receiver tubing, receiver tube covers, hook-up brackets; hitch boxes, bolts and angles; license plate brackets, hood shields, vehicle side window vent shades, tube steps, brush bars, tonneau covers, truck bed covers, tail-light covers, vehicle side window louvres, cargo carrier nets, cargo barriers, dog guards, roof rails and side view mirrors; hub caps; vehicular transmission coolers and mounting brackets therefor; vehicle canopies and hardtops
Class 22: Awnings for tents; bags made of textile for the storage of tents; camping tents; tents; tents (awnings) for caravans; tents (awnings) for vehicles; tents for camping; tents for mountaineering; tents for use as an adjunct to vehicles; tents made of textile materials; awnings; awnings of synthetic materials; awnings of textile; beach awnings and canopies, not of metal; canopies (awnings); market awnings and canopies, not of metal; shade awnings and canopies, not of metal; tents (awnings) for caravans; tents (awnings) for vehicles; canopy awning incorporating a clothesline; Load securing devices including ropes and elastic straps; tents including, inflatable tents, tents made of textile material, tents for camping, tents for use adjacent to vehicles, tarpaulins, awnings in this class for tents and caravans; bags for tents; and parts and accessories in this class for the aforesaid goods; swags; tarpaulins; coverings (not shaped) for vehicles or portions of vehicles made from leather or imitations of leather, including vinyl
Schedule C
Class 8: Hand tools and implements (hand operated), shovels, torque tool
Class 18: Travelling bags, luggage bags, including belts and straps for luggage.
Class 20: Fastening devices including hooks and clamps of plastic for use with motor vehicles; boxes, cases and containers, namely, storage boxes, cases and containers, cargo cases, plastic luggage cases and boxes; none of the foregoing being in the nature of tool boxes, tool cabinets, tool storage containers or parts thereof
Class 25: Clothing, headgear; jackets, caps, shirts, jumpers, wind breakers, socks, underwear, driving suits and overalls
Class 35: Online retail store services featuring outdoor and travel equipment, sporting products, outdoor gear, recreational products, vehicle racks, carriers, and organizers, carriers and covers for electronic products, luggage, bags, backpacks, clothing and accessories, and strollers, seats, trailers, and carriers for children; Retail store services featuring outdoor and travel equipment, sporting products, outdoor gear, recreational products, vehicle racks, carriers, and organizers, carriers and covers for electronic products, luggage, bags, backpacks, clothing and accessories, strollers, seats, trailers, and carriers for children.
0
15
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