Peak Performance Production AB v 1st Phorm International, LLC

[2025] ATMO 98

TRADE MARKS ACT 1995

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

Re:Opposition by Peak Performance Production AB to registration of trade mark application number 2331204 (classes 5, 9, 25, 29, 30, 32 & 41) – P (figurative) - in the name of 1^st Phorm International, LLC

Delegate:

Tracey Berger

Representation:

Opponent: K&L Gates

Applicant: Wrays Pty Ltd

Decision:

2025 ATMO 98

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 44/Reg 4.15A & 58 considered – s 44/Reg 4.15A established for some goods – opportunity to amend specification – application to proceed to registration for amended goods and services

Background

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by Peak Performance Production AB (‘Opponent’) to registration of the trade mark the subject of the application for registration detailed below (‘Application’) in the name of 1^st Phorm International LLC (‘Applicant’):

[1] Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

Trade Mark:                (‘Trade Mark’)

Number:2331204  (‘Application’)

Filing Date:                1 February 2023   

Priority Date:[2] 8 August 2022- classes 5, 9, 29, 30 & 41

[2] Convention priority claimed based on US application numbers 97539536 and 97699915.  The goods and services of the US applications are identical except for the class 30 specification which is ‘protein bars’.

1 December 2022- classes 25 & 32

Specification:            Class 5:        Dietary supplements; nutritional supplement protein bars

Class 9: Downloadable mobile application featuring customized fitness and nutrition plans, fitness and nutrition tracking, fitness and nutrition support, live streams featuring dietitians and fitness trainers, gym and at home workouts, and education content in the field of fitness and nutrition

Class 25:      Apparel

Class 29: Nut butters; Meat sticks consisting primarily of processed lean beef and pork

Class 30: High-protein cereal bars; protein bars (confectionery)

Class 32:     Energy drinks

Class 41: Educational services, namely, providing educational information about fitness and nutrition accessible by mobile application

(‘Applicant’s Goods and Services’)

2.     Following the advertisement of acceptance of the application for possible registration, the Opponent filed a Notice of Intention to Oppose the registration on 20 October 2023, followed by a Statement of Grounds and Particulars (‘SGP’) on 20 November 2023.  The Applicant filed a Notice of Intention to Defend on 13 December 2023.

3. The parties then had an opportunity to file evidence in accordance with the Regulations. The Opponent filed evidence in support (‘EIS’) on 13 March 2024 followed by the Applicant’s evidence in answer (‘EIA’) filed on 21 June 2024. The Opponent did not file any evidence in reply.

4.     Once the time for filing evidence had ended, both parties requested a hearing by way of written submissions.  The Opponent’s written submissions were prepared by Chris Round and Talia Le Couteur Scott of K&L Gates and filed on 4 February 2025.   The Applicant’s written submissions were prepared by Melissa McGrath of Counsel instructed by Kate Howard of Wrays Pty Ltd and filed on 11 February 2025. 

5.     On 21 February 2025, the Opponent filed a copy of the decision in the Opponent’s opposition to the Applicant’s United Kingdom trade mark application 3871728 for the Trade Mark covering essentially the same goods and services as the Application (‘UK Decision’).  The Opponent also filed submissions arguing for the consideration of the evidence by way of an extension of time under s 224 for doing a ‘relevant act’.  This office wrote to the Opponent advising that a compelling case must be made for consideration of the evidence and a fee paid in order for me to consider whether or not I should have regard to the out of time evidence.  The requisite fee was subsequently paid and I have addressed this issue further below.

6.     I am a delegate of the Registrar of Trade Marks and this matter has been allocated to me to determine.  I make my decision based on the aforementioned materials and submissions of the parties.

Grounds, onus and Relevant Date

7.     The Opponent’s SGP nominates grounds of opposition under ss 44 and 58.

8.     The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[3]  The standard of proof is the ordinary civil standard on the balance of probabilities.[4]

[3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

[4] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot

and Edelman JJ).

9.     The rights of the parties are to be determined at the priority dates for the s 44 ground of opposition and at the filing date for the s 58 ground of opposition.  A reference to the Relevant Date is a reference to either 1 February 2023 for the s 58 ground and 8 August 2022 or 1 December 2022 (depending on the goods or services under discussion) for the s 44 ground.

Out of time evidence

10.     Although the Registrar is not bound by the rules of evidence, out of time evidence is not considered as a matter of routine.  The party filing the late evidence must provide compelling reasons for consideration of the information.  The Opponent’s submissions are framed in terms of an extension of time under s 224 rather than Regs 21.15(4) or 21.19.  Nevertheless, the considerations are similar.

11.     In the present case, the Opponent notes that it had been waiting 9 months for the UK Decision to issue and filed the decision in this matter as soon as it became available.  The Opponent submits that the UK Decision is relevant being an equivalent proceeding to the present and involving the same trade marks and goods.  Hence the Opponent argues the UK Decision will be ‘of considerable use’ to me in reaching my decision.

12.     In my opinion, the UK Decision is of little probative value.  The grounds of opposition in this case are s 44 which involves a subjective determination of whether the two marks are substantially identical or deceptively similar under the Australian legislation and relevant case law and s 58 which requires me to determine, if the marks are substantially identical, whether the Opponent was the first to use or apply for registration of their trade mark before any use or application by the Applicant.  I consider a single decision from another jurisdiction to be of limited probative value in assisting me to make these determinations.  Moreover, I do not consider that the UK Decision would alter the outcome of this decision.  Accordingly, I have not had regard to the UK Decision in this matter.

Evidence

13.     The following evidence was filed in the proceedings:

Declarant and Position	Date	Exhibits/Annexures
EIS
Katarina Stenman Johannesson, Vice President of Products for the Opponent (‘Johannesson’)	12 March 2024	KSJ-1 to KSJ-12, Confidential Annexures KSJ7, KS-10 to KS-12
EIA
Drew Skyles, Operations Manager of the Applicant	20 June 2024	A-E and I-J, Confidential Annexures F-H

Opponent's evidence

14.     Johannesson declares that the Opponent is the owner of the following Australian registration (‘Opponent’s Registration’):

TM Number	Trade Mark	Priority Date	Goods
1282565 (IR 989616)	(‘Opponent’s Mark’)	3 July 2008	Class 3:  Soaps, perfumery, essential oils, hair lotions, dentifrices, cosmetic preparations Class 9:  Spectacles, sunglasses, spectacle cases, spectacle frames Class 18:  Leather and imitations of leather, and goods made of these materials and not included in other classes; trunks and travelling bags, handbags, purses, umbrellas, parasols and walking sticks  Class 25:  Clothing, footwear, headgear (‘Opponent’s Goods’)

15.     According to Johannesson, the Opponent’s Goods bearing the Opponent’s Mark have been available in Australia since 2009 and at the Relevant Date, its products were available in 12 countries. The Opponent’s Goods are available on its website at the website of its Australian stockiest at and via other Australian stockists.

16.      The Opponent promotes its products on the aforementioned websites, on its social media accounts and in catalogues.  Examples of these uses together with sales data from 2013 are provided.

Applicant’s evidence

17.     Skyles attests that since 2009, the Applicant has been engaged in developing, formulating and selling supplements.  It has since expanded its product offerings to apparel and in January 2023, to a mobile phone application to provide fitness and nutrition tracking and education services.

18.     Skyles declares that the Applicant ‘coined and honestly adopted’ the Trade Mark in August 2022 from the Applicant’s name by combining the numeral ‘1’ and letter ‘P’ slanted in a forward direction to represent the Applicant’s mission of ‘helping others make progress in their lives’.

19.     The Applicant’s Goods have been available in Australia under the Trade Mark since August 2022 via its website at and since 2023, either in store or online from its Australian distributor MJ Fitness.  As the Applicant’s use of the Trade Mark is after the Relevant Date, it is not necessary to summarise Skyles further.

Discussion

Section 44/Regulation 4.15A

20.     In its SGP, the Opponent nominated the Opponent’s Registration in support of this ground of opposition.  Whilst the parties have both framed their arguments under s 44, as the Opponent is relying on a Protected Intentional Trade Mark, reg 4.15A is the appropriate provision.  Nevertheless, the terms of s 44 and reg 4.15A are substantively identical for all relevant purposes and therefore, nothing turns on the parties’ referencing s 44 rather than reg 4.15A and the relevant caselaw applicable to s 44 is equally applicable to reg 4.15A.

21.     Regulation 4.15A relevantly provides:

4.15A  Grounds for rejection—trade mark identical etc to trade mark protected under Madrid Protocol

(1) For section 189A of the Act, and subject to subregulations (3) and (5), 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 protected international trade mark; or

(ii) a trade mark in respect of which the Registrar has received notification of an IRDA;

held by another person in respect of similar goods or closely related services; 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 other trade mark in respect of the similar goods or closely related services.

(2) For section 189A of the Act, and subject to subregulations (3) and (5), 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) the applicant’s trade mark is substantially identical with, or deceptively similar to:

(i) a protected international trade mark; or

(ii) a trade mark in respect of which the Registrar has received notification of an IRDA;

held by another person in respect of similar services or closely related goods; 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 other trade mark in respect of the similar services or closely related goods.

22.     Accordingly to succeed on this ground of opposition, the Opponent must establish that there is another trade mark in the name of a person other than the Applicant that:

•has a priority date which is earlier than that of the Trade Mark (‘first requirement’);

•is in respect of similar goods to the Applicant’s Goods and closely related to the Applicant’s Services (‘second requirement’); and

•is substantially identical with or deceptively similar to the Trade Mark (‘third requirement’).

23.     The Opponent’s Registration satisfies the first requirement.

Similar goods and closely related services

24.     Turning to the second requirement, s 14 provides that two sets of goods are similar if they are the same as the other goods or are goods of the same description as the other goods.  The factors to be considered are the nature of the goods, their uses and the trade channels through which they are bought and sold.[5] 

[5] Re Jellinek's Application (1946) 63 RPC 59 (Romer J).

25. The term ‘closely related’ is not defined in the Act. French J noted in Registrar of Trade Marks v Woolworths:

The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related” ... it is a term of wider import than “similar” and can apply to the relationships between competing services as well as between goods and services.[6]

[6] Registrar of Trade Marks v Woolworths Ltd (1999) FCR 365; [1999] FCA 1020, [37] (‘Woolworths’).

26.     The Opponent provides the following table of goods by way of comparison of goods which it says are similar:

27.     The Applicant argues that the Opponent’s Goods are designed for use in snow sports whereas the Applicant’s Goods are for fitness and working out.  Neither specification is limited in this manner and I must compare the specifications of the Opponent’s Registration and Application.

28.     The Macquarie Dictionary defines ‘apparel’ as ‘a person’s outer clothing; raiment’.[7]  In turn. ‘raiment’ is defined as ‘clothing; apparel; attire’.[8]  It is clear that the Opponent’s class 25 goods encompass the Applicant’s class 25 goods and these two sets of goods are similar. 

[7] (online at 19 May 2025) ‘apparel’(def 1).

[8] (online at 19 May 2025) ‘raiment’ (def 1).

29.     It appears that the Opponent opposition is solely directed to the Applicant’s class 25 goods as no arguments are made regarding the other goods and services claimed in the Application.  For completeness, I note that I do not regard the Applicant’s goods in classes 5, 9, 29, 30 and 32 or services in class 41 to be similar or closely related to the Opponent’s Goods.  The Applicant’s Goods and Services have a different nature and purpose to the Opponent’s Goods and are generally provided through different trade channels by different traders to those offering the Opponent’s Goods.  

Substantially identical or deceptively similar

30.     The third requirement involves consideration of whether the Opponent’s Mark is substantially identical or deceptively similar to the Trade Mark. 

31.     The relevant test for determining whether trade marks are substantially identical is set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[9] 

[9] [1963] HCA 66, [12] (Windeyer J).

32.     The marks to be compared in this case are shown below:

Opponent’s Mark Trade Mark

33.     The Opponent refers to a number of decisions involving word marks and composite marks in support of its argument that the above marks are substantially identical.  Other than accepting the legal principles in these cases, I do not find any of these decisions persuasive as each involves a comparison of more complex marks than those before me.  More helpfully, the Opponent noted the finding that the following marks are substantially identical in Ferrari SpA v Wicara Enterprises (‘Ferrari’):[10]

[10] [2010] ATMO 96 (Hearing Officer D. O’Brien).

34.     In reaching this conclusion, the Delegate noted:

The purpose of a side by side comparison is to decide whether or not the trade marks are ‘essentially the same’. The Registrar’s delegate in Estar Online Trading Pty Ltd v Estar Ltd (2001) 53 IPR 583 commented at 588:

The fact that trade marks are not exactly identical does not necessarily mean that they are not substantially identical.

I find the side by side comparison of the trade marks in this opposition establishes that they are in essence the same. The general effect of “the respective wholes” is of a realistic drawing of a rearing black horse as seen from the side. The trade marks are substantially identical.[11]

[11] Ibid [32]-[33].

35.     It is the Opponent’s contention that the Opponent’s Mark and Trade Mark are ‘in essence the same’ both consisting of the letter ‘P’ having the essential features of a bold stocky form made up of 2 halves with a gap between the halves.  The Opponent submits that there are only minor stylistic differences which are not essential features.

36.     The Applicant argues that the Trade Mark and Opponent’s Mark are not substantially identical.  In support of this contention, the Applicant notes the Delegate’s decision in Muscle Nation IP Pty Ltd v Worldwide Sports Nutrition Pty Ltd (‘Muscle Nation’)[12] where the following marks were found to be neither substantially identical nor deceptively similar:

[12] [2023] ATMO 10 (Hearing Officer T. Brown).

37.     The Applicant submits that the Trade Mark comprises two representations of the numeral one or two slanted letter I side by side, with the left side being longer in length and the right side being identical but half the size.  In comparison, the Opponent’s Mark is not slanted and is comprised of an isosceles trapezoid on the left and chevron on the right.

38.     In my view, the Trade Mark is not substantially identical to the Opponent’s Mark. When comparing the two marks side by side, noticeable differences emerge. The Opponent’s Mark features more traditional shapes, such as an isosceles trapezoid and a chevron, whereas the Trade Mark consists of less regular shapes. Although I disagree with the Applicant's assertion that the shapes in the Trade Mark clearly represent either the numeral one or the letter 'I', the flat tops, points or arrows, and elongated left-hand shape in the Trade Mark are evident when the marks are juxtaposed.

39.     Having found that the Opponent’s Mark is not substantially identical to the Trade Mark, I turn to a consideration of whether the two marks are deceptively similar.  Section 10 provides that ‘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’. 

40.     In Shell, Windeyer J enunciated the following approach for assessing whether two marks are deceptively similar:

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].[13]

[13] [1963] HCA 66, [13] (Windeyer J).

41.     There must be a real tangible danger of confusion occurring.[14]  Consumers need not think that the marks are the same, but rather it is sufficient if there is a real risk that use of the Trade Mark will cause a significant number of ordinary persons to wonder or to entertain a reasonable doubt as to whether the Applicant’s Goods come from the same source as the Opponent’s Goods.[15]

[14] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J); Woolworths (n 6) [50] (French J).

[15] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, [102] (Dodds-Streeton J).

42.     The Opponent drew my attention to a number of cases involving device marks which it claims are analogous to the marks before me.[16]  The Opponent contends that there are striking similarities between the two marks, common essential elements and only minor stylistic differences.  The Applicant’s submissions on deceptive similarity and substantial identity are the same.  The Applicant focusses on the different shapes comprising the two marks, number of sides of each of those shapes and argues that the ‘ambiguity to the shapes of each mark’ means neither mark conveys a meaning to ordinary consumers which ‘mitigates any potential confusion.  According to the Applicant, the Trade Mark would not necessarily be construed as the letter ‘P’ and there are other constructions presumably a combination of the numeral ‘1 1’ or letters ‘I I’.

[16] See Yadea Technology Group Co Ltd v Kawasaki Motors Ltd [2024] ATMO 242 (Hearing Officer B. Goldsworthy), New South Wales Lotteries Corporation Golden Casket Lottery Corporation Pty Ltd, Limited, Tattersall’s Sweeps Pty Ltd, Tatts Lotteries SA Pty Ltd and Tatts NT Lotteries Pty Ltd [2024] ATMO 70 (Hearing Officer N. Worth) and Aaron Shearer v Revl IP Pty Ltd [2023] ATMO 21 (Hearing Officer N. Butson).

43.     In my opinion, both trade marks give the impression of the letter 'P', which is the lasting image consumers will retain. It is unlikely that consumers will perceive the trade marks differently without a detailed examination, given the dominant presence of the letter 'P'. Additionally, both marks consist of two angular shapes forming the letter 'P'. Although there are minor differences, such as the flat top of the Applicant's shapes compared to the slanted top of the Opponent's shapes, these differences are subtle and unlikely to be remembered by consumers. Overall, the two marks share significant visual similarities and would both be recognized as the letter 'P'. Furthermore, while consumers exercise some care when purchasing clothing, these items are relatively inexpensive, and an imperfect recollection without careful consideration is likely to result in confusion or deception. I am convinced that there is a real and tangible risk of confusion due to the similarities and the likely imperfect recollection of the trade marks. Therefore, I find the Opponent's trade mark to be deceptively similar to each of the Applicant's trade marks.

44.     The reg 4.15A ground of opposition is established with respect to the Applicant’s class 25 goods.  However, the Applicant may still be entitled to registration of the Trade Mark if it has established honest concurrent use of its mark under reg 4.15A(3)(a), other circumstances justifying registration of the Trade Mark under reg 4.15A(3)(b) and/or prior continuous use of its mark since before the priority date of any relevant prior mark covering similar goods or services under reg 4.15A(5).  The Applicant argues that it is entitled to registration of the Trade Mark on the basis of honest concurrent use.  The Opponent argues that the Applicant did not commence use of the Trade Mark until August 2022 and hence the Applicant cannot claim honest concurrent use.

45.     I agree with the Opponent that the relevant date for determining honest concurrent use is the priority date of the Application.  The Applicant has not demonstrated use before the Relevant Date and hence there has not been honest concurrent use of the Trade Mark.

Section 58

46.     Section 58 provides that provides that a trade mark may be opposed on the grounds that the Applicant is not the owner of the Trade Mark.

47.     To succeed in this ground of opposition, the Opponents must establish the following:

·    The Trade Mark is identical, or substantially identical, to an earlier trade mark;[17]

·    The earlier trade mark has been used in respect of good or services that are ‘the same kind of thing’ as the Applicant’s Goods and Services;[18] and

·    Another person has an earlier claim of ownership based on use of the earlier trade mark before the Relevant Date.[19]

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

[18] Re Hicks’s Trade Mark  (1897) 22 VLR 636, 640 (Holroyd J).

[19] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [50] (Greenwood, Jagot and Beach JJ).

48.     The Opponent has particularised this ground of opposition by reference to the Opponent’s Mark.  I have found at [38] that the Opponent’s Mark is not substantially identical with the Trade Mark and hence the s 58 ground of opposition is unsuccessful.

Resolution of Opposition

1. In Apple Inc. v Registrar of Trade Marks Yates J stated that:

   My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[20]

2. In circumstances where an opposition has been established in respect of some, but not all of an applicant’s goods or services the Registrar may proceed to reject the application in its entirety, under the principles outlined above, but also has a discretion to offer an amendment to an applicant, allowing it to amend the application to remove goods and services for which a ground of opposition has been established. I note that in in Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited, Murphy J stated:

   I consider the Court has power under s 65(7) of the Act to cut down the breadth of the application but I do not take that course when no party argued that the Court should do so, or identified a principled basis upon which the Court could approach such a task.[21]

3. In the present case, noting that the reg 4.15A ground was clearly confined to the Applicant’s class 25 goods I consider it reasonable to offer an amendment to the Applicant’s Goods and Services to allow the Trade Mark to proceed to registration for the subset of Applicant’s Goods and Services for which the reg 4.15A ground was not established, namely the Applicant’s Goods and Services other than the Class 25 Goods.

   [20] [2014] FCA 1304, [232].

   [21] [2014] FCA 373, [231].

4. Accordingly on 21 May 2025, I informed the Applicant that it was my intention to refuse to register the Trade Mark unless class 25 was deleted from the Application.  The amendment has now been made.  On that basis I find that the opposition has not been established for the revised set of goods and services for which the Trade Mark is sought to be registered.

   Decision

   53.     The Opponent has succeeded in establishing a ground of opposition under reg 4.15A with respect to the Applicant’s class 25 goods.  The Opponent has not succeeded (nor pursued) its opposition to the Trade Mark in the other classes of goods and services.

   54.     The Trade Mark may now proceed to registration in classes 5, 9, 29, 30, 32 and 41 one month from the date of this decision.  If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the application should otherwise be in accordance with the Court’s order or direction.

   55.     Both parties sought an award of costs. As both parties have had some measure of success, I decline to award costs.

   Tracey Berger

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   3 June 2025