PET DRS PTY LTD - [2025] ATMO 174

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2501948 (classes 3 and 5) – Nourish Pet Co. (fancy) - in the name of PET DRS PTY LTD.

Delegate:

Nicole Worth

Representation:

Applicant: Self represented

Decision:

2025 ATMO 174

Trade Marks Act 1995 (Cth) – s 33 proceedings – grounds for rejection under ss 41 and 44 – trade mark not sufficiently inherently adapted to distinguish – trade mark deceptively similar to prior marks – one citation withdrawn – trade mark application rejected.

Background

This is a decision pursuant to s 33 of the Trade Marks Act 1995 (Cth) (‘Act’)[1] which provides that the Registrar of Trade Marks must, after examination, accept an application to register a trade mark unless satisfied that, among other matters, there are grounds for rejecting it.
[1] In this decision, all references to sections or regulations are references to sections of the Trade Marks Act 1995 (Cth) or regulations of the Trade Marks Regulations 1995 (Cth) (‘Regulations’), unless otherwise indicated.
On 26 November 2024 PET DRS PTY LTD (‘Applicant’) filed an application to register the trade mark detailed below.
Trade Mark:                  (‘Trade Mark’)
Application No.:     2501948
Filing Date:                26 November 2024
Goods:Class 3: perfumery products for pets; cosmetics for animals; deodorants for pets; perfumery for pets; dog skincare cosmetics; skincare cosmetics for dogs; dog washes [shampoos]
Class 5: dietary pet supplements in the form of pet treats; pet first-aid kits; pet first aid kits; vitamins for pets; dietary supplements for pets in the form of treats; dietetic pet food for medical purposes; vitamins for animals and pets; dietetic pet food for medical use; nutritional supplements for pets; pet food additives in the form of vitamins and minerals; medicated mouthwashes for pets; dietary supplements for animals; medicated shampoos for pets; medicated grooming preparations for pets; dietetic pet foodstuffs for medical use; dietetic pet foodstuffs for medical purposes; dietary supplements for pets; dog lotions for veterinary use; dog lotions for veterinary purposes; nutritional supplements for dogs; nutritional supplements for cats
The application was examined as required by s 33 and the examiner raised grounds for rejection under ss 41 and 44.
The examination report states in respect of the ground for rejection under s 41:
Your trade mark is NOURISH PET CO.
The Macquarie Dictionary defines the word NOURISH as being "to sustain with food or nutriment; supply with what is necessary for maintaining life". This indicates that the goods are provided by a company to nourish (sustain) pets.
Other traders should be able to use NOURISH PET CO in connection with goods or services similar to yours.
In respect of the ground for rejection under s 44 the examination report cites five prior trade marks. One of the cited trade marks has since lapsed and so is not considered in this decision. The summarised details of the remaining four are below, and their full specifications of goods and services are at Attachment A to this decision.

PETCO

Registration no. 986566

Priority date: 28 January 2004

Owner: Hands (IP) Holdings Pty Limited

Classes: 5, 25, 29, 30, 31, 32.

Registration no. 1445038

Priority date: 26 August 2011

Owner: Petco Animal Supplies Stores, Inc.

Classes: 5, 7, 11, 16, 18, 21, 31, 41, 44

Registration no. 1445039

Priority date: 26 August 2011

Owner: Petco Animal Supplies Stores, Inc.

Classes 5, 7, 11, 16, 18, 21, 31, 41, 44

Registration no. 1773438

Priority date: 27 May 2016

Owner: Petco Animal Supplies Stores, Inc.

Classes 3, 5, 11, 12, 19, 21, 31, 41

Of these cited trade marks the examination report states:
Trade Mark Number(s): 986566
Your trade mark closely resembles the earlier trade mark because NOURISH is an essential and memorable element in each trade mark. Consumers are likely to assume that the goods bearing the trade marks originate from the same trader, or be otherwise confused.
AND
The goods in class 5 are the same or similar.

Trade Mark Number(s): 1445038, 1445039, 1773438
Your trade mark closely resembles the earlier trade marks because an essential element in your trade mark is PET CO which is aurally and visually similar to PETCO. Consumers are likely to assume that the goods bearing the trade marks originate from the same trader, or be otherwise confused.
AND
The goods you have claimed in class 3 encompass the goods claimed in class 3 for trade mark number 1773438.
The goods in class 5 are the same or similar.

A record of conversation on the examination file indicates that the Applicant discussed the grounds for rejection with the examiner as well as options to overcome them. Following this the Applicant requested to be heard by way of written submissions. It filed submissions on 22 May 2025 which includes some examples of use of the Trade Mark and variations of it, albeit not in declaratory form.
The matter has now been allocated to me for determination, in my capacity as a delegate of the Registrar of Trade Marks. I mention that the purpose here is not a review of the examiner’s decision but rather a fresh consideration of the grounds for rejection.

Section 41

Section 41 of the Act relevantly provides:
41 Trade mark not distinguishing applicant’s goods or services
(1) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons. …
(2) A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.
(3) This subsection applies to a trade mark if:
(a) the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.
(4) This subsection applies to a trade mark if:
(a) the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:
(i) the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;
(ii) the use, or intended use, of the trade mark by the applicant;
(iii) any other circumstances.
Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b) the time of production of goods or of the rendering of services.
(5) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.
A presumption of registrability is embodied in s 33 which provides that the Registrar must accept an application for registration unless satisfied that there are grounds for rejecting it (thereby placing the onus for proving the ground upon the Registrar, rather than placing the onus to prove registrability upon the Applicant). Accordingly, if I consider the Trade Mark has some inherent adaptation to distinguish the designated goods, I am not entitled to reject it unless satisfied that the combined effect of its inherent adaptation to distinguish, any past or intended use of it, and any other circumstances, has not or will not render the Trade Mark distinctive or capable of distinguishing. If I consider the Trade Mark has no inherent adaptation to distinguish, I am not entitled to reject it unless I am satisfied that it does not in fact distinguish the designated goods, having regard to the extent to which the Trade Mark was used, if at all, before the filing date of the application.
The starting point for the assessment under s 41 is a consideration of the inherent adaptation of the Trade Mark to distinguish the designated goods from those of other traders. This is to be tested
by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated by only proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[2]
[2] Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55, [5] (Kitto J).
This test was cited with approval in Cantarella Bros Pty Limited v Modena Trading Pty Limited.[3] In that case their Honours describe a two-step process of consideration wherein first the ordinary signification of a word is determined, permitting a conclusion to be drawn as to whether the word contains a ‘direct reference’ or ‘covert and skilful allusion’. Then the legitimate desire of other traders to use the word is considered, wherein only a word comprising a ‘direct reference’ can legitimately be desired for use by other traders – not words that are allusive or metaphorical.[4]
[3] [2014] HCA 48 (French CJ, Hayne, Crennan, Keifel and Gageler JJ).
[4] Ibid [59].
I start by considering the ordinary signification, if any, of Nourish Pet Co. I bear in mind that it is the signification of the Trade Mark as a whole which is relevant, however it remains necessary to consider the ordinary signification of the words individually in order to assess the signification of the phrase.[5] Additionally, any meaning of the Trade Mark is to be assessed in the context of the designated goods: ‘[T]he meaning of all words is governed by their context and how words are understood depends upon the universe of discourse. Here, the scope of the use of the word is settled by the application for registration…’[6]
[5] See for example Melbourne Bone and Joint Clinic Pty Ltd v Registrar of Trade Marks [2024] FCA 53 (Moshinsky J) or Apple Inc. v Registrar of Trade Marks [2014] FCA 1304 (Yates J), wherein the ordinary signification of the respective phrases MELBOURNE BONE AND JOINT CLINIC and APP STORE were considered, taking into account the meaning of the individual words comprising the phrases.
[6] Howard Auto-Cultivars Limited v Webb Industries Proprietary Limited [1946] HCA 15 (Dixon J), (1946) 72 CLR 175, 184.
The Macquarie Dictionary provides the following definitions:
Nourish verb 1. To sustain with food or nutriment; supply what is necessary for maintaining life. 2. To foster or promote.[7]
Pet noun 1. Any domesticated or tamed animal that is cared for affectionately.[8]
Co. 1. company[9]
[7] Macquarie Dictionary (online at 13 August 2025) ‘Nourish’ (def 1 and 2).
[8] Ibid (online at 13 August 2025) ‘Pet’ (def 1).
[9] Ibid (online at 13 August 2025) ‘Co.’ (def 1).
Both ‘nourish’ and ‘pet’ are apt to describe the specified goods – ‘nourish’ indicates the purpose of the various skincare and dietetic substances (to provide nutrients) and ‘pet’ indicates the intended recipients (the goods are intended for pets). The addition of the abbreviation ‘Co.’ indicates a specific commercial entity.
When joined into a composite expression the words do not naturally form a complete phrase or a clear description. The unusual syntax of the Trade Mark requires the observer to infer meaning which may vary slightly between different observers, such as ‘the company that nourishes your pet’ or ‘nourishment for pets’. Alternatively, no precise meaning may be inferred, but rather a general notion gleaned that the goods are provided by a company and relate to nourishment and pets. This quality imbues the Trade Mark with at least a degree of distinctiveness, such that s 41(3) does not apply.
At the same time, it would not be a difficult task for the average person to derive meaning from the words. Whilst the grammatical structure of the Trade Mark is somewhat unusual, it does not altogether obscure its relatively obvious meaning. It is common for brands to reduce ideas or concepts to only a few words for memorability or catchiness, such as ‘Slip Slop Slap’ (Cancer Council) or ‘Just Do It’ (Nike). I add also that the arrangement of the words may further assist in deriving meaning – ‘Pet Co.’ appears subordinate, in smaller font underneath ‘Nourish’ which is significantly larger. To that end, the emphasis is upon the word ‘nourish’ highlighting the intended purpose of the Applicant’s goods, and ‘Pet Co.’ indicates that the goods are provided by a company concerned with pets.
The Applicant points to other trade marks appearing on the Register of Trade Marks (‘Register’) in support of its own Trade Mark. The state of the Register is of limited assistance because the circumstances of registration of any particular trade mark are usually unknown,[10] and it is possible that a trade mark may have been registered in error.[11] Additionally some of the trade marks identified by the Applicant contain distinctive device elements or distinctive words, which do not assist its case. Nonetheless, I note that trade marks such as The Natural Pet Co; NOURISH NUTRITION; Nourish & Co; NourishMe and Nourish Them did not face grounds for rejection under s 41. On the other hand, trade marks such as Nourish Products; Nourish Seniors; SuperNourish; Nourish Your Cells; Nourish+ and NourishHEALTH did. I am not persuaded that the state of the Register is of assistance here – it seems only to reflect that ‘nourish’ is a popular element in trade marks and the outcome very much depends on the particular circumstances of the case.
[10] British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281, 305 (Jacob J).
[11] Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177, [35] (Wilcox J).
Bearing these factors in mind, I consider that the Trade Mark is to some extent, but not sufficiently, inherently adapted to distinguish the Applicant’s goods from those of other traders. I turn then to consider also the combined effect of this with any use of the Trade Mark and any other circumstances relevant to the case.
The Applicant’s submissions include statements and images regarding the extent of use of the Trade Mark. I note these are not in declaratory form and so do not carry weight as properly filed evidence would. Nonetheless I make the following comments on the information provided. The brand has a moderate number of followers on Instagram and TikTok which I consider to be commercially significant. An amount spent on advertising each month is provided, which is significant. The way(s) in which the Trade Mark is advertised is not stated, although a ‘Meta® account’ screen shot shows, under the heading ‘Nourish Ad Account’, various amounts spent presumably on advertising via channels owned by Meta®, although no further information is provided nor are examples of the advertising paid for. A number of broad statements are made relating to product endorsement; lifestyle and pet wellness segments on national media; and distribution in Australia and overseas. However, none of the statements provide any detail such as who made the endorsements and when; which national media outlets featured the brand and their viewership; in what manner the Trade Mark appeared; or the number of products distributed. A copy of an invoice dated 7 May 2025 confirms that a major distributor is a customer of the Applicant, at least as at that date. Two images show two people appearing on 7 News (surmised from the 7 News logo appearing in the corner of the images), although the Trade Mark is not shown. There is little information from which to judge the extent of exposure at the priority date, which (as discussed in the next section) has implications particularly in relation to s 44.
Overall, aside from the fact that the evidence is not in declaratory form, there is insufficient information upon which to properly assess the extent to which the Trade Mark has been used. In terms of s 41, I consider that a ground for rejection applies in accordance with s 41(4).

Section 44

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)…
(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.
For the purposes of s 44, the priority date of the Trade Mark is the same as its filing date, being 26 November 2024.
As noted in the previous section of this decision, s 33 embodies a presumption of registrability. Accordingly, I am not entitled to reject the Trade Mark under s 44 unless satisfied that one or more the cited trade marks:
·     is in the name of a person other than the Applicant;
·     has a priority date that is earlier than the priority date of the Trade Mark;
·     is in respect of similar goods or closely related services to the Applicant’s goods; and
·     is substantially identical with, or deceptively similar to, the Trade Mark.
If I am so satisfied, sub-ss (3) and (4) of 44 provide exceptions to sub-s (1). Under those provisions I may accept the application because the Applicant has made honest concurrent use of the Trade Mark (s 44(3)(a)) or because other circumstances exist which would make acceptance proper (s 44(3)(b)); or, if prior continuous use is established (s 44(4)), then I may not reject the application because of the cited marks.
It is straight-forward that the cited marks are in the name of a person other than the Applicant and that they each have a priority date which is earlier than the priority date of the Trade Mark.

The issues of similarity between goods and services, and similarity of trade marks, differ somewhat in each comparison and so the cited marks are discussed individually.

Cited mark 986566

The goods specified in class 5 of both the cited mark 986566 and the Trade Mark are as follows:
986566:
Dietetic substances adapted for medical use, food for babies; dietetic substances adapted for general uses; dietary supplements or formulations; sports supplements or formulations; vitamins, minerals.
Trade Mark:
Dietary pet supplements in the form of pet treats; pet first-aid kits; pet first aid kits; vitamins for pets; dietary supplements for pets in the form of treats; dietetic pet food for medical purposes; vitamins for animals and pets; dietetic pet food for medical use; nutritional supplements for pets; pet food additives in the form of vitamins and minerals; medicated mouthwashes for pets; dietary supplements for animals; medicated shampoos for pets; medicated grooming preparations for pets; dietetic pet foodstuffs for medical use; dietetic pet foodstuffs for medical purposes; dietary supplements for pets; dog lotions for veterinary use; dog lotions for veterinary purposes; nutritional supplements for dogs; nutritional supplements for cats.
Similar goods are defined in s 14(1) as goods that are the same, or of the same description, as other goods. The term ‘of the same description’ casts a wider net than ‘the same’: it is a term of art to be understood ‘in such a sense that, if two different items are held not to fall within the expression, their sale under the same trade mark by different companies is not likely to lead to deception or confusion’.[12]
[12] Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd [1993] FCA 265, [27] (Burchett J), cited in Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808, [275]-[286] (Burley J).
In assessing whether goods are of the same description, the High Court in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd observed:
The fact that examination of the nature of the applicant's goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive. Nor is the fact that the applicant's goods are not specified by the regulations as being within the same class of goods: see In re The Australian Wine Importers Ltd. [(1889) 41 Ch D 278, at p 291] and Reckitt & Colman (Australia) Ltd. v. Boden per Latham C.J. [[1945] HCA 12; (1945) 70 CLR 84, at p 90]. There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J. in In re Jellinek's Application [(1946) 63 RPC 59]. Romer J. thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek's Case [(1946) 63 RPC 59] the Assistant-Comptroller elaborated on the observations of Romer J. in the following manner: "In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek's Application [(1946) 63 RPC 59], Romer J. classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasized that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are 'of the same description'": In re an Application by John Crowther & Sons (Milnsbridge) Ltd. [(1948) 65 RPC 369, at p 372].[13]
[13] Southern Cross (n 3), 606.
Here, both parties specify various dietetic substances and dietary supplements. However, the primary point of difference is that the Applicant’s goods are intended for pets, and such pet-oriented goods do not generally share trade channels, manufacturers or relevant markets with goods that are not intended for animals. Pet goods such as those specified are sold primarily through veterinary clinics, pet stores, directly from the trader, or from pet sections in supermarkets and department stores. They are not sold in pharmacies, supplement or health food shops, or in the medicinal or health sections of supermarkets and department stores. Manufacturers of supplements and dietetic substances meant for human consumption do not commonly also make versions for pets. The relevant market for the Applicant’s goods is consumers wishing to improve the health of their pets. They are not necessarily looking for the same treatments for themselves.
I do not consider the fact that the goods of cited mark 986566 have not been specified as ‘for human consumption’ (or similar) necessarily means the Applicant’s goods are encompassed within them. Given the marked differences between trade channels, manufacturers and relevant markets of pet products and products for human consumption, I do not think that a trader would omit a relevant qualifier such as ‘for animals’ or ‘for pets’ on the assumption they would be understood to be included within their goods. I consider that the ordinary meaning of the language used[14] to describe the goods of cited mark 986566 is that they are for human consumption. I therefore do not consider cited mark 986566 to be in respect of goods similar to those of the Applicant.
[14] In the sense discussed in Singtel Optus Pty Limited v Optum Inc [2018] FCA 575, [148]-[188] (Davies J).
Accordingly, cited mark 986566 does not provide a basis for the ground for rejection under s 44.

Cited marks 1445038, 1445039 and 1773438

It is convenient to turn first to the assessment of substantial identity or deceptive similarity between the trade marks. I note all of cited marks 1445038, 1445039 and 1773438 are owned by the same entity: Petco Animal Supplies Stores, Inc.
Justice Windeyer articulated the test for determining substantial identity in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’) as follows:
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.[15]
[15] [1963] HCA 66, [12].
The Trade Mark is reproduced side-by-side along with the cited marks, below.

PETCO	PETCO
Trade Mark	Registration no. 1445038	Registration no. 1445039	Registration no. 1773438

It is immediately apparent that none of the cited marks contain the word ‘Nourish’. Whilst ‘Nourish’ describes a quality of the goods, it cannot be utterly discounted for the purposes of the comparison here. It is also immediately apparent that registration 1445039 contains a cartoon image of a dog and cat. These differences immediately strike the eye, such that in a side-by-side comparison a total impression of resemblance does not emerge. I therefore do not consider the Trade Mark to be substantially identical to any of cited marks 1445038, 1445039 and 1773438.
As to deceptive similarity, Windeyer J continued in Shell:
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[16]
[16] Ibid [13].
As noted by the High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd,[17] the notional consumer's imperfect recollection of the prior mark is at the centre of the test for deceptive similarity. The principle is that allowance must be made for a consumer knowing only the prior trade mark and recalling it imperfectly, and it is that impression which is to be compared with the applied-for trade mark.
[17] [2023] HCA 8, [28]-[29] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (citations omitted). The comments are made in the context of infringement under s 120 but are nonetheless relevant to the assessment under s 44.
Deceptive similarity may also arise by way of contextual confusion, wherein differences between marks may be readily apparent and appreciated by consumers, but they may nonetheless be confused as to whether the marks are associated because of some shared feature in them. Examples include JESTS and EASYJESTS; MONOPOLY and MUSICOPOLY; YELLOW PAGES and YELLOWNET; CAT and LANDCAT; POLO and POLO CLUB; and VIAGRA and HERBAGRA.[18]
[18] Vivo International Corporation Pty Ltd v Tivo Inc [2012] FCAFC 159, [145]-[146] (Keane CJ, Dowsett and Nicholas JJ) (citations omitted).
In respect of cited marks 1445038 and 1773438 (both comprising the word PETCO solus), I consider both types of confusion to be relevant. ‘Nourish’ is apt to describe the parties’ goods, in that the goods nourish the skin, coat or body of pets. It is also a word desired for use by many traders (as evidenced by the state of the Register referred to earlier). For this reason, it is discounted somewhat in the comparison between trade marks. Similarly, the omission of the space between ‘pet’ and ‘co’ and the period after ‘co’ carry little weight. These differences are unlikely to be recalled with precision. I consider it likely that consumers would be caused to wonder whether Nourish Pet Co. products come from the same source as PETCO products, or whether ‘Nourish’ designated a particular line of PETCO products (particularly as the layout of the Trade Mark segregates ‘Nourish’, and ‘Pet Co.’ is presented as a unified feature). As noted in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd,[19] it is enough if the ordinary consumer entertains a reasonable doubt.
[19] [1954] HCA 82, [4] (Dixon C.J, McTiernan, Webb, Fullagar and Taylor JJ.)
In respect of cited mark 1445039 (comprising the word PETCO and a cartoon image of a cat and dog), I acknowledge that the cartoon image of a cat and dog is a further differentiating feature. However, I do not consider that differentiation to be to the extent that confusion is unlikely. In the same way that ‘Nourish’ is apt to describe the goods and is commonly used, fairly simplistic images such as that in cited mark 1445039 are also apt to indicate the goods are for pets and are commonly used, examples of which from the Register of Trade Marks are below.

Neither the word ‘Nourish’ nor the cartoon image of the dog and cat sufficiently differentiate the parties’ trade marks. For that reason, despite there being a degree of further differentiation between cited mark 1445039 and the Trade Mark, it is not sufficient to render confusion unlikely.
As to the parties’ goods, I have reproduced the relevant specifications of the trade marks below.

Class 3: perfumery products for pets; cosmetics for animals; deodorants for pets; perfumery for pets; dog skincare cosmetics; skincare cosmetics for dogs; dog washes [shampoos] Class 5: dietary pet supplements in the form of pet treats; pet first-aid kits; pet first aid kits; vitamins for pets; dietary supplements for pets in the form of treats; dietetic pet food for medical purposes; vitamins for animals and pets; dietetic pet food for medical use; nutritional supplements for pets; pet food additives in the form of vitamins and minerals; medicated mouthwashes for pets; dietary supplements for animals; medicated shampoos for pets; medicated grooming preparations for pets; dietetic pet foodstuffs for medical use; dietetic pet foodstuffs for medical purposes; dietary supplements for pets; dog lotions for veterinary use; dog lotions for veterinary purposes; nutritional supplements for dogs; nutritional supplements for cats
PETCO	Class 5: Medicated pet grooming preparations and treatments for hair care and skin care, including, pet shampoos, pet conditioners, pet colognes, pet powders, pet soaps, pet sprays, pet wipes, pet drops, and other forms of preparations and treatments, and flea, tick and mite treatments, lotions and repellents; vitamin supplements for pets
Class 5: Medicated pet grooming preparations and treatments for hair care and skin care, including, pet shampoos, pet conditioners, pet colognes, pet powders, pet soaps, pet sprays, pet wipes, pet drops, and other forms of preparations and treatments, and flea, tick and mite treatments, lotions and repellents; vitamin supplements for pets
PETCO	Class 3: Pet cleaning supplies such as stain removers, sprays, home fragrances, air fresheners and perfumed oils Class 5: Pet cleaning preparations being odor removers; air deodorizers; dietary supplements for pets

The Applicant’s ‘medicated shampoos for pets; medicated grooming preparations for pets; dog lotions for veterinary use; dog lotions for veterinary purposes’ are the same as the ‘medicated pet grooming preparations and treatments for hair care and skin care, including pet shampoos, pet conditioners, pet colognes, pet powders, pet soaps, pet sprays, pet wipes, pet drops, and other forms of preparations and treatments’ of the first two cited marks and the ‘pet cleaning preparations being odor removers’ of the third cited mark. Similarly, the Applicant’s ‘dog lotions for veterinary use; dog lotions for veterinary purposes’ may be for the purposes of flea, tick and mite treatments, and as such are similar to the ‘flea, tick and mite treatments, lotions and repellents’ of the first two cited marks. As for the Applicant’s class 3 goods, the non-medicated versions of shampoos, perfumery products and skincare for pets are similar in nature to their medicated counterparts, and are sold through the same trade channels and often produced by the same manufacturers (as illustrated by the Applicant itself producing both medicated and non-medicated products).
Accordingly, s 44(1) applies in respect of cited marks 1445038, 1445039 and 1773438 and I turn to consider whether either ss 44(3) or 44(4) may apply.
Section 44(3) required the Applicant to establish either that it has used its trade mark honestly and concurrently with the owner of the cited marks, or that there are other circumstances which would make registration proper. No other circumstances are identified by the Applicant so I do not discuss that provision further. As to honest concurrent use of the Trade Mark, as already noted the information provided by the Applicant is not in declaratory form and so does not carry the weight of evidence of use in a sworn statement. Additionally, the Applicant does not give any account of how and when it conceived of the Trade Mark or its date of first use. There is some indication of ongoing use as at the date the Applicant’s submissions were prepared, but very little information pertaining to use prior to then. It is therefore not possible to surmise the length of time that the Applicant has traded concurrently with the owner of the cited marks, nor the extent to which it has done so.
For similar reasons the information provided by the Applicant cannot satisfy s 44(4). Given there is no date of first use provided and little history shown of the Trade Mark, I am unable to ascertain whether it used its trade mark prior to the owner of the cited marks and whether that use has been continuous.
Accordingly, the ground for rejection under s 44 applies, albeit that cited mark 986566 no longer forms part of the basis for ground.

Decision

I am satisfied that grounds for rejection exist under ss 41 and 44 in relation to the Trade Mark.
Section 33(3) provides that if the Registrar is satisfied there are grounds under the Act for rejecting the application, then the Registrar must reject it.
Given I am so satisfied, I reject the application in accordance with s 33(3).

Nicole Worth

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

1 September 2025

Attachment A

Specifications of goods and services

Registration 986566

Class 5: Dietetic substances adapted for medical use, food for babies; dietetic substances adapted for general uses; dietary supplements or formulations; sports supplements or formulations; vitamins, minerals

Class 25: Clothing, footwear, headgear; gymnastic and sporting articles

Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; health bars; grains and nuts; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice

Class 31: Fresh fruit and vegetables for human consumption

Class 32: Mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; sports drinks; syrups and other preparations for making beverages

Registration 1445038 PETCO

Class 5: Medicated pet grooming preparations and treatments for hair care and skin care, including, pet shampoos, pet conditioners, pet colognes, pet powders, pet soaps, pet sprays, pet wipes, pet drops, and other forms of preparations and treatments, and flea, tick and mite treatments, lotions and repellents; vitamin supplements for pets

Class 7: Aquarium products in this class, including, pumps and powerheads

Class 11: Aquarium products in this class, including, heaters and lights

Class 16: Paper and printed materials, including, calendars, posters, note cards, greeting cards, trading cards, bumper stickers, laminated printed paper signs, blank and printed paper labels, bookmarks, score books, printed paper signs, writing pads, note paper, notebooks, note pads, coloring books, book covers, gift wrapping paper, paper napkins, paper tablecloths, paper place mats, paperweights, shopping bags of paper, decals, stickers, souvenir programs concerning sports and sporting events, photographs, temporary tattoos, score cards, books featuring sports and sporting events, magazines featuring sports and sporting events, pens, pencils, pencil sharpeners, erasers, paper coasters, postcards, autograph books, binders, school and office supplies, including, notebooks, folders, pencil cases, lunch bags, chalkboards and clipboards, paper pennants, paper banners, and paper flags

Class 18: Bags, including, all purpose sports bags, duffel bags, backpacks, wallets, tote bags, waist packs; shopping bags of canvas, purses; umbrellas; pet clothing, head wear, footwear and costumes; pet accessories in this class, including, collars, leashes, harnesses and carriers; animal skins and hides

Class 21: Household items in this class, including, beverage glassware, cups, mugs; figurines made of glass, porcelain, terra cotta; portable coolers, thermal insulated containers for food or beverages, and pet feeding bowls; pet grooming products, including, combs and brushes

Class 31: Dog food and treats; cat food and treats; small animal food; fish food; reptile food and bird seed

Class 41: Entertainment services, including, organizing community sporting and cultural events; organizing community festivals featuring a variety of activities, including, sporting events, art exhibitions, flea markets and the like; entertainment in the nature of live performances by a musical band, and theatrical productions; organizing cultural and civic events and exhibitions; providing on-line information on educational and entertainment events, sporting events, cultural and civic events and exhibitions and musical and theatrical performances

Class 44: Veterinary services; animal grooming services

Registration 1445039

Class 7: Aquarium products in this class, including, pumps and powerheads

Class 11: Aquarium products in this class, including, heaters and lights

Class 31: Dog food and treats; cat food and treats; small animal food; fish food; reptile food and bird seed

Class 41: Entertainment services, including, organizing community sporting and cultural events; organizing community festivals featuring a variety of activities, including, sporting events, art exhibitions, flea markets and the like; entertainment in the nature of live performances by a musical band, and theatrical productions; organizing cultural and civic events and exhibitions; providing online information on educational and entertainment events, sporting events, cultural and civic events and exhibitions and musical and theatrical performances

Class 44: Veterinary services; animal grooming services

Registration 1773438 PETCO

Class 3: Pet cleaning supplies such as stain removers, sprays, home fragrances, air fresheners and perfumed oils

Class 5: Pet cleaning preparations being odor removers; air deodorizers; dietary supplements for pets

Class 11: Aquarium filters; aquarium heaters; aquarium lights; air diffusers for aquariums; aquarium filtration apparatus; filters incorporating algae for water filtration; water purification and filtration apparatus; water treatment equipment, namely, water filtration units incorporating macro algal attachment surface; terrarium equipment, namely, electrical equipment for terrariums, namely, terrarium heaters, terrarium lights, terrarium lamps, terrarium heating pads, terrarium misters; aquarium equipment, namely, filters and accessories and parts therefor, namely, filtration apparatus being biological, chemical and mechanical filter media; aquarium equipment, namely, heaters and lights

Class 12: Animal strollers, animal seats for use in automobiles and animal pads adapted for use in vehicles for the transportation of animals

Class 19: Aquarium gravel; aquarium sand; decorative aquarium stones; decorative aquarium stones; bedding, namely, terrarium gravel, sand and decorative terrarium stones

Class 21: Cat litter boxes, litter mats and plastic scoops; indoor terrariums for animals; indoor terrariums for reptiles, amphibians, and hermit crabs; terrariums and enclosures for reptiles; terrarium accessories, namely, screen tops for terrariums and enclosures for reptiles, natural fibers that line the floor of terrariums; pet feeding and drinking bowls; grooming tools for pets, namely, claw clippers; aquarium covers; aquarium fish nets; aquarium hoods; aquariums; artificial aquarium landscapes; indoor aquaria; aquarium air stones; animal activated animal feeders; animal-activated pet feeders that include dispensers for releasing pet food and pet treats therein; small animal feeders; fishbowls; hoses and hose fittings; terrarium accessories, namely, artificial plants and woods, and hides used in terrarium landscapes; terrarium accessories, namely, dishes for reptiles; aquarium decor, namely, aquarium ornaments, aquarium artificial landscapes; instruments for cleaning aquariums, namely, aquarium fish nets, aquarium scrapers, aquarium scrub brushes, aquarium gravel cleaners and tongs; aquarium accessories, namely, resin ornaments, latex coral scapes, plastic plants and driftwood, stoneware ornaments and artificial aquarium background; stands for aquariums; stands for terrariums

Class 31: Dog and cat litter; foodstuffs for animals; edible chews for animals; edible chews for dogs; edible chews for cats; consumable pet chews; jerky products for dogs; animal beverages; Christmas stockings containing food and treats for pets

Class 41: Educational services, namely, providing online training and seminars in the fields of animal and pet safety, animal and pet first aid, animal and pet care, and animal and pet wellness; educational and entertainment services, namely, arranging and conducting educational and entertainment conferences to broaden and advance the way humans view and think about pets; providing information and advice in the field of pet training