R.G. & R.T. Trott Pty Ltd v Lentil Global Pty Ltd
[2025] ATMO 167
•25 August 2025
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by R.G. & R.T. Trott Pty Ltd to registration of trade mark application number 2396535 (25) - WIRRA WIRRA and device (figurative) - in the name of Lentil Global Pty Ltd
Delegate: | Louise Tuohy |
Representation: | Opponent: Ian Horak of Kings Counsel instructed by Madderns Patent and Trade Mark Attorneys Applicant: Wen Wu of Counsel instructed by Mack Lions Lawyers |
Decision: | 2025 ATMO 167 Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 58, 60 and 42(b) considered – none established – trade mark to proceed to registration |
Background
This matter concerns an opposition by R.G. & R.T. Trott Pty Ltd (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth)[1] to the registration of the following trade mark application (‘Application’) in the name of Lentil Global Pty Ltd (‘Applicant’):
Trade mark number: 2396535
Trade mark: (‘Trade Mark’)
Filing date: 15 October 2023
Specification: Class 25: Girls' clothing; Infants' clothing; Shoes for infants; Babies' pants (underwear); Waterproof babies' pants; Infants' footwear; Footwear for babies; Footwear for children; Babies' vests; baby bottoms; baby shirts; baby underwear; baby tops; baby pyjamas; babygrows; baby footwear; bottoms for babies; baby boots; baby shorts; baby pants; baby sleepwear; baby bootees; baby booties; baby shoes; baby trousers; baby sweaters; baby dresses; baby sandals; baby pajamas; baby clothes; underwear for babies; baby sweatpants; baby bodysuits; babies' pyjamas; babies' underwear; pyjamas for babies; baby jumpers; shirts for babies; baby body suits; babies' sleepwear; sleepwear for babies; baby pullovers; babies' headwear; babies' tops; babies' shirts; footwear for babies; babies' sweatpants; boots for babies; babies' footwear; baby doll pyjamas; baby bibs of plastic; headwear for babies; tops for babies; bodysuits for babies; baby bibs of silicone; sweatpants for babies; silicone bibs for babies; plastic baby bibs; babies' bibs of silicone; shorts for babies; sandals for babies; pajamas for babies; underpants for babies; baby doll pajamas; babies' sandals; pants for babies; babies' bibs of plastic; babies' boots; plastic bibs for babies; babies' undergarments; babies' pullovers; shoes for babies; babies' shoes; silicone baby bibs; bibs of silicone for babies; babies' shorts; bibs of plastic for babies; babies' pajamas; babies' underclothing; children's and infant's bibs of silicone; infant sleepers [clothing]; pyjamas for children; children's pyjamas; children's outerclothing; headgear for children; shirts for children; hats for children; children's headgear; tops for children; underwear for children; sandals for children; headwear for children; footwear for children; children's outerwear; outerwear for children; bathing suits for children; children's underwear; jumpers for children; children's tops; children's shirts; sleepwear for children; outerclothing for children; bottoms for children; boy shorts [underwear]; clothing for boys; outerclothing for boys; boys' clothing; girls' clothing; girls' dresses; clothing for girls; dresses for girls; outerclothing for girls; Ballet clothing; Boys' clothing; Clothing for babies (‘Applicant’s Goods’)
[1] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.
The Application was examined as required by s 31 and advertised for possible registration on 16 March 2024.
On 21 March 2024 the Opponent filed a Notice of Intention to Oppose followed by its Statement of Grounds and Particulars (‘SGP’) on 18 April 2024. The Applicant filed a Notice of Intention to Defend on 20 May 2024.
Thereafter the parties filed evidence in accordance with the Regulations. The Opponent filed the following evidence in support (‘EIS’):
Declaration of Mathew Deller, Managing Director and Chief Executive Officer of the Opponent, made on 21 August 2024, with Exhibits MD1 to MD22 (‘Deller’).
The Applicant filed the following evidence in answer:
Declaration of Jiesheng Lyu, General Manager of the Applicant, made on 27 November 2024 with Exhibits 01-JL to 09-JL (‘Lyu’).
The Opponent filed the following evidence in reply (‘EIR’):
Declaration of Mathew Deller, made on 31 January 2025 with Exhibit MD23 (‘Deller 2’).
Once time for filing evidence had ended both parties were given an opportunity to either request an oral hearing or a hearing by way of written submissions. Both parties requested to be heard by way of videoconference. As a delegate of the Registrar of Trade Marks (‘Registrar’) I heard the matter by videoconference on 30 July 2025. Ian Horak of Kings Counsel, instructed by Louise Emmett from Madderns appeared on behalf of the Opponent, with Matthew Deller and Alan Ogden of the Opponent in attendance. Wen Wu of Counsel instructed by Erin Lin of Mack Lions Lawyers appeared on behalf of the Applicant, with Jiesheng Lyu of the Applicant in attendance. The parties’ oral submissions were supported by written submissions filed prior to the hearing.
Preliminary Issues
The Applicant objects to the admission of paragraph 30 and Exhibit MD23 to Deller 2. The Applicant submits that the exhibit is not EIR to Lyu, but further EIS filed out of time. Further the Opponent has made no request to file further evidence under reg 5.15 or reg 21.15(4) and the Applicant would oppose any such request.
The Opponent submits that Exhibit MD23 to Deller 2 comprises business records of the Opponent and should be read with paragraph 29 of Deller 2. The Opponent states that paragraph 29 is clearly in reply and paragraph 30 is of the same character.
Exhibit MD23 to Deller 2 comprises invoices dated between December 2021 and July 2022, detailing the sales of the Opponent’s clothing and headgear. I also note the Opponent’s EIS exhibited other invoices in relation to the sale of the Opponent’s clothing. As such the invoices included in Exhibit MD23 give weight to sales already disclosed in the Opponent’s EIS, and the Applicant should have been on notice at that time. I consider that the public interest in determining the opposition on its merits in an efficient manner, and the balance of convenience to the parties, favours admitting paragraph 30 and Exhibit MD23 to Deller 2.
Grounds of Opposition, Relevant Date and Onus
In the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 58 and 60. The Opponent did not press the ground of opposition under s 44 and I consider this ground abandoned.
The date at which the rights of the parties are to be determined is the filing date of 15 October 2023 (‘Relevant Date’). The filing date is also the priority date for the purposes of s 60.
The Opponent bears the onus of establishing at least one of the grounds of opposition.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3]
The Opponent
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
The Opponent was incorporated in 1969 and is a wine business, located on its property in McLaren Vale, South Australia. The Opponent’s property has a history as a winery dating back to 1894 when Robert Strangways Wigley purchased the property. Wigley planted vines and build a winery on the property and then commenced selling wine under the name WIRRA WIRRA in around the early 1900s. Robert Strangways Wigley continued to operate the winery and sell WIRRA WIRRA branded wines until he passed away in 1926. The winery then fell into disrepair until 1969 when Greg and Roger Trott decided to acquire the property and re-built the winery. The Opponent commenced selling wines bearing the WIRRA WIRRA trade mark at least as early as 1973.
The Opponent exports its WIRRA WIRRA branded wines to numerous countries around the world, and the Opponent is the proprietor of trade mark registrations consisting of or containing WIRRA WIRRA in various countries including Australia, the United States of America, the European Union, the United Kingdom, Canada, Hong Kong, India, China, Japan, the Russian Federation, Singapore, Malaysia, New Zealand and Taiwan.
The Applicant
The Applicant operates a children’s clothing business. The Applicant’s clothing products have been sold to consumers in Australia and have also been exported to other countries including the United States, Canada and Malaysia.
Discussion
Section 58
Section 58 provides:
58 Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
The term ‘owner’ is not defined in the Act. To establish this ground, the Opponent must establish the following requirements:
I. that the Trade Mark is identical, or substantially identical, to the trade marks relied upon by the Opponent[4] (‘First Requirement’);
that the Applicant’s Goods are the ‘same kind of thing’ as the goods for which the trade marks relied upon by the Opponent were used[5] (‘Second Requirement’); and
that a person other than the Applicant has the earlier claim to ownership based on use in Australia of the trade marks relied upon by the Opponent prior to whichever is earlier of: (a) the application to register or (b) any actual use of the Trade Mark in Australia by the Applicant[6] (‘Third Requirement’).
[4] Carnival Cruise Lines Inc. v Sitmar Cruises Limited [1994] FCA 68, [62] (Gummow J).
[5] Re Hicks’ Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).
[6] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).
In the SGP the Opponent particularised its ground of opposition under s 58 as follows:
The Opponent has continuously used its “WIRRA WIRRA” trade mark in Australia, including with respect to merchandise such as clothing, for many years prior to the Priority Date of the Opposed Trade Mark Application. Consequently, the Applicant is not the true owner of the Opposed Trade Mark.
With respect to the First Requirement, the test for whether trade marks are substantially identical requires that the trade marks are considered side-by-side while having regard to the essential features of the trade marks.[7] Where a total impression of resemblance emerges from the comparison, the trade marks will be considered substantially identical. The Opponent relies on its WIRRA WIRRA trade mark and for the purposes of comparison I have reproduced the respective trade marks below:[8]
[7] The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407, 414 (Windeyer J).
[8] Full details of the Opponent’s registered WIRRA WIRRA trade marks can be found at Annexure A to this decision.
WIRRA WIRRA trade mark
Trade Mark
WIRRA WIRRA
On a side-by-side comparison I find that the WIRRA WIRRA trade mark is not identical, or substantially identical to the Trade Mark. The Trade Mark consists of the words WIRRA WIRRA in a lower-case fancy script and a device of a cactus beside a sun and mountains. In comparison the Opponent’s WIRRA WIRRA trade mark is for the plain words WIRRA WIRRA. For these reasons the total impression emerging from a side-by-side comparison is not one of resemblance.
As I have found that the Trade Mark and the WIRRA WIRRA trade mark are not identical, or substantially identical, the First Requirement is not established. As the Opponent has failed to establish the First Requirement (and must establish all three requirements to succeed under the s 58 ground of opposition), I find that the Opponent has not established the ground of opposition pursuant to s 58.
Section 60
Section 60 provides:
60 Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.
In the SGP the Opponent particularised the s 60 ground of opposition as follows:
The trade mark/s had acquired a reputation before the priority date of the trade mark being opposed.
The Opponent operates Wirra Wirra Vineyards. Wirra Wirra has, over many years, established a significant reputation in Australia and internationally.
The Opponent has continuously used its “WIRRA WIRRA” trade mark in respect of wines in Australia since at least as early as 1973 (for over 50 years). For many years (and since well before the 15 October 2023 Priority Date of the Opposed Trade Mark Application), the Opponent has also used its “WIRRA WIRRA” trade mark in Australia with respect to services associated with the Wirra Wirra Vineyards business including cellar door tasting and retailing services, and café services including the provision of food and drink. The Opponent has also, for many years prior to the Priority Date, sold merchandise such as clothing featuring the “WIRRA WIRRA” trade mark.
In Australia, the Opponent is the proprietor of a number of trade mark registrations for marks consisting of or containing “WIRRA WIRRA” that have an earlier Priority Date than the Opposed Trade Mark Application: Trade Mark Registration Nos. 268980 (Priority Date 31 May 1973), 894837 (Priority Date 14 November 2001), 974329 (Priority Date 15 October 2003), 1761971 (Priority Date 4 April 2016), 2252237 (Priority Date 25 February 2022).[9]
The Opponent also exports its “WIRRA WIRRA” branded wines to numerous countries around the world, and the Opponent is the proprietor of trade mark registrations consisting of or containing “WIRRA WIRRA” in various countries including the United States of America, the European Union, United Kingdom, Canada, Hong Kong, India, China, Japan, the Russian Federation, Singapore, Malaysia, New Zealand and Taiwan.
Before the priority date of the Opposed Trade Mark Application, the Opponent had acquired a significant reputation in its “WIRRA WIRRA” trade mark, both in Australia and internationally, due to the extensive use and promotion of the “WIRRA WIRRA” mark. Consequently, use of the Opposed Trade Mark by the Applicant would be likely to deceive or cause confusion.
[9] For full detail of these trade marks see Annexure A of this decision.
To satisfy s 60 the Opponent must establish that the trade marks upon which it relies had a reputation in Australia at the priority date of the Trade Mark. The Opponent must then establish that because of that reputation, use of the Trade Mark would be likely to deceive or cause confusion.
In McCormick & Co Inc v McCormick, Kenny J asked what is intended by the word ‘reputation’ in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.12F9F[10]
[10] [2000] FCA 1335, [81].
Justice Kenny also referred to the decision of Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG, where Delegate Thompson:
[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under the trade mark and contemplation of the advertising and promotional figures.
As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.
It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.14F11F[11]
[11] (1999) 47 IPR 423, 436.
What constitutes a significant or substantial number of persons in the relevant market must be considered. Justice Heerey in Le Cordon Bleu BV v Cordon Bleu International Ltee provided some guidance:
What is “significant” or “substantial” will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.F12F[12]
[12] [2000] FCA 1587, [91], (albeit in relation to paragraph 28(a) of the now superseded Trade Marks Act 1955 (Cth)), (emphasis in original).
Deller states that the Opponent is a long-established wine business and it has sold its WIRRA WIRRA branded wines directly to customers from its cellar door continuously since 1975, through its website (‘Website’), and through its distribution partners who sell its WIRRA WIRRA branded wine throughout Australia and the world. The Opponent’s Australian distribution partners are Samuel Smith & Son[13] and Negociants,[14] and its overseas distribution partners include distributors in Barbados, Canada, Denmark, Singapore, United Kingdom and the United States of America.[15]
[13] Deller [16], Exhibit MD5.
[14] Deller [16], Exhibit MD6.
[15] Deller [20], Exhibit MD7.
Deller declares that as at the Relevant Date there were over 4,000 retailers across Australia selling WIRRA WIRRA branded wines, including Dan Murphy’s, BWS, Liquorland and Vintage Cellars, and over 2,000 on premise locations including the Melbourne Cricket Club, Crown Perth, Meat & Wine Co and the Stirling Hotel.
Deller attests that over the past 50 years the Opponent has won awards and accolades for its WIRRA WIRRA branded wine and winery. These achievements include inclusion in the Halliday Wine Companion,[16] and recognition as the 2020 and 2021 Global Winner of the Great Wine Capitals “Best of Wine Tourism” Awards.[17]
[16] Deller [22] to [24], Exhibits MD8, MD9, and MD10.
[17] Deller [25], Exhibits MD11 and MD12.
Deller states that the Opponent advertises and promotes it business through its Website,[18] Facebook and Instagram social media accounts.[19]
[18] Deller [28], Exhibit MD14.
[19] Deller [27], Exhibit MD13.
Deller attests that as part of the Opponent’s business, it also sells a range of WIRRA WIRRA branded merchandise including picnic rugs, golf umbrellas, golf balls, wine decanters and mugs.[20] The Opponent has also sold clothing and headgear items featuring the WIRRA WIRRA trade mark for at least 20 years. I have reproduced images of headgear and clothing items featuring the WIRRA WIRRA trade mark below:[21]
[20] Deller, Exhibit MD17.
[21] Deller [37], Exhibit MD17.
As well as selling clothing to customers, the Opponent provides its staff with WIRRA WIRRA branded clothing, and between around 2018 and 2021 the Opponent in collaboration with Swanky Socks ran a promotion campaign involving WIRRA WIRRA branded socks.[22]
[22] Deller [37], Exhibit MD17.
Deller provides confidential Australian sales revenue and advertising expenditure for the financial years 2019/2020 to 2023/2024. The figures include sales revenue relating to the sale of its merchandise for the years between 2014 and 2023, and average sales revenue in respect to clothing for the same period.[23] Deller also provides a selection of invoices dated between 2021 and 2022 for cellar door sales of its WIRRA WIRRA branded clothing and headgear.[24]
[23] Deller, Confidential Exhibit MD15.
[24] Deller [41], Exhibit MD20; Deller 2 [30] Exhibit MD23.
At the Relevant Date the Opponent had sold wine goods and provided winery services under the WIRRA WIRRA trade mark for 50 years. The Opponent’s sales revenue is substantial and supports a positive view of its market penetration across Australia and therefore the esteem or favour in which the WIRRA WIRRA trade mark is held the by consumers.
In regard to the Opponent’s clothing and headgear goods, the Applicant argues that use of the WIRRA WIRRA trade mark on clothing is not trade mark use and relies on the Sport Direct Holdings BV v Reece Pty Ltd (‘Reece’)[25] where Delegate Irgang found that use of a trade mark on employee uniforms or promotional clothing items was a form of advertising or marketing rather than a separate or distinct provision of goods in its own right. I disagree in part. In Reece the clothing items were only sold to employees to wear as a uniform, and unlike in Reece the Opponent has a range of clothing items which it sells directly to the public. I consider consumers are probably at least as likely to be purchasing a rugby jersey featuring the WIRRA WIRRA trade mark because they think it is fashionable as much as they like the wine. As such I find the Opponent’s clothing and headgear goods branded with the WIRRA WIRRA trade mark and sold to the public demonstrates use of the WIRRA WIRRA trade mark. However, I do not find that use of the WIRRA WIRRA trade mark on the Opponent’s staff uniforms or in campaigns amounts to use as a trade mark. Rather, I consider these uses to be a form of advertising the wine goods and/or winery services of the Opponent.
[25] [2015] ATMO 78 (Delegate Irgang).
That said, I do not find that the Opponent has a reputation in relation to clothing and headgear. Deller states that the Opponent has sold merchandise including clothing for 20 years, however the Opponent’s sales revenue from clothing is tiny and the promotion of its clothing goods is limited. Given the limited sales, limited marketing and limited evidence of third-party reputation at the Relevant Date, the requirements of s 60 are not satisfied.
Although I have not found that the Opponent has a reputation in clothing goods which are the same kind of thing as the Applicant’s Goods, it has a substantial reputation in wine goods and winery services and I must consider whether, because of that reputation the use of the Trade Mark would be likely to deceive or cause confusion. There is no requirement that the WIRRA WIRRA trade mark is substantially identical or deceptively similar to the Trade Mark, nor that the goods and/or services of the parties are similar. Nonetheless, resemblance between the parties’ trade marks remain a relevant factor, as noted in Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd12F wherein Delegate Lyons said:
Confusion cannot arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.
What can be said then of section 60 as we now find it is that it comprehends that the trade marks under comparison might be quite dissimilar, and yet, taken in combination with the repute of the opponent’s trade mark (and possibly other factors), deception or confusion is still more likely than not. Put another way, section 60 now contemplates that an opponent may prevail because of the reputation in the mark on which it relies notwithstanding that the trade marks under comparison may even be quite dissimilar. [26]
[26] [2010] ATMO 5, [39]-[40].
In this case the Trade Mark and the Opponent’s WIRRA WIRRA trade mark are similar in that they share the words WIRRA WIRRA, however I consider that the parties consumer bases would be astute to the visual differences in the trade marks, particularly noting the appeal of wine and fashion labels and a consumer’s recollection of the Trade Mark would include the typeface and device element.
In respect of the comparison of goods and services, I have found that the Opponent has a reputation in relation to wine goods and winery services. However, there is no connection between wine and clothing goods which differ in nature and use. Likewise, consumers would not regard the Applicant’s Goods, broadly being children’s clothing products, as a natural or logical extension of the Opponent’s winery services, even if it is commonplace for cellar doors to sell ancillary products such as clothing. While it is possible that a trade mark’s reputation might be so strong that confusion or deception would be likely even where little connection exists between the respective trade marks or the relevant goods or services.[27] I am not satisfied that is the case here.
[27] Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd [2010] ATMO 5, [39]-[40] (Hearing Officer Lyons); Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124, [40] (Hearing Officer Thompson).
In the circumstances, I do not consider that there is a real tangible danger that use of the Trade Mark for clothing goods would be likely to deceive or cause confusion. The Opponent’s reputation is primarily in relation to the provision of wine products and services. The Applicant’s Goods have no connection with the wine goods and services in which the Opponent’s reputation lies. The parties operate in different industries and the different nature and purpose of the Applicant’s Goods from the Opponent’s goods and services are such that it is unlikely that consumers would assume that there is a connection between the Applicant’s Goods and the Opponent.
Section 42(b)
Section 42(b) provides:
42 Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
…
(b) its use would be contrary to law.
The case law on s 42(b) requires the Opponent to show that use of the Trade Mark would be, rather than could or might be, contrary to law.[28] As observed by Rangiah J in Primary Health Care Limited v Commonwealth of Australia:
It is not enough for a party opposing registration to show that s 18 of the ACL [Australian Consumer Law 2010] or s 52 of the TPA [Trade Practices Act 1974] might be contravened. The opponent must prove, on the balance of probabilities, that the provision would be contravened by use of the trade mark.[29]
[28] Advantage Rent a Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).
[29] [2017] FCAFC 174, [411].
Under s 18 of the ACL there would be misleading or deceptive conduct if, in offering the Applicant’s Goods the Applicant were to present either overtly or indirectly[30] an association between itself and the Opponent as by way of approval, endorsement or recommendation.[31] In reviewing the total of the evidence before me I have not found the Applicant has engaged in any such conduct. While the evidence shows that the Applicant promotes its goods under the Trade Mark, there is no evidence that these promotions suggest an association with the Opponent. Furthermore, the Opponent has not provided any evidence of consumers being misled.
[30] Seven Network Ltd v News Interactive Pty Ltd (2004) 63 IPR 28 [32] (Tamberlin J).
[31] As noted in Twentieth Century Fox Film Corp v South Australian Brewing Co Ltd (1996) 34 IPR 225 [242], (Tamberlin J). , the precise nature and content of the association may be difficult to define. See also Subafilms Ltd v Tenancy Management Pty Ltd [2006] ATMO 11 [25] to [27], (Hearing Officer O’Brien).
In relation to s 29 of the ACL it has been held that where a trade mark does not offend s 18 of the ACL, neither will it offend s 29 of the ACL.[32] Section 29 of the ACL prohibits a corporation from making false representations in the course of trade. This is a narrower test than that contained in s 18 and there is nothing in the Trade Mark, nor in the way the evidence shows the Applicant promoting the Applicant’s Goods, to satisfy me any such misrepresentation has been made.
[32] In Pacific Publications Pty Ltd v IPC Media Pty Ltd [2003] FCA 104, Beaumont J considered – in connection with the superseded TPA that ‘the Court’s conclusion on section 52 would necessarily carry with it a conclusion on section 53 (c) and (d).’ Sections 53(c)-(d) of the TPA are the equivalent provisions to ss 29(1)(g)-(h) of the ACL.
For completeness, relief pursuant to the tort of passing off is only possible if there has been some sort of misrepresentation which is likely to damage the Opponent’s association.[33] The Opponent has established neither.
[33] Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506, [40] (Hill J).
Decision
Section 55 provides:
55 Decision
(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
The Opponent has not established any of the grounds of opposition nominated in the SGP. Therefore, trade mark application number 2396535 may proceed to registration not less than one month from the date of this decision. If the Registrar is served with a notice of appeal, I direct that the disposition of the Application should be in accordance with the Court’s order or direction.
Costs
Both parties sought an award of costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Opponent under s 221 in line with Schedule 8 of the Regulations.
Louise Tuohy
Hearing Officer
Delegate of the Registrar of Trade Marks
25 August 2025
Annexure A
The Opponent’s registered WIRRA WIRRA trade marks
| Trade mark number | Filing date | Trade mark | Specification |
| 268980 | 31.5.1973 | WIRRA WIRRA | Class 33: Wine |
| 894837 | 14.11.2001 | WIRRA | Class 33: Wine Class 35: Retailing /wholesaling of alcoholic beverages including wines; sale of wines via the global computer network or by mail order; and cellar door wine sales |
| 974329 | 15.10.2003 | Class 33: Wine | |
| 1761971 | 4.4.2016 | HARRY’S DELI @ WIRRA WIRRA | Class 43: Cafe services; Restaurant services; Providing food and drink; Takeaway food and drink services |
| 2252237 | 25.2.2022 | Class 33: Wine |
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