Sojo Pty Ltd v Butler Diaries Pty Ltd

[2025] ATMO 75

TRADE MARKS ACT 1995

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

Re:Opposition by Sojo Pty Ltd to registration of trade mark application number 2337817 (class 16) – the TRADIE DIARY (figurative) - in the name of Butler Diaries Pty Ltd

Delegate:

Tracey Berger

Representation:

Opponent: Susan Gatford of Counsel instructed by FAL Lawyers

Applicant: One Intellectual Property Pty Ltd

Decision:

2025 ATMO 75

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 44 and 60 considered – s 60 established – trade mark registration refused

Background

1. This is a decision on the opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] brought by Sojo Pty Ltd (‘Opponent’) to registration of the trade mark detailed below filed in the name of Butler Diaries Pty Ltd (‘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:2337817  (‘Application’)

   Filing Date:     27 February 2023       (‘Relevant Date’)        

   Specification: Class 16: Covers for diaries; Desk diaries; Diaries; Diaries (printed matter); Diary cases (adapted for) of leather; Diary covers; Leather covered diaries; Wall charts for use as diaries; School diaries; Desk top planners; Cases for personal planners; Daily planner tables; Executive planners (stationery); Personal planners (office requisites); Planners (printed matter); Wall planners; Year planners (printed matter); Visual event planners; Planners (charts) made of paper; Visual statistical planners; Visual activity planners; Planners (charts) made of plastics materials; Planners (charts) made of cardboard; Covering materials for journals; Double coated journal paper; Journals; Journals (printed publications); Trade journals (printed matter); Journals for the mechanical engineering industry; Journals for the electrical industry; Log books; Address books; Appointment books; Address books being paper articles for writing desks; Birthday books; Book binders; Book covering materials; Book covers; Book jackets; Book wrappings; Books; Books for celebrating important events; Books for holding photographs; Books for holding postcards; Books of delivery notes; Books relating to business; Books relating to financial investments; Business books; Covering materials for books; Covers for address books; Covers for books; Date books; Display books; Duplicate books; Exercise books; Hard bound books; Index books; Indexed books for recording information; Information books; Jackets of paper for books; Jackets of plastic for books; Materials for book binding; Memo books (printed matter); Memo books with pens attached; Memorandum books; Non-fiction books; Note books; Painting books; Paint books (printed matter); Paper for wrapping books; Pocket books (stationery); Photo books; Printed books; Protective jackets for books; Protective covers for books; Protective book covers; Record books (printed matter); Record keeping books; Reference books; Ring book files; Ring books; Rule books; Technical books; Visitors' books; Writing books; Year books (printed matter) 

   (‘Applicant’s Goods’)

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 September 2023, followed by a Statement of Grounds and Particulars (‘SGP’) on 19 October 2023.  The Applicant filed a Notice of Intention to Defend on 10 November 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 February 2024, followed by the Applicant’s evidence in answer (‘EIA’) on 10 May 2024 and concluding with the Opponent’s evidence in reply (‘EIR’) on 9 July 2024.

4. Once the time for filing evidence had ended, both parties requested an oral hearing.  Prior to the hearing the parties filed a written summary of their submissions.  I heard this matter as a delegate of the Registrar of Trade Marks on 27 March 2025.  At the hearing, Susan Gatford of Counsel, instructed by Rhys Munzel of FAL Lawyers, appeared for the Opponent.  Olaf Kretzschmar of One Intellectual Property Pty Ltd appeared for the Applicant.  I make my decision based on the aforementioned materials and submissions of the parties.

   Grounds, onus and Relevant Date

5. The Opponent’s SGP nominates grounds of opposition under ss 42(b), 44, 58A and 60.  The
   s 58A ground of opposition was not pressed.

6. The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[2]  The standard of proof is the ordinary civil standard on the balance of probabilities.[3]

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

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

   and Edelman JJ).

7. The rights of the parties are to be determined at the Relevant Date being the priority date and filing date of the application.

   Evidence

8. The following evidence was filed in the proceedings:

9.     Declarant and Position	Date	Exhibits/Annexures
EIS
Benjamin Robert Goodfellow, Chief Executive Officer of the Opponent (‘Goodfellow’)	13 February 2024	BG-01 to BG-15
EIA
Leona Butler, founder and Managing Director of the Applicant (‘Butler’)	10 May 2024	LB-1 to LB-10
EIR
Benjamin Robert Goodfellow (‘Goodfellow 2’)	9 July 2024	BG-1

Opponent’s evidence

1. Goodfellow declares that the Opponent created the brand TRADIE (‘Opponent’s Mark’) in 2009 and goods were first launched in Woolworths stores in 2010.  The Opponent’s Mark was first used for underwear and socks but is now used for a wide range of products including apparel, footwear, workwear, headwear, notebooks (since November 2020), coolers, sunglasses, paints, beers, energy drinks and tool kits.  The Opponent’s products are stocked in over 3000 stores in Australia including the major supermarkets, hardware stores such as Mitre 10 and Bunnings, national department stores like Myer and BigW and specialty stores including BCF and Totally Workwear.  In addition, the Opponent’s goods are sold online on its website at (‘Opponent’s Website’) and major online retailers including The Iconic, Amazon and eBay.   Details of sales of goods through the Opponent’s Website are outlined in Goodfellow.  The value of retail sales of goods under the Opponent’s Mark in Australia during the last 10 years are very substantial.  In addition to Australia, the Opponent’s goods are also sold in New Zealand and, to a lesser extent, in the United Kingdom and United States of America.  A survey conducted by Channel 9 in November 2019 showed that the Opponent’s Mark was the second most recognized underwear/babywear brand with unprompted awareness and 4 out of 5 people recognised the word TRADIE as indicating the Opponent’s goods when prompted with the word (rather than a logo). 

2. The Opponent’s Mark is promoted on the Opponent’s Website, its social media accounts, on buses, outdoor advertising such as stadium signage and billboards, television, radio, retailers’ catalogues, print media including newspapers and magazines.   Details of this advertising and examples demonstrating this use are provided in Goodfellow.  The Opponent’s confidential marketing spend and annual marketing schedules for 2012-2020 are exhibited.

3. Goodfellow declares that Tradie Holdings Pty Ltd (‘THPL’), an entity related to the Opponent, holds 141 pending and registered trade marks in Australia, including for the Opponent’s Mark.  In particular, the Opponent owns the registrations detailed below (‘Opponent’s Registrations’):

13.     TM Number	Trade Mark (‘Opponent’s Marks’)	Priority Date	Goods
14.     1938038[4]	(‘Opponent’s Logo Mark’)	2/7/2018	Class 16:Various stationary and paper items[5]
15.     2143473[6]	(‘Opponent’s Word Mark’)	24/12/2020	Class 16: Art paper; Paper; Clips for offices (stationery); Files (office requisites); Hole punchers for office use; Staplers (office machines); Labelling machines for office use; Filing cabinets (other than furniture); Stationery cabinets (other than furniture); Storage cabinets (other than furniture) for filing purposes.

[4] This registration is subject to the following endorsement: Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.

[5] The full specification is shown in Annexure A to this decision.

[6] This registration is subject to the following endorsement: Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.

1. Goodfellow 2 criticises the Applicant’s evidence.  It is not necessary to summarise this evidence at this time.

   Applicant’s evidence

2. Butler claims that since December 2013, the Applicant has been providing various diaries, planners, books and book coverings. In around January 2021, the Applicant adopted the Trade Mark ‘as part of a brand extension.  The Applicant conducted some limited searches for adopting the Trade Mark and outlines the results of those searches.

3. Butler declares the Trade Mark has been continuously used since its adoption in relation to the Applicant’s Goods including on its website at and its social media accounts.  The Applicant has also promoted the Trade Mark in a single magazine advertisement as well as by way of Facebook and Google advertisements.  Butler annexes examples of these uses.

   Discussion

   Section 60

4. Section 60 relevantly provides:

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)  another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b)  because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

5. To establish a ground of opposition under s 60, the onus is on the Opponent to demonstrate that:

   i.as at the Relevant Date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons; and

   ii.because of that reputation use of the Trade Mark would be likely to deceive or cause confusion.

   Reputation

6. In McCormick & Co Inc v McCormick (‘McCormick’), Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour considered the definition provided in the Macquarie Dictionary and decided that reputation is ‘the recognition of the [trade mark] by the public generally’.[7] The existence and extent of a trade mark’s reputation must be established as a matter of fact by the Opponent.[8]

   [7] [2000] FCA 1335, [81] (‘McCormick’).

   [8] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J) (‘ConAgra’).

7. In Rodney Jane Racing Pty Ltd v Monster Energy Company, O’Bryan J observed that:

   The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[9] 

   [9] [2019] FCA 923, [83].

8. Further, Kenny J stated in McCormick that:

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product … public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.[10]

   [10] McCormick (n 7), [86].

9. A trade mark’s reputation must be amongst a ‘significant or substantial’ number of Australian consumers, having regard to the relevant market[11] and the nature of the goods or services in question.[12] In the present case, the relevant market is Australian consumers generally. 

   [11] ConAgra (n 8), [15]; Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

   [12] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).

10. The Opponent particularised this ground of opposition in its SGP as follows:

    The Opponent's TRADIE word and logo trade marks have been used (and acquired a reputation) before the priority date of the trade mark being opposed. Opponent's TRADIE brand began in 2009 and has grown into a household name. TRADIE branded products are distributed in some of Australia's largest retailers including BigW, Best & Less, Woolworths, Coles and IGA Supermarkets (Metcash). TRADIE has an extensive reputation in connection with a wide range of goods including, for example, apparel, paper goods including notebooks, and retail services. The Opponent has applied for over 100 trade marks containing or consisting of TRADIE for a wide range of goods and services including for example, trade mark no's 1507040 covering apparel registered since August 2012. The TRADIE brand was first used by the Opponent in relation to various class 16 goods including notebooks from at least January 2021, 2 years before the priority date of the opposed mark.

11. The Opponent pressed the s 60 ground of opposition with respect to the word TRADIE.  The Opponent adduced a considerable amount of evidence which establishes that it has extensively used its mark TRADIE for a wide range of products that are readily available in a diverse range of stores and online for many years before the Relevant Date.  The mark TRADIE is predominantly used in the form of the Opponent’s Word Mark although it is also used to a lesser extent in the style of the Opponent’s Logo Mark.  The word TRADIE is the sole word element and the memorable part of the Opponent’s Logo Mark.  Further, the other elements of the Opponent’s Logo Mark reinforce the recollection of the word TRADIE.  It is necessary for the Opponent to establish a reputation in each mark on which it relies.  Although some of the Opponent’s evidence relates to use of the Opponent’s Logo Mark, I consider that use of the Opponent’s Logo Mark, whilst not directly relevant, would contribute to reputation in TRADIE.  Accordingly, my discussion is focused on whether the word mark TRADIE had acquired a reputation at the Relevant Date but I have had regard to the Opponent’s evidence of use of TRADIE, the Opponent’s Word Mark and to some extent, the Opponent’s Logo Mark.

12. Sales of the Opponent’s Goods are very substantial with hundreds of thousands of dollars in revenue generated though sales on the Opponent’s Website in March 2021 alone.  The sales figures at Confidential Exhibit BG-6 of Goodfellow demonstrate significant year on year growth.  The Opponent has expended millions of dollars advertising the Opponent’s Goods and has promoted the TRADIE brand without reference to specific products such as at stadiums for Australian Football League and National Rugby League games.[13]  In my view, it is likely that the Opponent’s national advertising campaigns on television, public transport vehicles, radio, digital and print mediums would have reached a significant proportion of the Australian public.  The Opponent’s TRADIE mark also has a strong online presence through the Opponent’s social media accounts (with some Instagram posts receiving over 2 million impressions) and the Opponent’s Website.  In addition, awareness of the TRADIE brand has been further elevated by advertisements featuring former Australian rugby union player and reality television personality Nick ‘the Honey Badger’ Cummins and on the television show Love Island[14].  I am satisfied that the Opponent’s  mark TRADIE had developed a reputation in Australia before the Relevant Date amongst a significant proportion of the relevant market.

    [13] Goodfellow, Exhibit BG-12.

    [14] Goodfellow, Exhibit BG-10.

13. The Applicant conceded that the TRADIE brand is well known and had developed a reputation but submits that the reputation does not extend to class 16 goods.  I agree with the Applicant.  It is apparent from Goodfellow that sales of the Opponent’s notebooks were not widespread at the Relevant Date.[15]  Although much of the EIS shows use of TRADIE for clothing, it is apparent that there has also been longstanding use for retailing services since 2013 and significant use of TRADIE for other goods such as toiletries which have featured in bus advertisements and the catalogues of third party retailers.

    [15] Goodfellow, Exhibit BG-15.

14. On my assessment of the Opponent’s evidence, the brand TRADIE had acquired a reputation in Australia at the relevant date for retailing services; clothing, particularly underwear, and to a lesser extent in other products such as shoes and toiletries.

    Likelihood of deception or confusion 

15. Pursuant to s60(b), the ground of opposition is only established if there is a causal connection between the reputation of the Opponent’s Trade Marks and the likelihood that use of the Trade Mark will deceive or cause confusion.

16. The likelihood of deception or confusion between trade marks requires consideration of the notional use of the opposed trade mark in a normal and fair manner in respect of the goods the subject of the trade mark application.[16]  The use of a trade mark will be likely to cause confusion if its use would result in people being caused to wonder whether its goods derive from the same source as the mark having a reputation.[17]

    [16] Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43, [11] (Mason J).

    [17] Registrar of Trade Marks v Woolworths [1999] FCA 1020, [50] (French, Branson and Tamberlin JJ).

17. It was noted in Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi[18] that:

    The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.

    [18] [2012] ATMO 124, [40] (Hearing Officer I. Thompson).

18. With respect to the similarity of the marks, the Opponent relied on its s 44 submissions that the marks are deceptively similar in that the term TRADIE is the dominant element of the Trade Mark and most likely to be recalled by consumers.  In the Trade Mark, the element ‘the’ appears in lower case thereby emphasising the words TRADIE DIARY with ‘diary’ being descriptive of many of the Applicant’s goods.  The safety hat and pencil device elements of the Trade Mark merely reinforce the recollection of the word TRADIE.  The Opponent argued that the present situation is analogous to that in Sojo Pty Ltd v SaltashPty Ltd[19] where the mark  was found to be deceptively similar to the Opponent’s registered mark Tradie.  The Applicant argued that ‘tradie’ refers to a group of people (ie. tradespeople) to whom the goods are directed, and that this descriptive element should be discounted in a comparison of the marks particularly given that tradespeople are more likely to compare brands.  In my opinion, whilst there is no requirement that the marks in question be deceptively similar under s 60, I agree with the Opponent that the word TRADIE is the most distinctive element of the Trade Mark and the additional words of the Trade Mark are non-distinctive.  Although the Applicant may be intending to direct its products to tradespeople, I must consider the notional use of the mark which may be made and hence, like the Opponent’s products, the goods in question may be directed to Australian consumers generally.  Further, whilst the device elements provide a point of distinction, these elements serve to reinforce the dominant cognitive cue TRADIE of the Trade Mark which is identical to the mark in which I have found a reputation exists.

    [19] [2022] ATMO 1941 (Hearing Officer B. Knowles).

1. I have found that there is a strong reputation in the mark TRADIE for clothing which goods are not similar to the Applicant’s Goods.  However, the Opponent has demonstrated that since its adoption of the mark in 2009, it has expanded its use of TRADIE to a wide range of goods including coolers, sunglasses, paints, beer, energy drinks, tools and notebooks.  Many of the Opponent’s products, including those in which TRADIE has a reputation, will be sold through the same trade channels to the same class of consumers as the Applicant’s Goods.  In my view, consumers seeing the Applicant’s Goods bearing the Trade Mark will be caused to wonder whether those goods derive from the Opponent.

2. Taking the above factors into consideration and given the strength of the reputation in the Opponent’s TRADIE mark, I am satisfied that there is a real and tangible risk that use of the Trade Mark for the Applicant’s Goods will cause confusion.  The s 60 ground of opposition is established.

   Decision

3. Section 55 of the Act relevantly provides:

   (1)  Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

   (a)  to refuse to register the trade mark; or

   (b)  to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

4. The Opponent has established a ground of opposition under s 60.  Accordingly, I refuse to register trade mark number 2337817.  This refusal will be recorded one month from the date of this decision unless the Registrar of Trade Mark is served with a notice of appeal.  If an appeal is filed, the disposition of the application shall be in accordance with the Court’s order or direction.

5. Both parties requested an award of costs. As costs generally follow the event, I award costs against the Applicant in accordance with s 221 in the amounts outlined in Schedule 8 of the Regulations.

   Tracey Berger

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   29 April 2025

   ANNEXURE A

TM Number	Trade Mark	Goods
1938038	Class 16: Binder inserts (stationery); Binders (stationery); Boxes for stationery use; Business forms (stationery); Cabinets for stationery (office requisites); Chalk being articles of stationery; Clips for paper (stationery); Forms (stationery); Marking pens (stationery); Multiple files (stationery); Note blocks (stationery); Office stationery; Office supplies (stationery); Organisers (stationery); Paper files (stationery); Paper stationery; Signs (stationery); Spiral bound pads of paper (stationery); Spiral pads (stationery); Staples for stationery purposes; Stapling machines for stationery use; Stationery; Stationery goods; Stationery materials; Stationery paper; Booklets; Bound notebooks; Notebooks; Pocket notebooks; Marker pens; Pens (office requisites); Pens (writing instruments); Pencils; Drawing rulers; Rulers (other than for measuring); Pencil sharpeners; Drawing paper; Graph paper; Office paper products; Office requisites made of paper; Paper