Tourism NT v Adelaide City Caravans Pty Ltd
[2025] ATMO 95
•10 May 2021
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Tourism NT to registration of trade mark application number 2177340 (class 12) – KAKADU CARAVANS (figurative) - in the name of Adelaide City Caravans Pty Ltd
Delegate: | Tracey Berger |
Representation: | Opponent: HWL Ebsworth Applicant: Wrays |
Decision: | 2025 ATMO 95 Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 41, 42(b), 43, 44, 58 and 60 – deceptively similar trade mark in respect of similar goods but s 44(3)(a) applies – no other ground of opposition established – trade mark to proceed to registration |
Background
This is a decision on the opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] brought by Tourism NT (‘Opponent’) to registration of the trade mark detailed below filed in the name of Adeliade City Caravans Pty Ltd (‘Applicant’):
Trade Mark: (‘Trade Mark’)
Number:2177340 (‘Application’)
Filing Date: 10 May 2021 (‘Relevant Date’)
Specification: Class 12: Caravans; Mobile homes (caravans); Vehicles in the nature of caravans (‘Applicant’s Goods’)
Endorsement: Provisions of paragraph 44(3)(a) and/or Reg 4.15A(3)(a) applied.
[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.
Following the advertisement of acceptance of the application for possible registration, the Opponent filed a Notice of Intention to Oppose the registration on 14 December 2022, followed by a Statement of Grounds and Particulars (‘SGP’) on 21 December 2022 (which was subsequently amended). The Applicant filed a Notice of Intention to Defend on 6 March 2023.
The parties then had an opportunity to file evidence in accordance with the Regulations. The Opponent filed evidence in support (‘EIS’) on 5 June 2023. After a cooling off period, the Applicant filed evidence in answer (‘EIA’) on 23 May 2024 followed by the Opponent’s evidence in reply (‘EIR’) on 2 August 2024.
Once the time for filing evidence had ended, both parties requested a hearing by way of written submissions. The Opponent’s written submissions were prepared by Michelle Betschart of HWL Ebsworth and filed on 3 February 2025. The Applicant’s written submissions were prepared by Kate Maynard of Wrays and filed on 11 February 2025. I am a delegate of the Registrar of Trade Marks and this matter has been allocated to me to determine. I make my decision based on the aforementioned materials and submissions of the parties.
Grounds, onus and Relevant Date
The Opponent’s SGP nominates grounds of opposition under ss 41, 42, 43, 44, 58, 58A and 60. The Opponent noted in its EIS that the s 58A ground of opposition is not pressed and I treat this ground as abandoned.
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).
The rights of the parties are to be determined at the Relevant Date being the priority date and filing date of the application.
Evidence
The following evidence was filed in the proceedings:
| Declarant and Position | Date | Exhibits/Annexures |
| EIS | ||
| Scott Lovett, Deputy Chief Executive Officer of the Opponent (‘Lovett’) | 1 June 2023 | 1 to 18 |
| EIA | ||
| Michael Steindorf, sole Director of the Applicant (‘Steindorf’) | 23 May 2024 | KC-0 to KC-9 |
| EIR | ||
| Scott Lovett (‘Lovett 2’) | 1 August 2024 | 1 |
Opponent’s evidence
The Opponent is a statutory authority under the guidance of the Minister for Tourism and Hospitality of the Northern Territory (‘NT’). It is tasked with promoting the NT as a tourism destination to end consumers (‘Opponent’s Consumer Services’), supporting the sustainable growth of the tourism industry in the region and providing promotional support to NT tourism businesses (‘Opponent’s Corporate Services’).
Lovett declares that in around 1982, the Opponent adopted the image of the wetland bird known as a brolga to promote tourism in the NT. The Opponent is the registered owner of a number of Australian trade mark registrations including or consisting of the image of a brolga (referred to as ‘Opponent’s Marks’) as set out in Annexure A. The Opponent claims that the Opponent’s Marks are used in relation to a wide range of goods and services including advertising and promotional material relating to tourism, electronic publications, merchandise, retail services, travel agency services, event management and the hosting of cultural and entertainment events, and advisory services relating to tourism and accommodation in the NT.
The Opponent’s Consumer Services are offered at its website at where the Opponent promotes the NT as a tourism destination and provides access to travel deals and offers. Lovett attests that one of the Opponent’s Marks appears on most, if not every, page of this website. The Opponent’s Corporate Services are offered under the Opponent’s Marks at At this website, the Opponent provides access to business support guides, funding and assistance in relation to the provision of tourism services in the NT. Extracts from these websites , obtained using the Wayback Machine, are provided.
The Opponent’s Marks are used on its goods, social media accounts, marketing collateral promoting its goods and services, media campaigns promoting tourist attractions in the NT, uniforms, stationery and merchandise. Lovett exhibits examples of these uses. The Opponent estimates that it distributes about 20,000 brochures and 500 merchandise items annually bearing the Opponent’s Marks including to travel agents and tourism service providers. Lovett also attests to various awards it has received for advertising campaigns featuring the Opponent’s Marks.
In addition, the Opponent authorises tourism operators in the NT to use the Opponent’s Marks. Lovett declares that the Opponent has authorised over 40 tourism operators to use the mark . These authorised users include Tobermorey Station, a working cattle station in the NT, which provides caravan parking and campsites and NT 4x4 Hire which provides tourism services.
The Opponent receives government funding to carry out its activities and has provided details of the funding received from the Department of Industry, Tourism and Trade. Lovett exhibits some of the Opponent’s budget highlights on how this funding is spent and its estimated marketing expenditure for promoting the Opponent’s goods and services since 2005.
Lovett declares that Kakadu is a geographic location in the NT covering Kakadu National Park. According to Lovett, based on his review of the Applicant’s website, the Applicant has no connection with the location of Kakadu.
Much of Lovett 2 comments on the Applicant’s evidence or is in the nature of submissions and it is not necessary to summarise that information here. However, I note that Lovett 2 exhibits the results of a 2017 market research survey of 500 participants into consumer recognition of the 28 Mark (‘Opponent’s Survey’) whereby 4 out of 5 participants associated this mark with the Northern Territory.
Applicant’s evidence
Steindorf declares that he first started selling KOKODA caravans in 2014. After Kokoda went into liquidation in 2019, Steindorf decided to establish his own brand of caravans. He wanted his brand to be Australian and, inspired by the ‘pleasing alliterative sound’ of KOKODA, Steindorf declares that he chose KAKADU for his brand because it represented the rugged outdoors, had an appealing connotation and was phonetically pleasing. He wanted to incorporate the image of a bird as he felt that ‘birds represent freedom, peace and tranquility, which is something most caravanners seek and share when travelling’.
The bird device was created by a graphic designer whose brief was to include the image of a bird without specifying any particular bird. Steindorf declares that he did not think of the Opponent or the Opponent’s Marks because their tourism promotion was unconnected to his own business, and that he was more concerned with ensuring that his bird device was dissimilar to those used by others in his industry.
In April 2019, the Applicant sold his first caravan under the Trade Mark and the Applicant has now sold caravans under the Trade Mark in every Australian State and Territory. Steindorf declares that he promotes the Applicant’s Goods at caravan shows and is a member of Caravan and Camping SA. Otherwise, sales generally result from referrals or existing customers trading up to new models.
Steindorf declares that the Application did not encounter any objections based on the Opponent’s Marks but other citations were raised by an examiner during the examination of the Trade Mark. Steindorf exhibits a copy of the declaration about the Applicant’s use of the Trade Mark which was filed to overcome these objections.
The Applicant operates a Kakadu Caravans owners group (‘Owners Group’) which consists of about 800 members. The Owner’s Group is primarily run through Facebook and meets annually. The Applicant and its Owners Group have been featured in various television shows as detailed in Steindorf.
The Trade Mark is also promoted in third party social media posts and on the Applicant’s website. Google and website analytics are provided for the Applicant’s website from January -September 2023 together with summaries from the Applicant’s marketing company about the website traffic and top enquiries conducted by consumers.
Most of the remainder of Steindorf comments on the Opponent’s evidence and differences in the Opponent’s Marks and the Trade Mark. Steindorf also declares that he is not aware of any instances of confusion between use of the Trade Mark and the Opponent’s Marks.
Discussion
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.
(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.
Even if I find that a ground for opposition is established, the Applicant may still be entitled to registration of the Trade Mark if it has established honest concurrent use of its mark under
s 44(3)(a), other circumstances justifying registration of the Trade Mark under s 44(3)(b) and/or prior continuous use of its mark since before the priority date of any relevant prior mark covering similar goods or services under s 44(4). The Applicant claims to have used the Trade Mark from April 2019, after the priority date of the marks relied on by the Opponent referred to below and hence ss 44(4) is not relevant in the present case.In its SGP, the Opponent nominated the Opponent’s Marks and the following trade marks:
| Number | Trade Mark | Owner | Priority Date | Class & Relevant Goods |
| 989830 | KAKADU (‘Toyota Mark’) | Toyota Motor Corporation Australia Limited | 23 Feb 2004 | Class 12: including motor vehicles |
| 1207412 (’12 Mark’) | KAKADU NATIONAL PARK | Director of National Parks | 29 Oct 2007 | 3, 6, 9, 12 (including land vehicles and all terrain vehicles), 16, 18, 20, 21, 24, 25, 26, 28, 29, 30, 35, 39, 41 & 43 |
| 1207415 (’15 Mark’) | Director of National Parks | 29 Oct 2007 | 3, 6, 9, 12 (including land vehicles and all terrain vehicles), 16, 18, 20, 21, 24, 25, 26, 28, 29, 30, 35, 39, 41 & 43 | |
| 1207417 (’17 Mark’) | Director of National Parks | 29 Oct 2017 | 3, 6, 9, 12 (including land vehicles and all terrain vehicles), 16, 18, 20, 21, 24, 25, 26, 28, 29, 30, 35, 39, 41 & 43 |
Collectively, the above three trade marks in the name of the Director of National Parks are referred to as the ‘DNP Marks’.
For the Opponent to succeed on the s 44 ground of opposition, the nominated trade marks must meet the following requirements:
be in the name of a person other than the Applicant (‘first requirement’);
have a priority date which is earlier than the Relevant Date (‘second requirement’);
cover goods and/or services which are either similar and/or closely related to the Applicant’s Goods (‘third requirement’); and
be substantially identical with, or deceptively similar to, the Trade Mark (‘fourth requirement’).
All of the marks nominated by the Opponent meet the first two requirements.
Similar goods and closely related services
In relation to the third requirement, s 14 provides that two sets of goods are similar if they are the same or of the same description. The factors to be considered are the nature of the goods, their uses and the trade channels through which they are bought and sold.[4]
[4] Jellinek's Application (1946) 63 RPC 59 (Romer J).
The Toyota Mark covers ‘motor vehicles’ which term is defined as ‘a road vehicle driven by a motor, usually an internal-combustion engine, as a car, motorcycle, or the like’.[5] This definition includes caravans and hence I consider that the goods of the Toyota Mark encompass the Applicant’s Goods.
[5] Macquarie Dictionary (online at 2 May 2025) ‘motor vehicle’.
Similarly, the class 12 goods of the DNP Marks include land vehicles. Again, this item encompasses the Applicant’s Goods.
In relation to the Opponent’s Marks, the Opponent’s written submissions focus on registration 1902747 (‘Opponent’s Brolga Device’). As this mark is most similar to the Trade Mark, if the s 44 ground is not established in relation to this mark, it will not be established in relation to the Opponent’s other marks.
The Opponent claims that registration 1902747 covers services which are closely related to the Applicant’s Goods in particular, its class 39 services ‘chartering of land vehicles, provision of car hire; providing information, consultancy and advisory services, including online about the aforesaid services’ and ‘provision of camp ground facilities’ in class 43 (‘Opponent’s Registered Services’). It is the Opponent’s contention that there is a particularly high risk of confusion in the NT because of the association of the Opponent’s Brolga Device with the Opponent and hence consumers will assume an association between the Applicant’s Goods and the Opponent’s Registered Services.
The words ‘closely related’ are not defined in the Act. Justice French noted in Registrar of Trade Marks v Woolworths Ltd:
The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related” … it is a term of wider import than “similar” and can apply to the relationships between competing services as well as between goods and services.[6]
[6] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [37] (French J) (‘Woolworths’).
The evaluation as to whether specific goods and services are closely related is likely to depend on evidence.[7]
[7] Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods [2023] FCA 487, [48] (Kennett J) .
The delegate in Re Aussat Pty Ltd[8] noted a number of questions to be considered including:
[8] [1993] ATMO 55 (Hearing Officer I. Thompson).
·are the goods and services of matching technical complexity?
·is the technical training of the people who make the goods or provide the services the same?
·do the people who make the goods or provide the services belong to the same unions or associations?
·are there personnel who are implicit in the provision of the service, or a necessary ancillary to the provision of it, who are viewed by the ordinary person as having the essential expertise in common to the provision of either the goods or services?
·do the goods usually have this service as a related service agreement or package?
·is the nature of the goods or the service such that they would cease to exist without each other, thus creating an expectation of a common source?
·does the service consist of altering, matching and/or installing the goods to a customer's or client's requirements?
·are the goods and services commonly offered by the one company or organisation?
·are the goods a necessary adjunct to a particular service or the only tangible result of it?
In my opinion, when the above factors are considered, the Applicant’s Goods are not closely related to the Opponent’s Registered Services. There is no evidence before me that providers of car hire, vehicle charter services or camping ground facilities also manufacture and sell caravans. Whilst caravan owners may rent a space at a camping ground for a holiday, they would not expect to purchase a caravan from the camping ground provider. Some caravan parks may rent caravans to tourists but again, I do not believe that consumers would expect to be able to purchase a caravan from the camp ground provider. The rental of a caravan at a camping facility amounts to the provision of temporary accommodation. In my view, purchasers of caravans are likely to be discerning consumers who conduct appropriate research before purchasing such a vehicle and it is improbable that they would look to buy a caravan from a provider of car hire, vehicle charter services or camping ground facilities or vice versa.
However, the Opponent’s registration 1902747 also cover ‘retailing’. This broad claim would include retailing of caravans. It is my understanding that the manufacturers of caravans are also often engaged in the retail of such goods particularly as caravans are often customisable. In my view, the Applicant’s Goods are closely related to the retailing services of registration 1902747.
Having found that some of the marks nominated by the Opponent cover similar goods or closely related services to the Applicant’s Goods, I turn to the fourth requirement.
Substantially identical or deceptively similar
The Opponent argues that is brolga device which is the subject of registration 1902747 is substantially identical to the Trade Mark.
The assessment of substantial identity was identified by Windeyer J in Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited 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.[9]
[9] (1963) 109 CLR 407, 415.
It is quite clear when the two marks in question are depicted side by side (as set out below) that there is not a total impression of resemblance with the two bird devices orientated differently, the bird in the Trade Mark having a longer neck and shorter wings as well as the Trade Mark including the words KAKADU CARAVANS. These obvious differences are such that the marks are not substantially identical.
| Opponent’s Mark | Trade Mark |
The Opponent does not argue that the Toyota Mark or DNP Marks are substantially identical to the Trade Mark and it is apparent on a side by side comparison of the marks that there is not a total impression of resemblance. The Trade Mark contains a bird device and the additional word CARAVANS which distinguishes it from the Toyota Mark. Likewise, the bird device and the word CARAVANS are obviously different from the words NATIONAL PARK and the device element of the 15 and 17 Marks. The Trade Mark is not substantially identical to any of the earlier marks relied on by the Opponent.
Therefore, the question is whether the Trade Mark is deceptively similarity to the Toyota Mark, the DNP Marks and/or the Opponent’s Brolga Device. Section 10 provides that ‘a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion’.
In Australian Woollen Mills Ltd v F S Walton & Co Ltd, Dixon and McTiernan JJ explained:
... in the end, it becomes a question of fact for the court to decide whether in fact there is such a reasonable probability of deception or confusion that the use of the new mark and title should be restrained... ...In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part.[10]
[10] [1937] HCA 51; (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ).
The respective trade marks must be compared as wholes,[11]having regard to essential or distinguishing features,[12] and considering the marks visually and aurally, and in the context of the relevant surrounding circumstances.[13]Any reputation of a trade mark or an owner is not relevant.[14] What must be considered is the overall impression that the notional buyer, being a person of ordinary intelligence and memory, would likely have of the Trade Mark and each of the earlier marks, having regard to the look, sound, and ideas conveyed by the respective marks, and allowing for imperfect recollection.[15]
[11] Woolworths (n 6) [50]. See also, Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] FCA 901, [78] (Bennett J).
[12] Crazy Ron’s Communications v Mobileworld Communications [2004] FCAFC 196, [77]-[88] (Moore, Sackville and Emmett JJ) (‘Crazy Ron’s’).
[13] New South Wales Dairy Corporation v Murray Goulburn Co-operative Co Ltd [1989] FCA 124; (1989) 86 ALR 549, 589 (Gummow J).
[14] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA8,[50] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).
[15] Jockey International Inc v Darren Wilkinson [2010] ATMO 22 (Hearing Officer J. Spence).
In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (‘Southern Cross’), Kitto J noted the following regarding the risk of deception or confusion:
While a mere possibility of confusion is not enough - for there must be a real, tangible danger of its occurring - it is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough if the ordinary person entertains a reasonable doubt.[16]
[16] (1954) 91 CLR 592, 594 (‘Southern Cross’).
The Toyota Mark consists of the word KAKADU which is wholly contained in the Trade Mark. Whilst this is not necessarily sufficient to render two marks deceptively similar, it is the first word of the Trade Mark and appears to be adapted to distinguish the goods in question. The two marks are visually, aurally and connotatively similar. Taking into account the imperfect recollection of consumers, the descriptive word CARAVANS and the bird device in the Trade Mark are insufficient to avoid a likelihood of confusion with the Toyota Mark.
With respect to the DNP Marks, each of these marks and the Trade Mark include KAKADU as an essential element, which is the word that is emphasised in the 15 and 17 Marks appearing in a bold, thicker font than the words NATIONAL PARK. Although the words NATIONAL PARK are not particularly distinctive, I believe that they are likely to be recalled by consumers as they reinforce the meaning of the word KAKADU being Kakadu National Park. Visually and phonetically the DNP Marks are different to the Trade Mark. I am not satisfied that there is a real tangible danger of confusion between the Trade Mark and the DNP Marks.
In terms of the Opponent’s Brolga Device, there is a degree of similarity between this registered mark and the device element of the Trade Mark in that both devices are arguably depictions of a brolga. However, this is where the similarity ends with the device in the Trade Mark having much shorter and thicker wings, and positioned and orientated differently. More significantly, the essential feature and memorable element of the Trade Mark is alliterative words KAKADU CARAVANS. In my view, this is the impression that consumers will hold in their minds. Whilst consumers might recall that the Trade Mark also contains a bird device, even though they are unlikely to remember the specific differences between the two devices, I do not think that consumers seeing the Trade Mark used for the Applicant’s Goods will call to mind or assume any association with the Opponent’s Brolga Device for retailing services. I am satisfied on the balance of probabilities that the Trade Mark is not deceptively similar to the Opponent’s Brolga Device. Hence it follows that the Trade Mark is not deceptively similar to any of the Opponent’s Marks.
I have found that the Opponent has established a ground of opposition under s 44(1) with respect to the Toyota Mark. I now turn to a consideration of whether the Applicant is entitled to registration under s 44(3).
Honest concurrent use
It has long been settled that the factors to be considered in determining whether an application should be allowed on the basis of honest concurrent use are:
i.The honesty of the concurrent use;
ii.Extent of the use;
iii.Likelihood of confusion;
iv.Whether there have been instances of actual confusion; and
v.The relative inconvenience of the parties if the trade mark is registered or refused.[17]
[17] Alex Pirie & Sons Ltd’s Application (1932) 49 RPC 195; (1933) 50 RPC 147, 159–60 (Lord Tomlin); Re Fitton’s Application (1949) 66 RPC 110, 112 (UK Reg).
The Opponent challenges the honesty of the Applicant’s adoption of the Trade Mark and argues that 2 years use before the Relevant Date is insufficient to justify acceptance. The Applicant declares that it wanted an Australian brand with a ‘pleasing alliterative sound’ like KOKODA and hence settled on KAKADU. Steindorf declares that he ‘checked the Internet for any Kakadu caravans in Australia which produced no results’ so proceeded to register KAKADU CARAVANS as a business name and domain name. He also explains in Steindorf, the reason for the adoption of a bird device and that he chose the Trade Mark from one of a number created by a graphic designer.
As Kenny J observed in McCormick & Co Inc v McCormick (‘McCormick’),[18] ‘the honesty of concurrent use refers to commercial honesty, which differs not from common honesty’.[19] The Applicant has explained the basis for the adoption of the Trade Mark and undertaken some due diligence to determine the availability of the Trade Mark. Whilst these searches could have been conducted more broadly, I am satisfied that the Applicant honestly adopted the Trade Mark.
[18] [2002] FCA 1335 (‘McCormick’).
[19] Ibid [32] citing In Re Parkington & Co Ltd’s Application (1946) 63 RPC 171, 182 (Romer J).
There is no minimum period of concurrent use that is required under the Act.The Applicant used the Trade Mark for just over 2 years prior to the Relevant Date. Whilst this is a relatively short period of time, the Applicant has sold millions of dollars’ worth of its goods during that time throughout Australia and sales have increased year on year. The Applicant is not aware of any instances of confusion and the owner of the Toyota Mark has not opposed registration of the Trade Marks, despite the Toyota Mark being registered for almost 15 years before the adoption of the Applicant. Further, caravans and vehicles are relatively expensive products which I believe are generally purchased by discerning consumers who conduct appropriate research, which lessens the risk of any confusion. Accordingly, in all the circumstances, I am satisfied that the relative inconvenience of the parties favours the Applicant and that the Applicant is entitled to registration under the provisions of s 44(3)(a). Therefore, the s 44 ground of opposition is unsuccessful.
Section 58
Section 58 allows for opposition to a trade mark on the grounds that the applicant is not the owner of the trade mark. The term ‘owner’ is not defined in the Act. However, it is well established that in the absence of fraud, the owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application for it in Australia, whichever is the earlier.
The Opponent must establish the following three factors to succeed on this ground:
i.the trade mark relied upon by the Opponent is identical or substantially identical with the Trade Mark;[20] and
the Applicant’s Goods are the ‘same kind of thing’ as the goods for which the trade mark relied upon by the Opponent has been used;[21] and
a person (other than the Applicant) has the earlier claim to ownership based on use, of the trade mark relied upon by the Opponent, prior to the application to register the Trade Mark or any actual use of the Trade Mark (whichever is the earlier).[22]
[20] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [62] (Gummow J).
[21] Re Hick’s Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636, 640 (Holroyd J).
[22] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).
In its SPG, the Opponent claims that the Trade Mark is substantially identical to the Opponent’s Marks but in its submissions, it relies only on registration 1902747. I have already found at [43] that the Trade Mark is not substantially identical to the brolga device which is the subject of registration 1902747. Moreover, I do not regard the Applicant’s Goods as the ‘same kind of thing’ as the services of registration 1902747.
The s 58 ground of opposition fails.
Section 60
Section 60 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.
The Opponent particularised this ground of opposition in its SGP as follows:
The Opponent commenced use of its Brolga brand in Australia since as early as the 1980’s.
The Opponent’s Brolga brand has, since the 1980’s, been used across Australia in respect of a wide range of tourism-related goods and services such as printed publications, clothing, retailing and advertising, the provision of travel information, hotel and tourist accommodation services and the like.
As a result of the Opponent's significant use of its Brolga brand and the Opponent marks across Australia for over 40 years, the Opponent has acquired a significant reputation in its Brolga branding and the Opponent marks in relation to a plethora of tourism-related goods and services.
The Opponent's use of its Brolga branding since the 1980’s, as well as the Opponent marks, predates the 10 May 2021 priority date of the Opposed Application.
By virtue of the Opponent's significant reputation in its Brolga brand and the Opponent marks, acquired prior to the priority date of the Opposed Application, the use by the Applicant of the Opposed Application for goods related to the Opponent's goods and services represents a real and tangible danger of deception and confusion amongst consumers.
Accordingly, I must first decide whether there was a reputation in any of the Opponent’s Marks in Australia at the Relevant Date and if so, whether as a result of that reputation, use of the Trade Mark is likely to deceive of cause confusion. The Opponent must establish a reputation in each of the marks on which it relies[23] and there is no requirement that the Opponent’s Mark(s) in which it claims a reputation are deceptively similar to the Trade Mark.
[23] Qantas Airways Ltd v Edwards (2016) 338 ALR 134, [160] (Yates J)
Reputation
The meaning of reputation was considered by Kenny J in McCormick to refer to ‘the recognition of the [trade mark] by the public generally’.[24]For the purposes of s 60, reputation must be established as a matter of fact by the Opponent[25] and must be amongst a ‘significant’ or ‘substantial’ number of Australian consumers[26] although this is tempered by the nature of the relevant market.
[24] McCormick (n 18) [81].
[25] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [77] (Lockhart J).
[26] See Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).
The reputation of a trade mark may be demonstrated in a variety of ways. For example, it may be established by demonstrating a significant number of people are exposed to a trade mark,[27] or inferred from a high volume of sales,[28] advertising expenditure or other promotion.[29]
[27] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).
[28] McCormick (n 18), [86].
[29] Ibid.
In support of its claim to a reputation, the Opponent argues that the use of a brolga device since the 1980s, and the continuous use by the Opponent of all of the Opponent Marks, means the device of a brolga in mid-flight has effectively become recognised as the unofficial fauna emblem of the Northern Territory. The Opponent points to the Opponent’s Survey and notes that 100% of the Northern Territory survey participants had seen the surveyed mark before, 97% of those people associated the 28 Mark with the Opponent and of all survey participants, 50% recalled seeing the image before and associated it with the NT. The Opponent contends that the survey results and use of the Opponent’s Marks as set out in Lovett establish a significant reputation in ‘the brolga bird device for tourism related services’ including:
Class 39: Travel agency services; travel services; tourism services; itinerary planning; chartering of land vehicles, aircraft and boats; provision of car hire; providing information, consultancy and advisory services, including online, about the aforesaid services
Class 43: Travel and tourist agency services for the arranging, planning and booking of accommodation including temporary accommodation; provision of camp ground facilities; providing information, consultancy and advisory services, including online, about the aforesaid services (‘Opponent’s Relevant Services’).
It is the Applicant’s position that the Opponent’s evidence does not demonstrate a reputation in a brolga device solus (as represented in the 47 Mark) but rather in combination with various other elements. In this regard, the Applicant notes that the Opponent’s Survey was conducted to ascertain recognition of the 28 Mark. Survey participants were not asked about a brolga device generally and its association with the Opponent or NT so any inference to be drawn from that survey relates only to the 28 mark and not the 47 Mark.
In my view, virtually all of the Opponent’s evidence illustrates use of the 28 Mark (or slight variations) often in combination with different words such as NT, NORTHERN TERRITORY, NORTHERN TERRITORY TOURISM, or in the form of one of the Opponent’s Marks such as the 86 Mark. The Opponent’s use of the 28 Mark in various forms has been longstanding and the Opponent receives significant funding to promote the NT as a tourism destination. It spends a substantial proportion of this funding on advertising and promoting its tourism related services under the 28 Mark (or a variation of that mark) on television, in printed advertising, online, radio as well as through travel agents and tourism operators. The Opponent’s 28 Mark has also been promoted on the reality show The Amazing Race, the 2019 movie Top End Wedding and the competition Million Dollar Fish. The Opponent’s survey demonstrates that the 28 Mark is recognised by consumers, particularly those from the NT. I am satisfied on my assessment of the Opponent’s evidence that the 28 Mark had a reputation in Australia at the Relevant Date. However, I believe that the reputation in the 28 Mark is limited to the promotion of the NT as a tourist destination. The evidence does not demonstrate a reputation in all of the Opponent’s Relevant Services. In my view, the Opponent’s evidence does not provide any metrics or documentary proof that the 28 Mark or any of the Opponent’s other marks have been extensively used in relation to the Opponent’s Relevant Services or any services other than promoting the NT as a tourist destination. I am not satisfied by the evidence that Opponent’s Marks have a reputation in any particular goods.
Likelihood of Deception and confusion
I must next consider whether because of the reputation in the 28 Mark, use of the Trade Mark for the Applicant’s Goods is likely to deceive or cause confusion. The likelihood of deception or confusion from the use of the Applicant’s Mark must arise because of the reputation of the 28 Mark.[30]
[30] Delfi Chocolate Manufacturing SA v Mars Australia Pty Ltd (2015) 115 IPR 82, [29] (Jessup J).
The assessment of the likelihood of deception or confusion is to be made with regard to the strength of the reputation of the Opponent’s Marks, the inherent distinctiveness of the respective trade marks and the degree of similarity between them, and the degree of connection between the respective goods and services.[31]
[31] Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124, [40] (Hearing Officer I Thompson).
The threshold for confusion is not high, although a mere possibility of confusion is not enough.[32] There must be a real and tangible danger of confusion or deception. It is enough if the ordinary person entertains a reasonable doubt.[33]
[32] Australian Postal Corporationv Digital Post Australia [2013] FCAFC 153 [70] (North, Middleton and Barker JJ).
[33] Southern Cross (n 16) 595 (Dixon CJ, McTiernan J, Webb J, Fullagar J, Taylor J); Crazy Ron’s (n 12) [76] (Moore, Sackville and Emmett JJ).
The Opponent argues that:
As a result of the Opponent’s significant reputation in the brolga device for the Opponent's Relevant Services, including booking of accommodation, it is submitted that the registration of the Opposed Mark for the Applicant’s Goods would be likely to deceive or cause confusion amongst consumers, or at least cause consumers (particularly those in the Northern Territory) to wonder whether the goods of the Applicant and the services of the Opponent come from the same source.
The Opponent further adds that the inclusion of KAKADU in the Trade Mark further heightens the perception that the mark is somehow associated with the NT when it is not.
As noted above, I do not believe that the Opponent’s evidence establishes a reputation in the 28 Mark for the booking of accommodation but rather it is principally directed to the promotion of the NT generally as a tourist destination. Furthermore, whilst I consider that there is a strong reputation in the 28 Mark for the promotion of tourism to the NT, in my view, there is insufficient nexus between the Applicant’s Goods and the Opponent’s promotion of NT tourism. I believe it is improbable that a potential purchaser of a caravan would think that such goods could be purchased from the Opponent or that the Applicant’s Goods are endorsed or otherwise associated with the Opponent. Similarly, consumers contemplating a travel destination are unlikely to look to a seller of caravans. Moreover, while both marks may reference Australian themes, the overall differences in the two marks are such that I am not satisfied there is a tangible danger of confusion occurring.
The s 60 ground of opposition is unsuccessful.
Section 42
Section 42 states:
42 Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
(a) the trade mark contains or consists of scandalous matter; or
(b) its use would be contrary to law.
In its written submissions, the Opponent has argued that the Trade Mark should be rejected on the basis that it contains scandalous matter under s 42(a) and its use would be contrary to law under s 42(b).
The Opponent has particularised this ground of opposition in its SGP as follows:
The Opponent has been using its Brolga branding in Australia for over 40 years.
The use by the Opponent of a similar mark, in relation to goods closely related to the Opponent's goods and services, would cause consumers to wonder whether there is a common trade source or whether the Opponent has endorsed the use by the Applicant of the Opponent marks. This conduct would amount to misleading and deceptive conduct under the Australian Consumer Law.
In my opinion, the Opponent has not provided any particulars or indication that it was pursuing an opposition under s 42(a) and arguments on this ground should not have been raised. As s 42(a) has not been particularised as a ground of opposition, I cannot consider it.
With respect to s 42(b), the Opponent bears the onus of establishing that use of the Trade Mark by the Applicant would rather than could be contrary to law on the balance of probabilities.[34]
[34] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).
Section 18 of the ACL requires that there be a likelihood that the relevant consumer would be misled or deceived as to the origin of the Applicant’s Services due to the conduct of the Applicant. Section 29 of the ACL concerns representations that are false or misleading. The expression ‘mislead or deceive’ in s 18 of the ACL is effectively equivalent to the expression ‘false or misleading’ in s 29 of the ACL.[35]
[35] Australian Competition and Consumer Commission v Coles Supermarkets Australia Pty Ltd [2014] FCA 634, [40] (Allsop CJ).
The test for conduct contravening the ACL is a stricter one than the test under s 60 of the Act,[36] which requires only that consumers would be likely to be deceived or confused. Since I am not satisfied that the s 60 ground of opposition is established, it follows that on the stricter test to be applied under the ACL I am not satisfied that the Applicant’s use of the Trade Mark would be likely to mislead or deceive, or amount to a false or misleading representation under the ACL.
[36] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [33] (Stewart J).
The ground of opposition under s 42(b) of the Act is not established.
Section 41
Section 41 Section 41 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.
Note: For goods of a person and services of a person see section 6.
(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.
In order to decide whether the s 41 ground of opposition is established, I must first determine whether the Trade Mark is capable of distinguishing the Applicant’s Goods. This involves an assessment of the inherent distinctiveness of the Trade Mark which is to be determined:
[B]y reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by 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.[37]
[37] Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55, [5] (Kitto J) cited with approval in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48, [26] (French CJ, Hayne, Crennan and Kiefel JJ) .
The Opponent claims in its SGP that the Trade Mark consists of words which are not inherently distinctive namely KAKADU which is a geographical area in the NT and CARAVANS which is descriptive of the Applicant’s Goods. Accordingly, the Opponent contends that the Trade Mark ‘is descriptive of vehicle goods which are lived or travelled in having a composition or appearance from Kakadu, or goods relating to products produced or sold in that region’.
The Applicant argues that whilst KAKADU is the name of a place in Australia, as Steindorf attests ‘it also has connotations associated with the outdoors and nature generally’ and because it is a national park, no goods are manufactured or sold there. Further, the bird device in the Trade Mark is unique and adds sufficient distinctiveness to the mark as a whole.
It has long been established that a trade mark can contain a geographical name and still be inherently distinctive.[38] Additionally, a composite mark may be distinctive even if its individual components are not registrable on their own.[39] In my view, the Trade Mark is capable of distinguishing the Applicant’s Goods. Since the Applicant’s Goods cannot presently be produced or sold in Kakadu (and it seems highly improbable that such goods could be produced there in future), this term is distinctive for such goods. Furthermore, the bird device in the Trade Mark makes no reference to the goods and is distinctive. Considering the Trade Mark as a whole, it is capable of distinguishing the Applicant’s Goods and thus, the s 41 ground of opposition is unsuccessful.
[38] M Davidson, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off (7th ed online, 2022) Law Book Company (‘Shanahan’s), [20.680].
[39] Re Diamond T Motor Car Co [1921] 2 Ch 583; (1921) 38 RPC 373, 380 (Lawrence J). See also Shanahan’s (n 38) [20.1710].
Section 43
Section 43 provides:
Trade mark likely to deceive or cause confusion
An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
Justice Spender noted in Winton Shire Council v Lomas:[40]
Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60.
[40] [2002] FCA 288, [19].
The Opponent argues that:
The use by the Applicant of both the word KAKADU and the brolga bird device connote that the Applicant's goods have some connection with the Northern Territory that is non-existent. The use of one or other of those elements alone may not be sufficient to amount to a connotation but the Opponent argues that the use of both those elements means that there is a real and tangible danger that consumers who see the Opposed Mark consider that the claimed goods either originate from the Territory or have some connection to the Territory, which is not the case.
The Applicant submits that:
The Opponent has not provided any evidence that a) the words KAKADU CARAVANS indicate that the goods of caravans originate from Kakadu National Park, b) the bird device connotes the Northern Territory, and c) that the combination of these elements forms a connotation likely to mislead or deceive consumers.
In the case of the Trade Mark, the relevant consideration is whether Kakadu and/or the device of a Brolga carries a specific connotation that could mislead consumers about the nature, quality, or geographical origin of the Applicant’s Goods.
I consider that the term Kakadu is generally understood by Australian consumers as referring to Kakadu National Park and hence consumers understand that manufacturing of any goods, particularly goods such as the Applicant’s Goods, in Kakadu is improbable. In relation to the Brolga device, I note that these birds are found in other parts of Australia and are not associated exclusively with the NT. I am not satisfied that consumers seeing the Trade Mark would assume there is any connection with the geographic area Kakadu National Park or even the Northern Territory. Accordingly, whilst the Trade Mark may contain a connotation, it is not one which is likely to mislead or deceive. The s 43 ground of opposition fails.
Decision
The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP Trade Mark application 2177340 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 before that time, I direct that registration shall not occur until the appeal is either withdrawn or discontinued. Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.
The parties have sought an award of costs. I see no reason to depart from the general rule that costs follow the event and accordingly award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.
Tracey Berger
Hearing Officer
Delegate of the Registrar of Trade Marks
29 May 2025
ANNEXURE A
Opponent’s Marks
| Trade Mark Number | Trade Mark | Priority Date | Classes |
| 876642 | 21 May 2001 | 16, 18, 24, 25, 35, 39, 41 & 42 | |
| 1581963 | 23 Sept 2013 | 9, 16, 18, 24, 25, 28, 35, 39, 41 & 43 | |
| 1688228 (’28 Mark’) | 18 April 2015 | 9, 28, 31, 32, 33 & 43 | |
| 1689655 | 26 April 2015 | 9, 16, 18, 24, 25, 28, 35, 39, 41 & 43 | |
| 1689656 | 26 April 2015 | 9, 16, 18, 24, 25, 28, 35, 39, 41 & 43 | |
| 1821614 | 23 Jan 2017 | 9, 35, 39, 41 & 43 | |
| 1872086 (’86 Mark’) | 8 Sept 2017 | 9, 16, 18, 24, 25, 28, 35, 39, 41 & 43 | |
| 1902746 | 25 Jan 2018 | 9, 16, 18, 24, 25, 28, 35, 39, 41 & 43 | |
| 1902747 (’47 Mark’) | 25 Jan 2018 | 9, 16, 18, 24, 25, 28, 35, 39, 41 & 43 | |
| 2034115 | 30 Aug 2019 | 35 & 41 | |
| 2035951 | 10 Sept 2019 | 9, 16, 18, 24, 25, 28, 35, 39, 41 & 43 | |
| 2043232 | 11 Oct 2019 | 35, 39 & 43 |
0
22
0