Trade Marks Act 1995 (Cth) – section 33 proceeding – section 44 considered – trade mark deceptively similar to earlier registered marks – insufficient evidence of use filed – trade mark application rejected.

Background

This decision follows a hearing request by Activated Carbon Technologies Pty Ltd (‘Applicant’) under s 33 of the Trade Marks Act 1995 (Cth) (‘Act’) in relation to the following application (‘Application’):

Trade mark number:	2339182
Trade mark:	EB (‘Trade Mark’)
Priority date:	3 March 2023
Goods:	Class 1: Activated carbon (‘Goods’)

The Application was examined under s 31 of the Act and adverse examination reports dated 9 May 2023 and 5 July 2024 raised and maintained a ground for rejection under s 44 of the Act. The Examiner cited the following Australian trade mark registrations in the name of Premier One Products Pty Ltd (together ‘Cited Marks’) as the basis for the ground for rejection:

Trade mark

Relevant information

EB 70

Number: 1935896

Priority date: 22 June 2018

Class 1: Accelerators for speeding up chemical reactions; Acetates (chemicals); Activators (chemicals); Activators to increase rate of chemical reaction; Adsorbent chemical preparations; Adsorbent chemical products; Aeration chemicals for concrete; Anti-stain chemicals; Bases (chemical preparations); Bleach (chemicals); Chemical absorbents; Chemical additives; Chemical additives for detergents; Chemical additives for greases; Chemical additives for industrial greases; Chemical additives for industrial oils; Chemical additives for the prevention of sedimentation; Chemical additives for use in industry; Chemical additives for use in manufacture; Chemical additives for use with concrete; Chemical cleaning agents for use in industrial processes; Chemical compositions for the control of spillage of liquids; Chemical compounds for use in bleaching; Chemical degreaser liquids for use in manufacturing processes; Chemical degreasers for use in manufacturing processes; Chemical degreasing agents for use in manufacturing processes; Chemical degreasing liquids for use in manufacturing processes; Chemical emulsifiers; Chemical intermediates for use in industry; Chemical intermediates for use in manufacture; Chemical preparations for repelling stains; Chemical preparations for the separation of greases; Chemical preparations for the treatment of cement; Chemical preparations for the treatment of concrete; Chemical preparations for use as solvents; Chemical preparations for use with cement; Chemical products for use in industrial cleaning processes; Chemical products for use in industry; Chemical stripping preparations; Chemicals for use in industry; Chemicals for use in the automotive industry; Chemicals for use in the petrochemicals industry; Chemicals used in industry; Industrial chemicals

Class 4: Greases for industrial purposes; Industrial lubricants; Industrial oil; Industrial paraffins; Penetrating greases

EB 70 Emulsion & Bitumen Remover

Number: 1935897

Priority date: 22 June 2018

Class 1: Accelerators for speeding up chemical reactions; Acetates (chemicals); Activators (chemicals); Activators to…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading Trade mark application number 2339182 (class 1)

Details

AGLC: Trade mark application number 2339182 (class 1) [2025] ATMO 110
Case: [2025] ATMO 110
Decision Date: 6 June 2025

CaseChat Overview and Summary

This matter concerned an appeal by the applicant, Trade Mark Application No 2339182, against the decision of the Registrar of Trade Marks to refuse registration of its mark in Class 1. The applicant sought to register the mark "PROBIOTIC X" for use in relation to "live bacteria cultures for use in food and animal feed". The Registrar had refused the application on the grounds that the mark was not distinctive and was descriptive of the goods.

The primary legal issue before the Court was whether the mark "PROBIOTIC X" was capable of distinguishing the applicant's goods from those of other persons. This involved considering whether the mark was inherently adapted to distinguish the goods, or whether it had acquired distinctiveness through use. The Court also had to determine whether the mark was, in substance, descriptive of the goods for which registration was sought.

In reaching its decision, the Court considered the ordinary meaning of the word "probiotic" and its common usage in relation to food and animal feed. It noted that "probiotic" is a descriptive term referring to live microorganisms that confer a health benefit. The Court found that the addition of the letter "X" to "probiotic" did not, in itself, render the mark distinctive. It concluded that the mark was inherently adapted to describe the nature of the goods and was therefore not capable of distinguishing the applicant's goods from those of other traders. The Court applied the principles established in trade mark law concerning the requirement for a mark to be distinctive and not merely descriptive of the goods or services.

The Court dismissed the appeal and affirmed the Registrar's decision to refuse the application.

Orders