Trade mark application number 2339183 (class 1) -

[2025] ATMO 111

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2339183 (class 1) - EC - in the name of Activated Carbon Technologies Pty Ltd

Delegate:

Sheona Robertson

Representation:

Applicant:  Ryan Maguire of counsel instructed by Hibbert & Hodges Lawyers

Decision:

2025 ATMO 111

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

1. 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:	2339183
Trade mark:	EC (‘Trade Mark’)
Priority date:	3 March 2023
Goods:	Class 1: Activated carbon (‘Goods’)

1. The Application was examined under s 31 of the Act and adverse examination reports dated 9 May 2023 and 28 June 2024 raised and maintained a ground for rejection under s 44 of the Act. The Examiner cited the following Australian trade marks (collectively ‘Cited Marks’) as the basis for the ground for rejection:[1]

   [1] Trade mark numbers 2147684 and 2147689 are international trade mark registrations protected in Australia. Accordingly, the technical ground for rejection is under reg 4.15A of the Trade Marks Regulations 1995 (Cth) (‘Regulations’) rather than s 44. However, since the terms of s 44 and reg 4.15A are substantively identical for all relevant purposes, and given the Applicant has framed their submissions in terms of s 44, I have retained the reference to s 44 in this decision. References to s 44 in this decision should be read as reg 4.15A.

Trade mark

Relevant information

(‘Cited Mark 1’)

Number: 1043746

Owner: Henkel AG & Co. KGaA

Priority date: 25 February 2005

Class 1: Chemicals for use in industry; raw and intermediate products used in the cosmetic industry as far as included in class 1; raw materials for cosmetic preparations

Class 3: Soaps, perfumery, essential oils; preparations for body and beauty care including hair care preparations, hair lotions, preparations for caring, cleaning, tinting, colouring, bleaching, fixing and perming of the hair, facial lotions, skin creams, cosmetic preparations for hair care and hair treatment; cosmetic preparations for skin care and skin treatment

EC 1 PLUS

(‘Cited Mark 2’)

Number: 2147684

Owner: Gemeinschaft Emissionskontrollierte Verlegewerkstoffe, Klebstoffe und Bauprodukte e.V

Priority date: 22 December 2020

Class 1: Chemical products used in industry; adhesives used in industry; additives for cement, mortar and concrete; damp proofing preparations except paints for masonry.

Class 2: Coating preparations (paints) having water repellent properties for roofs, walls and floors and non-stick coatings in the nature of paint; damp proofing paints, coating preparations of plastic being paste or liquid for surfaces of wood and metal for protection against damp, concrete barrier coatings (paints); anti-corrosive preparations, paints, dyestuffs, varnish, natural resins, lacquers, binding and thickening agents for paints and lacquers, mastics as coating agents, also for levelling of surfaces; primers, preservatives against rust, coatings for wood, fire-reterdant coatings for wood; plastic paints, liquid coatings based on cellulose, artificial resins or starch.

Class 17: Mineral raw materials (as far as included in this class); assembly foams, joint sealing compounds, sealants, heat insulation materials and insulation materials (all included in this class); non-metallic insulation panels and insulation mats, sheets and shaped parts of foamed plastic for covering and insulating the floors, walls, ceilings and roofs of buildings; fabrics of glass fibres and plastic for insulating walls.

Class 19: Building materials (non-metallic); natural and artificial stone; mortar, building adhesives, protective agents for buildings (included in this class), flat-form parts for walls, ceilings and roofs, of non-metallic materials; grouts.

(‘Cited Mark 3’)

Number: 2147689

Owner: Gemeinschaft Emissionskontrollierte Verlegewerkstoffe, Klebstoffe und Bauprodukte e.V

Priority date: 22 December 2020

Class 1: Chemical products used in industry; adhesives used in industry; additives for cement, mortar and concrete; damp proofing preparations except paints for masonry.

Class 2: Coating preparations (paints) having water repellent properties for roofs, walls and floors and non-stick coatings in the nature of paint; damp proofing paints, coating preparations of plastic being a paste or liquid for surfaces of wood and metal for protection against damp, concrete moisture barrier coatings (paints); anti-corrosive preparations, paints, dyestuffs, varnish, natural resins, lacquers, binding and thickening agents for paints and lacquers, mastics as coating agents, also for levelling of surfaces; primers, preservatives against rust, coatings for wood, fire-retardant coatings for wood, plastic paints, liquid coatings based on cellulose, artificial resins or starch.

Class 17: Mineral raw materials (as far as included in this class); assembly foams, joint sealing compounds, sealants, heat insulation materials and insulation materials (all included in this class); non-metallic insulation panels and insulation mats, sheets and shaped parts of foamed foamed plastic for covering and insulating the floors, walls, ceilings and roofs of buildings; fabrics of glass fibres and plastic for covering and insulating walls.

Class 19: Building materials (non-metallic); natural and artificial stone; mortar, building adhesives, protective agents for buildings (included in this class), flat-form parts for walls, ceilings and roofs, of non-metallic materials; grout.

1. The Applicant filed submissions principally arguing that the Trade Mark is not deceptively similar to the Cited Marks because each of the Cited Marks contain distinctive elements that are absent from the Trade Mark and which would create distinct and striking impressions that would not be overlooked. Alternatively, the Applicant contended that there had been use of the Trade Mark to satisfy the requirements of s 44(4) or s 44(3)(a) of the Act, or that other circumstances existed that would justify the acceptance of the Application for registration pursuant to s 44(3)(b) of the Act. The submissions filed at the examination stage were accompanied by a statutory declaration of Peter Donald Cullum, Managing Director of the Applicant, made on 18 June 2024 together with Annexures PDC-1 to PDC-4 (‘Cullum 1’).

2. Following receipt of the adverse examination report dated 28 June 2024, the Applicant requested to be heard by way of written submissions. The matter was allocated to me to decide as a delegate of the Registrar of Trade Marks. 

3. On 8 March 2025 the Applicant filed written submissions (‘Applicant’s Submissions’) accompanied by a further declaration of Peter Donald Cullum made on 7 March 2025 together with Annexures PDC-1 to PDC-3 (‘Cullum 2’).

4. As a preliminary matter, I note that the Application is subject to a presumption of registrability under s 33 of the Act. As such, I must accept an application for registration unless satisfied, on the balance of probabilities, that there are grounds under the Act for rejecting it, or that the Application has not been made in accordance with the Act. I must also consider afresh the grounds for rejection under s 44 and I am not bound by the Examiner’s findings. While I may consider the reasoning provided by the Examiner, ultimately I must make a decision based on my understanding of the relevant facts and law.

Discussion

1. Section 44(1) of the Act relevantly provides:

(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.

…

1. An application for registration of the Trade Mark must be rejected if, subject to sub-ss (3) and (4), any of the Cited Marks meet the following requirements:

1. they are in the name of a person other than the Applicant;

2. they have a priority date which is earlier than the priority date of the Trade Mark;

3. they are substantially identical with, or deceptively similar to, the Trade Mark; and

4. they are in respect of goods which are similar or services which are closely related to the Goods.

1. Each of the Cited Marks is registered by a person other than the Applicant and has a priority date which is earlier than the priority date of the Trade Mark. Requirements (i) and (ii) are satisfied.

2. I must now consider whether the goods of the Cited Marks are similar to the Goods.

Similarity of goods

1. Section 14(1) of the Act provides that goods are ‘similar’ to other goods if they are the same, or of the same description, as those other goods.

2. It is well established that the primary criteria for assessing whether goods are of the same description are:

• the nature of the goods;

• the respective uses of the articles;

• the trade channels through which the commodities are respectively bought and sold.[2]

  [2] Jellinek's Application (1946) 63 RPC 59, Romer J.

1. It is the notional scope of the respective goods as claimed in each specification that is to be considered, rather than the actual use of a trade mark in respect of either party’s goods.[3]

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

2. The Goods are activated carbon. Activated carbon is described in an archived screenshot from the Applicant’s website as material sourced from “a wide range of source materials such as coal, coconut shells and wood. The material is often charred to achieve carbon, followed by chemical activation or activation by high temperature steam. This produces an activated carbon with an extensive network of pores and an extremely high surface area … The pores provide sites for the adsorption of chemical contaminants in gases or liquids.”[4]

   [4] Cullum 1, Exhibit PDC-2.

3. The goods of the Cited Marks can be broadly characterised as follows:

• Cited Mark 1: Industrial chemicals; materials for use in cosmetic preparations; cosmetic preparations for skin care and hair care

• Cited Marks 2 and 3: Industrial chemicals; damp proofing preparations; anti-corrosive preparations; paints, lacquers and resins; sealants; insulation materials; non-metallic building materials

1. The Applicant submits that the Applicant and the owners of the Cited Marks operate in entirely different markets and that generally the goods of the Cited Marks are not concerned with or related to “the adsorption of chemical impurities”[5] which is stated to be the general purpose and function of the Goods.

   [5] Applicant’s Submissions, [53].

2. On balance, I am satisfied that the Goods are of the same description as at least the broad claims for chemical products for use in industry which are included in class 1 of the goods of each of the Cited Marks. It is clear from archived screenshots of the Applicant’s website that the Goods have a variety of potential industrial applications including water treatment; air filtration; gold recovery; and other treatment, removal and filtration applications for the marine, oil and gas industries.[6] It is also clear from these archived screenshots that the Goods are derived from the ‘activation’ of the chemical element carbon by way of chemicals such as hydrogen dioxide (steam), nitrogen or carbon dioxide.[7] Hence the Goods are encompassed by the chemical products for use in industry of the Cited Marks.

   [6] Cullum 1, Exhibit PDC-2.

   [7] Ibid.

3. Having regard to the goods of the Cited Marks more broadly, it is foreseeable that the respective products would be sold by the same or competing traders via the same trade channels. The Goods have numerous potential forms and applications, and the Cited Marks include broad claims such as industrial chemicals. It follows that the respective products, if sold under deceptively similar or substantially identical brands, could be perceived as originating from the same trade source. Requirement (iv) is satisfied.

4. I must now consider whether the Trade Mark is substantially identical with, or deceptively similar to, any of the Cited Marks for the purposes of requirement (iii).

Substantially identical

1. The relevant test for determining whether trade marks are substantially identical is set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):

   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.[8]

   [8] [1963] HCA 66, [12] (Windeyer J).

2. The respective marks are reproduced below:

Trade Mark

Cited Marks

EC

1.

2.

EC 1 PLUS

3.

1. On a side by side comparison, there are notable differences between the marks. Cited Mark 1 is stylised with overlapping lower case letters ‘ec’ positioned above the words ‘extra care’ in a smaller font. Cited Mark 2 contains the additional numeral ‘1’ and the word ‘PLUS’. In Cited Mark 3 the terms ‘GEV-EMICODE’ and ‘EC1’ are separated by concentric circles, with the term ‘EC1’ bordered thin horizontal lines. Each of these additional terms and stylisations is entirely absent from the Trade Mark. I do not consider any of these differences are likely to be overlooked on a close comparison of the Trade Mark and each of the Cited Marks.

2. Accordingly, I am not satisfied that a total impression of resemblance[9] emerges from a comparison between the Trade Mark and each of the Cited Marks. The marks are not substantially identical.

   [9] Ibid.

Deceptively similar

1. Section 10 of the Act defines “deceptively similar” as:

   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.

2. In Shell, Windeyer J provided the following insights on deceptive similarity:

   The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[10]

   [10] Ibid [13].

3. What must be considered is the impression of the respective marks as a whole.[11] Deceptive similarity can be found where one mark uses an essential feature of the other.[12] Where elements of a trade mark are descriptive or in common use in the trade, they will be afforded less weight for comparative purposes.[13] However, ‘[t]he authorities do not say that where there is a common descriptive element in marks that component is to be ignored for the purposes of comparison’.[14] Much depends on the circumstances.

   [11] Clark v Sharp (1898) 15 RPC 141, 146 (Byrne J).

   [12] Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147, 174-5 (Viscount Maugham); De Cordova v Vick Chemical Co (1951) 68 RPC 103, 105-6 (Lord Radcliffe).

   [13] Re Broadhead's Application (1950) 67 RPC 209, 215 (Evershed MR).

   [14] Combe International Ltd v Dr August Wolff GmbH & Co. KG Arzneimittel [2021] FCAFC 8, [78] (McKerracher, Gleeson and Burley JJ).

4. What must be considered is the overall impression that a person of ordinary intelligence and memory would likely have of the Trade Mark and each of the Cited Marks, having regard to the look, sound, and ideas conveyed by the respective marks, and allowing for imperfect recollection.

5. The Applicant submits that:

• the marks differ from the Trade Mark in appearance, length and sound;

• the features ‘EC’, ‘1’ and ‘PLUS’ in Cited Mark 2 do not have any apparent descriptive quality and thus are all of equal significance and impact. Accordingly, the additional features ‘1 PLUS’ distinguish Cited Mark 2 from the Trade Mark;

• the additional visual features in Cited Marks 2 and 3 cannot be ignored;

• the Cited Marks convey conceptual meanings that are absent from the Trade Mark. The words ‘extra care’ in Cited Mark 1 remove ambiguity as to the meaning of the letters ‘ec’. The distinctive combination of letters and the concentric circles device in Cited Mark 3 likewise create a distinct conceptual meaning.

1. The Applicant submits that the additional features in the Cited Marks cannot be ignored for the reasons given by the Full Court in Australian Meat Group Pty Ltd v JBS Australia Pty Ltd,[15] namely, that to disregard the device and stylisation of the Cited Marks would be to “extend [their] scope well beyond the monopoly that has been granted … by [their] registration”.[16] The Applicant cites several decisions to support its contention that the inclusion of the whole of the Trade Mark within each of the Cited Marks should not lead to a finding of deceptive similarity.[17]

   [15] [2018] FCAFC 207 (Allsop CJ, Besanko and Yates JJ) (‘Australian Meat Group’).

   [16] Ibid [78]; cited with approval by the Full Federal Court in each of The Agency Group Australia Ltd v H.A.S. Real Estate Pty Ltd [2023] FCAFC 203 (Yates, Markovic and Kennett JJ) and Caporaso Pty Ltd v Mercato Centrale Australia Pty Ltd [2024] FCAFC 156 (Katzmann, Wheelahan and Hespe JJ).

   [17] Australian Meat Group (n 15); Energy Beverages LLC v Cantarella Bros Pty Ltd [2022] FCA 113 (Halley J); Swancom Pty Ltd v The Jazz Corner HotelPty Ltd [2022] FCAFC 157 (Yates, Abraham and Rofe JJ); The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd [2023] FCA 482 (Jackman J).

2. In my view, the Trade Mark is visually, aurally and conceptually similar to each of the Cited Marks. I do not agree with the Applicant’s submissions regarding the words ‘extra care’ in Cited Mark 1. The words ‘extra care’ in Cited Mark 1 are subordinate to the letters ‘ec’, owing to their smaller size, positioning under the letters, and minimal stylisation relative to the overlapping of the letters. Accordingly, the Trade Mark and Cited Mark 1 share the letters ‘EC’ as their most visually prominent and memorable feature. I note also that there is nothing in the Trade Mark to indicate that the letters ‘EC’ would not relate to ‘extra care’, and hence there is no clearly distinguishable difference in the concepts conveyed by the respective marks. 

3. As regards Cited Marks 2 and 3, the dominant and memorable feature of these marks is the term ‘EC 1’. The additional features of the Cited Marks do not diminish the aural and visual dominance of the letters ‘EC’. The Examiner notes in the first adverse examination report that it is common for traders to update their trade marks over time, or to introduce new trade marks to delineate new products or services. This is relevant in the context of Cited Marks 2 and 3, wherein the numeral ‘1’ (and for Cited Mark 2, the additional word ‘PLUS’) may be interpreted as indicating a product line within an ‘EC’ product range. It is not unusual for businesses to distinguish between product lines using numerals and ordinary words such as ‘PLUS’ to differentiate various product features.

4. In the context of imperfect recollection and, in the absence of a side by side comparison, because of the shared memorable element ‘EC’ there is a risk that consumers familiar with each of the Cited Marks would assume that the trade marks emanate from the same trader or share a common connection. Despite the additional features in each of the Cited Marks, it is foreseeable that the common element ‘EC’ would lead the relevant buying public to believe that the respective goods emanate from the same trade source.

1. In light of the above, I consider that the Trade Mark is deceptively similar to each of the Cited Marks and that requirement (iii) is satisfied.

2. I must now consider whether the evidence filed enables a finding of prior continuous use or honest concurrent use pursuant to ss 44(4) or 44(3)(a) of the Act, or whether there are any other circumstances that would make it proper to accept the application pursuant to s 44(3)(b) of the Act.

Prior continuous use

1. Section 44(4) of the Act relevantly provides:

(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

(a) beginning before the priority date for the registration of the other trade mark in respect of:

(i) the similar goods or closely related services; or

(ii) the similar services or closely related goods; and

(b) ending on the priority date for the registration of the applicant’s trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

1. The elements that must be satisfied are:

   (i)     the Trade Mark has been used by the Applicant, or the Applicant’s predecessor in title, or by an authorised user, in Australia;

1. the use commenced before the priority date of the Cited Marks and continued at least until the priority date for the registration of the Trade Mark; 

2. the use has been continuous in respect of the goods/services that are similar and/or closely related to the goods/services in the Cited Marks.

1. The Applicant submits that the Trade Mark has been in use since 2003, both in isolation as well as with alphanumerical product codes that describe the various characteristics of the activated carbon products. It is the Applicant’s contention that the alphanumeric codes are used as mere descriptive elements that do not substantially affect the identity of the Trade Mark, such that use of the Trade Mark in conjunction with the alphanumeric codes constitutes use of the Trade Mark itself for the purpose of s 44(4) of the Act.

2. Cullum 1 contains archived extracts from the Applicant’s website, ‘ None of the extracts provided make reference to ‘EC’ and therefore do not demonstrate use of the Trade Mark.

3. The Applicant’s Submissions do not refer to any examples of use of the Trade Mark. Neither Cullum 1 nor Cullum 2 contain any evidence which supports the Applicant’s prior continuous use of the Trade Mark. Accordingly, I am not able to determine that there has been prior continuous use of the Trade Mark.

4. For these reasons, I am not satisfied that it is appropriate to apply the provisions of s 44(4) of the Act in respect of the Application.

Honest concurrent use or other circumstances

1. Section 44(3) of the Act relevantly provides:

(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.

1. The Applicant bears the onus of establishing that there has been concurrent use of the Trade Mark.[18] In McCormick & Company Inc v McCormick (‘McCormick’), Kenny J stated that the principal criteria for determining whether registration of a trade mark should be permitted pursuant to s 44(3) of the Act are:

   (i)the honesty of the concurrent use;

   (ii)the extent of the use in terms of time, geographic area and volume of sales;

   (iii)the degree of confusion likely to ensue between the marks in question;

   (iv)whether any instances of confusion have been proved;

   (v)the relative inconvenience that would ensue to the parties if registration were to be permitted.[19]

   [18] Trident Seafoods Corporation v Trident Foods Pty Limited [2018] FCA 1490, [186] (Gleeson J); Hills Industries Limited v Bitek Pty Ltd [2011] FCA 94, [147] (Lander J); Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [238] (Besanko, Jagot and Edelman JJ).

   [19] [2000] FCA 1335, [30]-[32].

2. I note that it is not possible to make a finding of honest concurrent use pursuant to s 44(3)(a) in circumstances where the use of the respective trade marks has not occurred concurrently. In the absence of any evidence of use of the Trade Mark, I am not satisfied that the Applicant first adopted a trade mark containing the letters ‘EC’ some 20 years prior to the Relevant Date. Since no evidence of use specific to the Trade Mark has been provided, there is nothing in the evidence that supports the concurrent use of the Trade Mark and the Cited Marks.

3. The Applicant submits that the extent of use of the Trade Mark is significant, in terms of the time and volume of sales, totaling more than $24 million in gross revenue in 2022 across all of the Applicant’s product lines, including those under the Trade Mark. This submission is not supported by documentary evidence. No indication is provided as to what proportion of the gross revenue is attributable to goods provided under the Trade Mark specifically. It therefore does not support the real commercial value of the Goods provided under the Trade Mark.

4. For these reasons, I find that the evidence provided does not establish honest concurrent use of the Trade Mark. Accordingly, I am not satisfied that the discretion under s 44(3)(a) of the Act should be exercised in the Applicant’s favour.

5. As regards other circumstances which would make registration proper, s 44(3)(b) of the Act is broad in scope. The ‘other circumstances’ may include the absence of confusion, and the length and extent of the use of the Trade Mark. The discretion is to be exercised with regard to the circumstances as at the time the discretion is exercised, rather than at the priority date of the application.[20]

   [20] Trident Seafoods Corporation v Trident Foods Pty Ltd (2019) 369 ALR 367, [83] (Reeves, Jagot and Rangiah JJ).

6. The Applicant submits that the extent of use of the Trade Mark, the Applicant’s valuable reputation in the Trade Mark, the absence of confusion, and the considerable risk and inconvenience to the Applicant if the Application were to be rejected are circumstances which make it proper for the Application to proceed to registration pursuant to s 44(3)(b).[21] For the reasons already discussed, the Applicant’s use of, and reputation in, the Trade Mark are not supported by the evidence.

   [21] Applicant’s Submissions, [56].

7. In relation to the degree of likely confusion, Cullum 1 contains a printout from the website of the owner of Cited Mark 1 showing use of Cited Mark 1 in relation to hair care products.  Cullum 2 contains a copy of the rules governing use of Cited Marks 2 and 3 as certification trade marks, together with the constitution, product testing method documents and a question and answer document relating to the owner of Cited Marks 2 and 3. The Applicant submits that the degree of likely confusion between the Trade Mark and the Cited Marks is low because the owners of the Cited Marks operate in entirely different markets to the Applicant. Irrespective of the differences in the core businesses of the Applicant and the owner of the Cited Marks, as explained above, the normal and fair use of the Cited Marks as registered would encompass the stated nature, purpose and function of the Goods.

8. On the basis of the evidence before me I am not persuaded that the risk and inconvenience to the Applicant would outweigh the risk and inconvenience to the owner of the Cited Marks were the Trade Mark to be registered.

9. I am not satisfied that there are ‘other circumstances’ that would make it proper to accept the application pursuant to s 44(3)(b) of the Act.

Decision

1. Section 33 of the Act relevantly provides:

   (1) The Registrar must, after the examination, accept the application unless he or she is satisfied that:

   (a) the application has not been made in accordance with this Act; or

   (b) there are grounds under this Act for rejecting it.

   (2) The Registrar may accept the application subject to conditions or limitations.

   (3) If the Registrar is satisfied that:

   (a) the application has not been made in accordance with this Act; or

   (b) there are grounds under this Act for rejecting it;

   the Registrar must reject the application.

2. I am satisfied that there is a ground for rejection under s 44 of the Act. Accordingly, I reject trade mark application number 2339183 in accordance with s 33(3) of the Act.

3. If the Registrar is served with a notice of appeal within one month from the date of this decision, I direct that the disposition of the Application be in accordance with the court’s direction or order.

Sheona Robertson

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

6 June 2025