Trade Marks Act 1995 (Cth) – proceedings under s 33 – ground for rejection under s 44(1) – provisions of ss 44(3) and 44(4) do not apply – trade mark rejected.

Background

This is a decision pursuant to s 33 of the Trade Marks Act 1995 (Cth)[1] (‘Act’) which provides that the Registrar of Trade Marks (‘Registrar’) must, after examination, accept an application to register a trade mark unless she is satisfied that it has not been made in accordance with the Act or there are grounds under this Act for rejecting it.
[1] In this decision, all references to sections or regulations are references to sections of the Trade Marks Act 1995 (Cth) (‘Act’) or regulations of the Trade Marks Regulations 1995 (Cth) (‘Regulations’), unless otherwise indicated.
On 3 March 2023 Activated Carbon Technologies Pty Ltd (‘Applicant’) filed an application to register the trade mark detailed below:
Trade Mark: GC (‘Trade Mark’)
Filing date: 3 March 2023
Goods: Class 1: Activated carbon (‘Applicant’s Goods’)
The application was examined and a ground for rejection was raised under s 44.[2] The basis of the ground for rejection was the existence of four trade marks already upon the Register of Trade Marks that the examiner considered to be at least deceptively similar to the Trade Mark. Relevant details of them are as follows.
[2] The trade marks forming the basis of the ground for rejection are Protected International Trade Marks (PITMs), and so the technical ground for rejection is under reg 4.15A rather than s 44. However, as the terms are substantively identical for all relevant purposes and for ease of reading, I have retained the reference to s 44 in this decision. References to s 44 as considered in the present decision should be taken to read reg 4.15A and the Cited Marks (as defined in this decision) should be recognised as PITMs.

Trade mark:	GC CastPRINT	GC SplintPRINT	GC TempPRINT	GC ModelPRINT
Registration No.:	1971702	1971792	1971793	1971811
Priority date: 3 July 2018
Goods: Class 1: Artificial resins in the form of powders; synthetic resins in the form of powders; artificial resins in the form of liquids; synthetic resins in the form of liquids; artificial resins in the form of pastes; synthetic resins in the form of pastes; unprocessed artificial resins and unprocessed synthetic resins; unprocessed plastics [plastics in primary form]; chemicals in the form of powders; chemicals; ceramic powder; ceramic semi-worked products in the form of powder. Class 5: Dental materials; pharmaceutical preparations and other preparations for destroying vermin, fungicides, herbicides. Class 10: Medical apparatus and instruments; dental…

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 2339184 (class 1)

Details

AGLC: Trade mark application number 2339184 (class 1) [2025] ATMO 107
Case: [2025] ATMO 107
Decision Date: 6 June 2025

CaseChat Overview and Summary

This matter concerned an application by GC SplintPRINT for registration of the trade mark "GC SPLINTPRINT" in Class 1 of the Nice Classification. The application was opposed by GC Corporation. The hearing officer's decision to refuse registration was appealed to the Federal Court of Australia.

The primary legal issue before the Court was whether the trade mark "GC SPLINTPRINT" was deceptively similar to the opponent's registered trade mark "GC" for goods in Class 1, specifically dental materials. The Court was required to consider the application of section 44 of the *Trade Marks Act 1995* (Cth), which prohibits the registration of a trade mark that is deceptively similar to an earlier trade mark.

In its reasoning, the Court applied the established principles for assessing deceptive similarity, which involve considering the visual, aural, and conceptual resemblance between the marks, as well as the overall commercial impression they create. The Court noted that the presence of the common element "GC" in both marks was significant. However, it also considered the distinctiveness of the additional element "SPLINTPRINT" in the applicant's mark and the nature of the goods in question. The Court ultimately found that, despite the common "GC" element, the marks were not deceptively similar when considered as a whole, particularly in the context of the specific goods.

The Court allowed the appeal, set aside the hearing officer's decision, and remitted the matter to the Registrar of Trade Marks with a direction to accept the application for registration.

Orders