Trade mark application number 2339185 (class 1) - [2025] ATMO 106

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2339185 (class 1) – GS – in the name of Activated Carbon Technologies Pty Ltd

Delegate:

Nicole Worth

Representation:

Applicant: written submissions prepared by Ryan Maguire, counsel, instructed by Hibbert & Hodges Lawyers

Decision:

2025 ATMO 106

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 the 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: GS (‘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 three 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	Relevant Details
GS FLX TITANIUM	Registration No.: 1280892 Priority Date: 5 May 2008 Owner: Roche Diagnostics GmbH Class 1: Chemical preparations for industrial and scientific purposes; chemical reagents and solutions for industrial and scientific purposes; nucleic acids; all also in form of kits
GS27	Registration No.: 1666766 Priority Date: 20 August 2014 Owner: GS27 Class 1: Chemical additives for oils and fuels; detergent additives to gasoline; coolants for vehicle engines; antifreeze; acetone; solvents for resins and varnishes; color-brightening chemicals for industrial use; chemicals for use in industry, science, photography, as well as agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; fire extinguishing compositions; tanning materials; adhesives for use in industry; salts for industrial use; chemical reagents other than for medical or veterinary use; decolorants for industrial use *The full specification of goods in classes 1, 3 and 4 is in Annex A.
GS-Similoam	Registration No.: 2269062 Priority Date: 30 November 2021 Owner: Jiangsu Lvyan Ecological Technology Co., Ltd. Class 1: Fertilizers; nitrogenous fertilizers; soil conditioning preparations; plant growth regulating preparations; surface active compounds for general use in the industrial arts, namely, as wetting, spreading, emulsifying, dispersing and penetrating agents; filtering materials of mineral substances; chemicals for use in purification of water; ceramic particles for use as filtering media; adhesives for industrial purposes; gums [adhesives] for industrial purposes.

Where relevant I refer to the above collectively as the ‘Cited Marks’.
The Applicant responded with submissions and a declaration of the Applicant’s Managing Director, Peter Cullum, dated 18 June 2024 (‘Cullum 1’). The submissions and Cullum 1 contended that the respective parties’ trade marks were not deceptively similar and, in any event, the Applicant had used the Trade Mark such that the application could be accepted under the provisions of ss 44(3) or 44(4) (those provisions are discussed in more detail later in this decision).
The examiner was unpersuaded and maintained the ground for rejection.
After a period of deferment, the Applicant requested to be heard on the ground for rejection by way of written submissions. It filed submissions for consideration, as well as a further declaration by Mr Cullum, dated 7 March 2025 (‘Cullum 2’).
The matter has been allocated to me to decide, in my capacity as a delegate of the Registrar. I mention that the purpose here is not a review of the examiner’s decision but rather a fresh consideration of the ground for rejection.

Section 44

The relevant provisions of s 44 are reproduced below:
Section 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.
Note 1: For deceptively similar see section 10.
Note 2: For similar goods see subsection 14(1).
(2)       …
(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.
Note: For limitations see section 6.

(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.
Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
Note 2: For predecessor in title see section 6.
Note 3: For priority date see section 12.

For the purposes of s 44, the priority date of the Trade Mark is the same as its filing date, being 3 March 2023.
A presumption of registrability is embodied in s 33 which provides that the Registrar must accept an application for registration unless satisfied that there are grounds for rejecting it (thereby placing the onus for proving the ground upon the Registrar, rather than placing the onus to prove registrability upon the Applicant). Accordingly, I am not entitled to reject the Trade Mark unless satisfied that one or more of the Cited Marks:
·     is in the name of a person other than the Applicant;
·     has a priority date that is earlier than the priority date of the Trade Mark;
·     is in respect of similar goods or closely related services to the Applicant’s Goods; and
·     is substantially identical with, or deceptively similar to, the Trade Mark.
If I am so satisfied, sub-ss (3) and (4) of 44 provide exceptions to sub-ss (1) and (2). Under those provisions I may accept the application because the Applicant has made honest, concurrent use of the Trade Mark (s 44(3)(a)) or because other circumstances exist which would make acceptance proper (ss 44(3)(b)); or, if prior continuous use is established (s 44(4)), then I may not reject the application because of the Cited Mark(s).
It is straight-forward that each of the Cited Marks are in the name of a person other than the Applicant and that they each have a priority date which is earlier than the priority date of the Trade Mark.
I consider that each of the Cited Marks are in respect of goods similar to the Applicant’s Goods. Under s 44(1), it is the notional scope of goods which is considered,[3] being the scope of goods specified in each of the Cited Marks against the scope of the Applicant’s Goods, as opposed to any actual use of a trade mark upon goods by a party. The Applicant’s Goods are ‘activated carbon’, the nature of which is described in an archived web page of the Applicant’s website which states:
Activated carbon can be made 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 (typical range is 300 to 2000m²/g). The pores provide sites for the adsorption of chemical contaminants in gases or liquids.[4]
[3] Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43, [11] (Mason J).
[4] Cullum 1, Exhibit PDC-2.
The archived web pages also identify the uses to which the Applicant’s activated carbon may be put including water treatment; air filtration; gold recovery; marine, oil and gas; and other applications, as well as the three key forms in which it is available (powdered activated carbon; granular activated carbon; and pelletised activated carbon).[5]
[5] Ibid.
Each of the Cited Marks contains broad specifications in relation to chemicals which encompass the specific chemical comprising the Applicant’s Goods. Where a purpose for the chemicals is specified in each of the Cited Marks, the purpose aligns with what the Applicant says of its own goods. These include ‘Chemical preparations for industrial and scientific purposes’ (per GS FLX TITANIUM), ‘chemicals for use in industry, science, photography, as well as agriculture, horticulture and forestry’ (per GS27) and ‘chemicals for use in purification of water’ (per GS-Similoam).
I turn then to the question of substantial identity or deceptive similarity between the Trade Mark and each of the Cited Marks.
The test for substantial identity between trade marks was articulated by Windeyer J 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.[6]
[6] Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [12] (‘Shell’).
In a side by side comparison there are clear differences between the Trade Mark and each of the Cited Marks. GS FLX TITANIUM contains the additional elements FLX and TITANIUM, GS27 adjoins GS to 27, and GS-Similoam contains the additional element Similoam connected to GS by a hyphen. Because of these additional elements, a total impression of similarity does not emerge when comparing the Trade Mark with any of the Cited Marks. They are therefore not substantially identical.
Deceptive similarity was also considered by Windeyer J in Shell:
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. 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].[7]
[7] Ibid [13].
The Full Court, in Combe International Ltd v Dr August Wolff GmbH & Co. KG Arzneimittel said that the distinction between whether trade marks are deceptively similar, as opposed to substantially identical, ‘lies in the point of emphasis on the impression or recollection which is carried away and retained of the registered mark. In this context, allowance must be made for the human frailty of imperfect recollection’.[8]
[8] [2021] FCAFC 8, [27] (Mckerracher, Gleeson and Burley JJ)
As noted by the Applicant, the respective marks must each be considered as a whole, but it is also important to consider the ‘essential feature/s’ of the prior trade mark/s which would be recalled by the consumer. The essential feature is a significant or distinctive element of a trade mark, which strikes the eye and fixes itself in the recollection.[9] Confusion is likely to result if that feature is then adopted into the trade mark of another trader.
[9] Saville Perfumery Ltd v June Perfect Ltd (1941) RPC 147, 162 (Sir Wilfred Greene MR).
Related to the concept above is confusion arising by way of contextual confusion, wherein differences between marks may be readily apparent and appreciated by consumers, but they may nonetheless be confused as to whether the marks are associated because of some shared feature in them. Examples include JESTS and EASYJESTS; MONOPOLY and MUSICOPOLY; YELLOW PAGES and YELLOWNET; CAT and LANDCAT; POLO and POLO CLUB; and VIAGRA and HERBAGRA.[10]
[10] Vivo International Corporation Pty Ltd v Tivo Inc [2012] FCAFC 159, [145]-[146] (Keane CJ, Dowsett and Nicholas JJ) (citations omitted).
The Applicant submits that the parties’ trade marks are not deceptively similar. It says:
In [Australian Meat Group Pty Ltd v JBS Australia Pty Ltd [2018] FCAFC 207, [78] (‘Australian Meat Group’)], the Full Court (Allsop CJ, Besanko and Yates JJ) found that the composite mark depicted below was not deceptively similar to the plain letters AMH on the basis that the other elements of the composite mark, in combination with the textual elements, “cannot be ignored” and “[t]o consider the mark otherwise would be to extend its scope well beyond the monopoly that has been granted…by its registration.”

The inclusion of the whole of a trade mark within another mark should not necessarily lead to a finding of deceptive similarity. Indeed, as Deane J noted in Angoves, such a rule would lead to “some surprising consequences”.
Examples of cases in which courts have found no deceptive similarity despite the one mark including the whole of the other include:
(a)MOTHERSKY was held, in the context of an opposition based on s 44 of the TMA, to be not deceptively similar to the registered mark MOTHER;
(b)JAZZ CORNER HOTEL was held to be not deceptively similar to the registered marks CORNER and CORNER HOTEL; and
(c)THE NORTH AGENCY was held to be not deceptively similar to .[11]

…
The [GS] Citation of “GS27” (no. 1666766) consists of two halves: “GS” and “27”, which are of equal significance and impact, both visually and aurally. Aurally, the two elements have a repetitive rhythm that “GS” alone does not. The fact that the marks under comparison have differing numbers of syllables and alphanumerical components makes the GS Mark different in ‘look, length and sound’. The addition of “27”, which has no apparent descriptive quality, is an obvious differentiating feature. This is another example of how the inclusion of the whole of a trade mark within another mark should not lead to a finding of deceptive similarity: see paragraphs 23 and 25 above.
There are even more obvious difference in ‘look, length and sound’ between the GS Mark and the GS Citations of “GS FLX TITANIUM” (no. 1935896) and “GS-Similoam” (no. 2269062) The additional word elements in each mark are of equal (if not, greater) significance and impact, both visually and aurally. Given the greater length of “FLX TITANIUM” and “-Similoam” relative to “GS” alone, and the lack of any meaning of those additional elements, they are more distinctive, and therefore more likely to be remembered by the notional consumer.
[11] Applicant’s submissions, [23]-[25] (citations omitted).

I consider that contextual confusion in particular is likely to arise between the Trade Mark and each of the Cited Marks, owing to the common presence of the letters GS. GS is unlikely to be discounted to any extent in GS FLX TITANIUM, GS27 or GS-Similoam: it is the first part of each mark; it is not a feature commonly used in the industry; and it retains a separate and unique identity when combined with the additional elements of the Cited Marks, in that the additional elements do not subsume GS or alter any meaning in it (whilst GS in GS27 is not separated by a space or hyphen, there is a natural separation between letters and numerals). GS is also the only feature of the Trade Mark. I therefore consider it likely that consumers would wonder whether activated carbon provided under the Trade Mark was associated with the chemical preparations for industrial and scientific purposes under GS FLX TITANIUM, the chemicals for use in industry, science, photography, as well as agriculture, horticulture and forestry under GS27, or the chemicals for use in purification of water under GS-Similoam. For example, consumers may wonder whether GS was a ‘house’ mark and the additional elements denoted different products under the house mark.
With regard to the reference to Australian Meat Group, the comments quoted by the Applicant were made in the context of determining whether the letters AMG were deceptively similar to the device mark containing AMH. In that context their Honours stated:
What the two marks have in common is two out of three letters of an acronym. However, this is not sufficient to treat the AMG word mark as deceptively similar to the AMH device mark. First, the AMH device mark is a composite mark. As we have previously emphasised, it is not simply the letters “AMH”. Its other elements, in combination, cannot be ignored. To consider the mark otherwise would be to extend its scope well beyond the monopoly that has been granted to the respondent by registration.[12]
[12] Australian Meat Group Pty Ltd v JBS Australia Pty Ltd [2018] FCAFC 207, [78] (Allsop CJ, Besanko and Yates JJ).
Contrary to the Applicant’s assertion, I do not consider this statement to be a finding that the letters AMH would not be deceptively similar to the device mark containing those letters. Nonetheless, I acknowledge this statement recognises that the device mark is not the same as the letters AMH in plain text and that the other elements of the device mark bear weight in the comparison.
The comments of Deane J in Angoves Pty Ltd v Johnson[13] were made in the context of comparing the trade mark ‘St Agnes’ (in respect of alcoholic beverages) with ‘St Agnes Liquor Store’ (where St Agnes is a suburb of Adelaide). In that context his Honour commented that:
The second matter is whether the use of the words which comprise the registered trade mark as part of a trade mark containing both them and other words, constitutes infringement under s.58. In that regard, it is relevant to note that the use of the words "Tub Happy" in Mark Foy's Limited v. Davies Coop. & Co. Limited (supra) was a use of those words themselves as a trade mark and not simply a use of those words as part of a larger trade mark (see, ibid, at pp. 204-205). Acceptance of the proposition that the use of a number of words as a trade mark with respect to goods necessarily involves, for the purposes of an infringement action, a use of each of those words or each group of them as a trade mark would, on my understanding of the law, constitute a significant breaking of new ground which would have some surprising consequences (e.g., if the words used as a trade mark were "One Thousand Two Hundred and Thirty Four", there would, for the purposes of infringement, be a use as a trade mark of each of the words involved and of each group of them).[14]
[13] [1982] FCA 119 (Franki, Deane and Fitzgerald JJ).
[14] Ibid.

His Honour’s comments reflect that in the trade mark ‘St Agnes Liquor Store’, the element ‘St Agnes’ was part of a larger trade mark and in that context denoted the suburb. It was not an element that stood alone as a trade mark, unlike ‘Tub Happy’ in Mark Foy's Limited v. Davies Coop. & Co. Limited (or any of the individual words in ‘one thousand two hundred and thirty four’).[15] Here, the element GS in the GS FLX TITANIUM, GS27 and GS-Similoam is in the nature of ‘Tub Happy’ – it is not given meaning by being part of the larger marks and retains its own identity in them.
[15] [1956] HCA 41 (Dixon CJ, Williams ad Kitto JJ).
The examples given by the Applicant of coexisting trade marks wherein the whole of one is incorporated into the other are not apposite. At first instance MOTHERSKY was considered to be a single invented word which absorbed MOTHER so that MOTHER and MOTHERSKY were conceptually different. The incorporation of MOTHER into MOTHERSKY changed its meaning and significance, unlike the circumstances here.[16] In any event, the Full Court overturned the decision of the primary judge, finding MOTHERSKY deceptively similar to MOTHER.[17] JAZZ CORNER HOTEL was considered to be a composite phrase with a distinct sound and meaning, wherein attention is immediately drawn to ‘jazz’ and the words CORNER and CORNER HOTEL assumed a secondary role in the phrase.[18] Again, the incorporation of the words-in-common into the larger trade mark changed their meaning and significance. That is not the case before me. As for the Court observed that the exclusive right to use the trade mark was in the particular stylised form as registered, and there was no exclusive right over the words themselves.[19] Here, GS is not stylised or in any particular form in any of the trade marks.
[16] Energy Beverages LLC v Cantarella Bros Pty Ltd [2022] FCA 113 (Halley J).
[17] Energy Beverages LLC v Cantarella Bros Pty Ltd [2023] FCAFC 44 (Yates, Stewart and Rofe JJ).
[18] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157 (Yates, Abraham and Rofe JJ).
[19] The Agency Group Australia Ltd v H.A.S. Real Estate Pty Ltd [2023] FCAFC 203 (Yates, Markovic and Kennett JJ).
I am satisfied that it is likely consumers would at least be caused to wonder whether there might not be a connection between the Trade Mark and the GS FLX TITANIUM, GS27 and GS-Similoam trade marks.[20] The ground for rejection under s 44 therefore stands.
[20] Per Registrar of Trade Marks v Woolworths [1999] FCA 1020, [50] (French J).
That being the case, I turn to consideration of ss 44(3) and 44(4).

Honest Concurrent Use and Other Circumstances – s 44(3)

The Applicant submits that the application should be accepted on the basis that there has been honest concurrent use of the Trade Mark or other circumstances exist which make it proper to accept the application. The provisions of s 44(3) were contemplated by Kenny J in McCormick & Company Inc. v McCormick:
Section 44(3) gives the Registrar a discretion to accept an application that would otherwise be rejected under s 44(1) in the case of honest concurrent use or other circumstances making it proper to do so. The authorities establish that the principal criteria for determining whether registration should be permitted pursuant to s 44(3) include:
(1) the honesty of the concurrent use;
(2) the extent of the use in terms of time, geographic area and volume of sales;
(3) the degree of confusion likely to ensue between the marks in question;
(4) whether any instances of confusion have been proved; and
(5) the relevant inconvenience that would ensue to the parties if registration were to be permitted.[21]
[21] [2000] FCA 1335, [30].
It is convenient to turn first to the extent of use of the Trad Mark. In this regard, the relevant parts of the evidence are:
- The Applicant was incorporated in 2003 and since then it has provided its goods to customers in twenty countries.
- Gross revenue is provided for 2022 which is of a very substantial amount, although it relates to sales of goods under the Applicant’s various trade marks, not specifically under the Trade Mark here.[22] Figures for sales specifically under the Trade Mark over the years 2015 to 2024 are also provided.[23] I would characterise these sales as substantial. Mr Cullum also makes the statement that ‘The Applicant has sold its activated carbon products under the GS Mark to many hundreds of different customers in every state and territory in Australia, including nearly every government water utility, from which the Applicant has received more than one hundred million dollars in revenue’,[24] although this figure is only partially substantiated by the 2015 to 2024 sales figures.

Archived pages from 2020 of the Applicant’s website show that the primary identifiers of trade source used upon the website are the name Activated Carbon Technologies and the composite logo depicted below (at times the logo portion is used without the words).

One of the archived web pages is headed ‘Acticarb Products’ which lists various products of the Applicant. Five of its products are ‘Acticarb BAC GS1000’, ‘Acticarb BAC GS1000N’, ‘Acticarb GS800’, ‘Acticarb GS900’ and ‘Acticarb GS1300’. Another page describing the applications of the Applicant’s goods states ‘Activated Carbon Technologies’ range of high quality Acticarb activated carbon products and Acticarb Anthracite are used in a wide range of applications, from traditional to more innovative.’[25]
The Trade Mark is claimed to have been used since February 2003 in relation to a particular range of activated carbon goods. An invoice dated 25 February 2003 is adduced[26] which lists the product sold as ‘5 x 60lt bags of Acticarb GS1300 Granular Activated Carbon’. Of this use the Applicant says that it shows use of the Trade Mark GS, the word Acticarb which is also a registered trade mark, and a product code ‘1300’. Other product codes are used with the Trade Mark, including 550, 600S, 700, 750, 750SR, 800, 800F, 800SR, 900, 900N, 950, 950N, 1000, 1000N, 1100, 1200, 1300, 1300N, 1300W and 1400, all of which are declared to refer to the various characteristics of activated carbon within the GS range, such as their degree of activation and post treatments and applications.[27]
Of the use of the Trade Mark with alpha-numeric codes the Applicant says:

such product codes are used by the Applicant to describe the various characteristics of activated carbon products within their respective product range, such as their degree of activation and hence performance and their post treatments and applications. These product codes are not used by the Applicant as brands of its products, either on their own of as part of the Applicant’s trade marks. It is the two-letter trade marks (relevantly to the Applications: “EB”, “EC”, “GC”, “GS”, “GW” and “PB”) that are used as brands of the Applicant’s various activated carbon products ranges.[28]

To illustrate its statement above, the Applicant adduces an email sent by Mr Cullum to a customer on the subject ‘RE: Acticarb GC1200N’. In the email Mr Cullum states ‘We make the GS1000 in Australia…The lower density of our carbon (GS ~ 0.38 v GC0.5) means you get much more volume of carbon for your kg’; ‘The GS has micropores but is very mesoporous…floc + GS are perfectly complementary. The GS is tremendous for BAC’; and ‘But our GS is great in ground water too’.[29]

[25] Cullum 1, PDC-2 (emphasis in original).

[26] Cullum 1, PDC-3.

[27] Ibid [10].

[28] Cullum 2, [5].

[29] Ibid PDC-1.

The difficulty with the evidence described above is that it overwhelmingly demonstrates use of words or signs other than GS to indicate the trade source of the goods. In this regard the Applicant contends that a product can bear more than one trade mark, citing Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd (‘Self Care’),[30] Anheuser-Busch, Inc v Budejovicky Budvar, Nrodn Podnik & Ors,[31] and Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd.[32] The High Court in Self Care notes:
Where there are several words or signs used in combination, the existence of a clear dominant “brand” is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also act to distinguish the goods.[33]
[30] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (‘Self Care’).
[31] [2002] FCA 390 (Allsop J).
[32] Both the primary judgement Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd (No 3) [2023] FCA 1258 (Yates J) and the Full Court decision Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd [2025] FCAFC 12 (Nicholas, Jackson and Rofe JJ).
[33] Self Care (n 28), [25].
The comments of the High Court reflect the fact that more than one trade mark may be used to identify goods, such as a ‘house’ brand and a product name. Whether a sign does in fact act as a trade mark will depend on the actual manner of use, including its prominence, its meaning in the context of the goods or services, and its presentation in the material surrounding it. Here, the ‘Acticarb Products’ page on the Applicant’s website and the invoice appear to use ‘Acticarb’ as the indicator of trade source. Whilst these documents do show GS preceding various alpha-numeric product codes said to be descriptive of various properties, to the consumer uneducated in the Applicant’s Goods it would appear that GS itself is part of the product code. It would require some kind of further information or interaction with the Applicant to perceive GS as a trade mark (that is, as an indicator of trade source) in its own right. The email described above does show that Mr Cullum uses GS on its own to refer to the Applicant’s products, but it gives no indication as to whether anyone outside of the Applicant does so. Otherwise, the Applicant’s website uses the name Activated Carbon Technologies or the device depicted in [37] above to indicate trade source.
I consider also that the evidence does not sufficiently specify the extent of use. Upon the Applicant’s website the use of the Trade Mark is minimal and there is no information regarding traffic to the website. Only one invoice is adduced to substantiate the sales made over an allegedly 20 year period, and unit price can be inferred from only one invoice (from which volume of sales might be inferred). Overall, there is insufficient information upon which to reasonably estimate the extent of use of the Trade Mark.
Given I am not satisfied that GS has been used as a trade mark, nor that the extent of use is sufficiently specified, I am accordingly not satisfied that the provisions of s 44(3)(a) apply.
As to the existence of other circumstances which would make registration proper, per s 44(3)(b), there is no specific limitation on what ‘other circumstances’ satisfy the provision. The Applicant submits that:
[A]fter such extensive use of its marks without issue, the Applicant has established a valuable reputation in those marks such that it would cause it considerable risk and inconvenience if any of the Applications are rejected…In addition to the [s44(3)(a)] matters addressed above, these are “other circumstances” which make it proper to [sic] for the Application to proceed to registration pursuant to TMA s 44(3)(b).[34]
[34] Applicant’s submissions, [54].
On the basis of the evidence before me, I am not persuaded that the Applicant has established any reputation in the Trade Mark. There is minimal use of the Trade Mark in evidence, and that which is shown does not clearly demonstrate that GS, in its own right, acts as an indicator of trade source. I therefore do not consider this to be an ‘other circumstance’ which would make acceptance of the application for registration proper.
I acknowledge also Mr Cullum’s opinion that the owners of the Cited Marks operate in different industries to the Applicant, thereby reducing or removing the risk of confusion, and that there have been no instances of confusion over approximately 19 years of use.[35] However, how trade marks have been used to date are irrelevant to the consideration under s 44, which is concerned with the notional use of trade marks based upon the respective specifications of goods. This too is not an ‘other circumstance’ which would make acceptance of the application for registration proper.
[35] Cullum 1, [12]-[20].

Prior continuous use - s 44(4)

The Registrar may not reject a trade mark that has been used continuously from before the priority date of the conflicting trade mark to the priority date of the applied-for trade mark. The invoice adduced by the Applicant[36] is dated well before the priority date of the earliest of any of the Cited Marks. However, as already discussed, I am not persuaded that this use of GS constitutes use as a trade mark. Nor is the documented use continuous. Only one invoice is shown dated 2003, and then there is no other dated evidence until 2020, being the archived pages of the Applicant’s website. The sales figures dated from 2015 to 2024 do not themselves establish use of the Trade Mark in relation to the Applicant’s Goods (although yearly sales figures may support otherwise properly established use).
[36] Ibid PDC-3.
For these reasons I am not satisfied that prior continuous use of the Trade Mark is established by the evidence. Section 44(4) therefore does not apply.

Decision

I am satisfied that there is a ground for rejection under s 44(1) of the Act in relation to the Trade Mark.[37] I am not satisfied that ss 44(3) or 44(4) can be applied to overcome that ground for rejection.
[37] That is, that there is no ground for rejection under reg 4.15A, referring back to footnote 2.
Section 33(3) provides that if the Registrar is satisfied there are grounds under the Act for rejecting the application, then the Registrar must reject it.
Given I am satisfied that a ground for rejection exists and the Applicant is unable to overcome it, I reject the application in accordance with s 33(3).

Nicole Worth

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

6 June 2025

Annexure A

Trade Mark: GS27

Class 1: Chemical additives for oils and fuels; detergent additives to gasoline; coolants for vehicle engines; antifreeze; acetone; solvents for resins and varnishes; color-brightening chemicals for industrial use; chemicals for use in industry, science, photography, as well as agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; fire extinguishing compositions; tanning materials; adhesives for use in industry; salts for industrial use; chemical reagents other than for medical or veterinary use; decolorants for industrial use

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, degreasing and abrasive preparations; stain removers; soaps; perfumes, essential oils, incense; preservatives for leather (polishes); creams for leather; deodorizing scented products; potpourris (fragrances), scented room sprays; air freshening products; windshield cleaning liquids; tissues impregnated with cosmetic lotions; shampoos; varnish-removing products; towelettes (disposable) impregnated with cleaning, polishing, stain-removing, scouring, abrasive and/or stripping preparations

Class 4: Industrial oils and greases; lubricants; dust-absorbing, wetting and binding compositions; fuels (including motor spirit) and materials; candles (for lighting); perfumed candles for lighting; lighting wicks; non-chemical additives to motor fuel