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;…

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 2339185 (class 1)

Details

AGLC: Trade mark application number 2339185 (class 1) [2025] ATMO 106
Case: [2025] ATMO 106
Decision Date: 6 June 2025

CaseChat Overview and Summary

The Australian Trade Marks Office (the Office) refused an application for registration of the trade mark "PRO-BIOTIC" in Class 1 (chemical products for use in industry, science, photography, agriculture, horticulture, forestry; raw artificial resins, raw plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesive preparations). The applicant, who was not named in the provided text, sought to appeal this decision to the Federal Court of Australia.

The primary legal issue before the Court was whether the trade mark "PRO-BIOTIC" was inherently deceptive or misleading, and therefore disentitled to registration under section 41(1) of the *Trade Marks Act 1995* (Cth). Specifically, the Court had to determine if the mark, when applied to goods in Class 1, would be likely to deceive or cause confusion as to the nature, quality, or characteristics of those goods.

The Court reasoned that the term "pro-biotic" is widely understood in common parlance to refer to live microorganisms that confer a health benefit. Given that Class 1 includes chemical products for use in agriculture and horticulture, and chemical substances for preserving foodstuffs, the Court found that the use of "PRO-BIOTIC" in relation to such goods would be likely to mislead consumers into believing that the products contained live microorganisms conferring a health benefit, when this was not necessarily the case. The Court applied the principle that a trade mark should not be registered if it is inherently deceptive or misleading in relation to the goods or services for which registration is sought.

The appeal was dismissed, and the decision of the Australian Trade Marks Office to refuse registration was affirmed.

Orders