Trade mark application number 2339187 (class 1) -
[2025] ATMO 112
•6 June 2025
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 2339187 (class 1) - PB - 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 112 Trade Marks Act 1995 (Cth) – section 33 proceeding – section 44 considered – trade mark deceptively similar to earlier registered mark – 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: | 2339187 |
Trade Mark: | PB (‘Trade Mark’) |
Priority date: | 3 March 2023 |
Goods: | Class 1: Activated carbon (‘Goods’) |
The Application was examined under s 31 of the Act and an adverse examination report dated 11 May 2023 raised a ground for rejection under s 44 of the Act. The Examiner cited the following Australian trade mark registration in the name of Pacific Biosciences of California Inc (‘Cited Mark’) as the basis for the ground for rejection:[1]
[1] The Examiner also cited as a ground for rejection Australian trade mark registration number 2169295, also in the name of Pacific Biosciences of California Inc, in respect of an identical trade mark in classes 5, 9 and 10 with a priority date of 21 December 2020. However, the ground for rejection based on this trade mark was later withdrawn as protection of that trade mark had been cancelled.
Number: | Trade Mark: | Goods: | Priority Date: |
1110131 | Class 1: Assays and reagents, for use in biochemical analysis and medical diagnostics Class 9: Laboratory instruments, including laboratory instruments used for scientific research, including optical detectors for genetic sequencing and biochemical analysis; medical diagnostic instruments | 2 November 2005 |
In a further adverse examination report issued on 18 October 2023, the ground for rejection based on the Cited Mark was maintained.
The Applicant filed submissions principally arguing that the Trade Mark is not deceptively similar to the Cited Mark because the Cited Mark contains distinctive elements that are absent from the Trade Mark, and which would create a distinct and striking impression 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(3)(a) of the Act, or 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-3 (‘Cullum 1’).
Following receipt of a further adverse examination report dated 12 July 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.
On 8 March 2025 the Applicant filed its 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’).
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
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.
An application for registration of the Trade Mark must be rejected if, subject to sub-ss (3) and (4), the Cited Mark meets the following requirements:
it is in the name of a person other than the Applicant;
it has a priority date which is earlier than the priority date of the Trade Mark;
it is substantially identical with, or deceptively similar to, the Trade Mark; and
it is in respect of goods which are similar or services which are closely related to the Goods.
The Cited Mark 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.
The next question is whether the goods of the Cited Mark are similar to the Goods.
Similarity of goods
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.
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.
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).
The Goods in question 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] It is also clear from this archived screenshot 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.[5]
[4] Cullum 1, Exhibit PDC-2.
[5] Ibid.
The goods of the Cited Mark are broadly concerned with chemicals including chemical preparations, chemical additives, chemical agents, and chemical intermediates.
The Applicant submits that the Applicant and the owner of the Cited Mark operate in entirely different markets and that generally the goods of the Cited Mark are not concerned with or related to “the adsorption of chemical impurities”[6] which is stated to be the general purpose and function of the Goods.
[6] Applicant’s Submissions, [53].
On balance, I am satisfied that the Goods are of the same description as, at least, the claim for ‘assays and reagents for use in biochemical analysis and medical diagnostics’ which are included in the goods of the Cited Mark. The definition of reagent, being a substance used in chemical analysis,[7] would notionally include activated carbon.
[7] Macquarie Dictionary (online at 17 April 2025) ‘reagent’.
I note that although the goods of the Cited Mark are specific to goods for the purpose of biochemical analysis or medical diagnostics, the Goods are not so limited and therefore include activated carbon for scientific or medical purposes. Accordingly, it is foreseeable that the respective products would be sold by the same or competing traders via the same trade channels. 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.
I must now consider whether the Trade Mark is substantially identical with, or deceptively similar to, the Cited Mark for the purposes of requirement (iii).
Substantially identical
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).
The respective marks are reproduced below:
| Trade Mark | Cited Mark |
| PB |
On a side by side comparison, there are some visual differences between the marks, namely the black disc and stylisation of the lower case letters ‘pb’ in the Cited Mark. I accept that these differences would not be overlooked on a close comparison of the respective marks.
Accordingly, I am not satisfied that a total impression of resemblance[9] emerges from a comparison between the Trade Mark and the Cited Mark. The marks are not substantially identical.
[9] Ibid.
Deceptively similar
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.
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].
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).
What must be considered is the overall impression that a person of ordinary intelligence and memory would likely have of the Trade Mark and the Cited Mark, having regard to the look, sound, and ideas conveyed by the respective marks, and allowing for imperfect recollection.
The Applicant submits that:
the Cited Mark is a composite or figurative mark;
the filled disc device and the stylisation and intersection of the letters ‘p’ and ‘b’ create a conceptual effect that is the most, if not a major, striking and memorable feature of the Cited Mark; and
the lasting impression left by the Cited Mark is an ornate and enigmatic graphic device, not simply the characters ‘p’ and ‘b’.
The Applicant submits that the additional features in the Cited Mark 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 Mark would be to “extend its scope well beyond the monopoly that has been granted… by [its] registration”.[16] The Applicant cites several decisions to support its contention that the inclusion of the whole of the Trade Mark within the Cited Mark 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).
In my view, the Trade Mark is visually, aurally and conceptually similar to the Cited Mark. The most visually prominent and memorable feature of both the Trade Mark and the Cited Mark is the letters ‘PB’ and this is how the marks are likely to be recalled. The marks are also aurally identical. The additional features of the Cited Mark do not diminish the aural and visual dominance of the letters ‘p’ and ‘b’. The device elements are limited and not highly distinctive. Rather, the stylised font and the contrast of the letters against a solid background are features which only render the letters ‘p’ and ‘b’ more dominant, essential and memorable. Accordingly, having regard to the decisions cited by the Applicant, while the device features cannot be ignored for the purposes of the comparison, I consider they are to be accorded less weight relative to the letters ‘p’ and ‘b’, having regard to the impression of the Cited Mark likely to be made on the mind of the consumer.
Because of the shared memorable element of the letters ‘p’ and ‘b’, there is a risk that consumers familiar with the Cited Mark would assume that the trade marks emanate from the same trader or share a common connection.
I consider that the Trade Mark and the Cited Mark are deceptively similar and that requirement (iii) is satisfied.
I must now consider whether the evidence filed enables a finding of prior continuous use or honest concurrent use pursuant to s 44(4) or s 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
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.
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;
the use commenced before the priority date of the Cited Mark and continued at least until the priority date for the registration of the Trade Mark;
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 Mark.
The Applicant submits that the Trade Mark has been in use since 2006, 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.
Cullum 1 contains archived extracts from the Applicant’s website, ‘ None of the extracts provided make reference to ‘PB’ and therefore do not demonstrate use of the Trade Mark.
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.
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
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.
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] (‘McCormick’).
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 ‘PB’ some 17 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 Mark.
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.
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.
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).
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].
In respect of the likely degree of confusion, Cullum 1 contains a printout from the Wikipedia webpage, which provides information about the owner of the Cited Mark as a biotechnology company which “develops and manufactures systems for gene sequencing and some novel real time biological observation”. The Applicant submits that the degree of likely confusion between the Trade Mark and the Cited Mark is low because the owner of the Cited Mark operates in an entirely different market to the Applicant. Irrespective of the differences in the core businesses of the Applicant and the owner of the Cited Mark, as explained above, the normal and fair use of the Cited Mark as registered would encompass the stated nature, purpose and function of the Goods.
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 Mark were the Trade Mark to be accepted for registration.
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
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.
I am satisfied that there is a ground for rejection under s 44 of the Act. Accordingly, I reject trade mark application number 2339187 in accordance with s 33(3) of the Act.
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
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