Trade mark application number 2372023 (classes 32 and 33) –

[2025] ATMO 122

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2372023 (classes 32 and 33) – POWDER MONKEY BREWING CO and Monkey device - in the name of Powder Monkey IP Limited

Delegate:

Anne Makrigiorgos

Representation:

Applicant: Addisons Lawyers

Decision:

2025 ATMO 122

Trade Marks Act 1995 (Cth) – – section 33 proceeding - s 44 ground for rejection considered – use of trade mark is likely to give rise to deception or confusion in respect of all goods, save one – no opportunity to amend - trade mark application rejected

Background

1.       On 14 July 2023, Powder Monkey IP Limited (‘Applicant’) applied to register trade mark number 2372023 (‘Application’) as a series of two trade marks pursuant to the provisions of the Trade Marks Act 1995 (Cth).[1] Details of the Application appear below:

Filing Date:      14 July 2023

Trade Marks:   (together the ‘Trade Mark’)

Specification:               Class 32: Beers (including ales, stouts, porters, lagers); non-alcoholic beverages; mineral and aerated waters; fruit beverages and fruit juices; syrups and other non-alcoholic preparations for making beverages; energy drinks

Class 33: Alcoholic beverages (except beer); alcoholic wines; distilled beverages; liqueurs; spirits; low alcoholic beverages (‘Applicant’s Goods’).

[1] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act1995 (Cth) and each reference to a regulation is a reference to a regulation in the Trade Marks Regulations1995 (Cth).

2.    The Application was examined as required under s 31. On 8 August 2023, IP Australia issued an Adverse Examination Report identifying grounds for rejection under s 41 and s 44. The examiner raised the following prior registration as an objection to registration of the Trade Mark (‘Cited Mark’):

Registration number: 1298363

Trade mark: POWDER MONKEY

Filing/Priority date: 11 May 2009

Owner: Bleasdale Vineyards Pty Ltd

Specification: Class 33: Wine

3.    The examiner raised the Cited Mark as a ground for rejection on the basis that the Trade Mark closely resembled the Cited Mark because the words POWDER MONKEY were a significant and memorable element of the Trade Mark and the goods of the Cited Mark were similar to the Applicant’s Goods.

4.    The Applicant filed a response that resulted in the s 41 objection being withdrawn but in the absence of substantive submissions regarding the citation, s 44 was maintained. Rather than file substantive submissions in respect of the s 44 objection, the Applicant chose to obviate the examination process and requested a hearing by way of written submissions on 10 February 2025. The Applicant filed its written submissions drafted by James Lawrence of Addisons Lawyers on 4 June 2025.

5.    As a preliminary matter, I note that the Application is subject to a presumption of registrability under s 33. As such, if I am not satisfied on the balance of probabilities that a ground for rejection exists, I must accept the Application. I must also consider afresh the ground for rejection under s 44 identified by the examiner and I am not bound by the examiner’s findings. Nor is this hearing a review of the examiner’s objections. Whilst I may consider reasoning provided by the examiner in support of the objection, ultimately, I must make a decision based on my interpretation of the facts and law.

Discussion

6.    Section 44 relevantly provides (some notes omitted):

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).

7.       For the Cited Mark to constitute a valid objection to the registration of the Trade Mark, it must be a trade mark registered or sought to be registered by a person other than the Applicant and:

·have a priority date which is earlier than that of the Application (‘first requirement’);

·be in respect of goods and/or services that are similar or closely related to the Applicant’s Goods (‘second requirement’); and.

·be substantially identical with or deceptively similar to the Trade Mark (‘third requirement’).

8.    The Cited Mark is in the name of someone other than the Applicant and has an earlier priority date than the Application. The first requirement is therefore satisfied. I now turn to the question of whether the Applicant’s Goods are similar or closely related to the goods of the Cited Mark.

9.    Goods are ‘similar’ to other goods if they are the same or of the same description as the other goods.[2] The factors relevant to the consideration of whether goods are similar include the nature, purpose, use, source of manufacture and respective trade channels of the goods and whether the ordinary consumer of the goods would regard the goods as being from a single source.[3] No single consideration is conclusive in itself.[4]

[2] s 14(1).

[3] Re Jellinek’s Application [1946] 63 RPC 59 (Romer J).

[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 606 (Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ) (‘Southern Cross’).

10.   In considering the Applicant’s Goods and the goods of the Cited Mark, I should look to the ordinary meaning of the words and the notional normal and fair use. I should consider the context in deciding whether ordinary consumers of the goods would see the goods as having the same trade origin.[5] Overall, the matter is to be determined from a business point of view.[6]

[5] Ibid. See also E & J Gallo Winery v Lion Nathan Australia Pty Limited [2009] FCAFC 27, [73] (Moore, Edmonds and Gilmour JJ) (‘Gallo’).

[6] San Remo Macaroni Co Pty Ltd v San Remo Gourmet Coffee Pty Ltd [2000] FCA 1842, [35] (Goldberg J).

11.    There have been a number of decisions in the courts which have considered whether different types of alcoholic beverages are similar. The Full Court in E & J Gallo Winery v Lion Nathan Australia Pty Ltd (‘Gallo’)[7] said that the different manner of manufacture of beer on the one hand and wine on the other establishes that they are not the same goods. However, the Court continued to say:

[I]t is unlikely that this difference would be significant to the consuming public if, as His Honour found, large producers of alcoholic beverages produce a range of products.  Additionally it is important to bear in mind that this issue is being considered in the more general context of whether consumers might see the goods as having the same trade origin.[8]

[7] Gallo (n 6).

[8] Ibid.

12.   With respect to the manner in which beer and wine were sold the Full Court said that:

If large producers of alcoholic beverages are producing a range of products then the fact that the wine might be sold in a slightly different way would not be a difference of significance to the consuming public who may come to consider the trade origins of [the respondent’s] beer.[9]

[9] Ibid.

13.   In the United Kingdom it is settled practice to regard whisky and wine as goods of the same description as noted in Balmoral Trade Mark.[10]

[10] (1999) RPC 297 (Hobbs QC).

14.   In Re Australian Wine Importers’ Trade Mark, the United Kingdom Court of Appeal dismissed an appeal from a decision of Kay J. Cotton LJ held:

… Well, it is not confined to the same goods, but it is ‘the same goods or description of goods;’ and if it were necessary to decide it absolutely on that point, my opinion would be that there was an application for registration with respect to the same description of goods; because although wine and whiskey, and wine and spirits are in a great many ways considered as different goods, yet we are not considering here how chemists would describe them, but whether manufacturers would describe them as being the same description of goods or not. We find that they are goods which are generally sold by the same persons, and for the purposes of trade may, in some respects, be considered as the same description of goods; for they are both alcoholic, and although there may be differences in them, they may fairly be considered as coming within the same description of goods, though they are not the same goods …[11]

[11] (1889) 6 RPC 311, 316 (Cotton, Lindley and Lopes LJ).

15.   Lord Justice Lindley similarly concluded:

Of course one has to look at the trade. One must look at it from a business point of view. They are alcoholic and spirituous. They are sold in this country constantly by the same people. Wine and spirit dealers are common enough in this country, and I am not sure that they are not the same description of goods; but whether they are or not, it seems to me that they are so uncommonly near the line that we ought not to depart from the view taken by Mr Justice Kay, and say to the Comptroller, ‘You must register in favour of these wine merchants a mark which is already on the Register in favour of a spirit merchant who is also a wine merchant.’ It appears to me that Mr Justice Kay has taken the right view of the case, and that we ought not to interfere with his Order. These observations disclose, at the very least, that questions of fine judgment may be involved.[12]

[12] Ibid 318 to 319.

16.   There is similarity in the nature and purpose of alcoholic beverages and non-alcoholic beverages. They are sold to the public for consumption. Today, alcoholic beverages and non-alcoholic beverages of all types are made, distributed and sold by the same manufacturers to the same customers and are present in the same retail outlets, often in some degree of proximity to each other. From my own knowledge, I am aware of alcoholic beverage companies such as Asahi, Diageo, Pernod Ricard, Bacardi and Anheuser-Busch InBev who make, distribute and market a wide variety of alcoholic beverages and non alcoholic beverages which include beers, wines and spirits amongst others. In addition, soft drink manufacturers such as Coca-Cola and PepsiCo are now making and marketing ready to drink alcoholic beverages.

17.    Today, claims to non-alcoholic beverages include versions of what were once only known to be alcoholic beverages such as spirits, wines, beers, cocktails, aperitifs and ciders and claims to alcoholic beverages include many alcoholic versions of what were typically only known to be non alcoholic beverages such as seltzers (sparking water), ginger beer and lemonade. Further fruit juice such as cherry, passionfruit, stone fruit and berry juice, can be fermented to make alcoholic fruit wine, pear juice to make alcoholic perry and cider and apple juice to make cider.

18.    The Applicant’s Goods have broad claims to both non-alcoholic beverages and alcoholic beverages and a specific claim to alcoholic wines. The Cited Mark covers wine. In light of this, the breadth of the Applicant’s Goods, and considering the trade origins of the respective goods, I find that the following subset of the Applicant’s Goods are the same or similar to the goods of the Cited Mark:

Class 32: Beers (including ales, stouts, porters, lagers); non-alcoholic beverages; mineral and aerated waters; fruit juices; fruit beverages; syrups and other non-alcoholic preparations for making beverages

Class 33: Alcoholic beverages (except beer); alcoholic wines; distilled beverages; liqueurs; spirits; low alcoholic beverages

19.    I do not consider that energy drinks are of the same description as wine. While both are sold to the public for consumption, their inherent natures differ and energy drinks are not provided in an alcoholic from and nor are they typically sold alongside alcoholic beverages. Therefore, the second requirement is satisfied in respect of all the Applicant’s Goods other than ‘energy drinks’ in class 32.

20.    The Applicant submits that to the extent that the Cited Mark presents a barrier to acceptance, the Applicant is prepared to delete all aspects of the specification other than ‘beers (including ales, stouts, porters, lagers)’ in class 32. For the purposes of considering the s 44 ground, I can only consider the Applicant’s Goods as they are before me, not the Applicant’s Goods following a hypothetical amendment. However, I note that in light of the above discussion, and in particular Gallo, even if the Applicant’s Goods were limited to ‘beers (including ales, stouts, porters, lagers)’ in class 32, the second requirement would still be satisfied.

21.    I now turn to the question of whether the Trade Mark is substantially identical or deceptively similar to the Cited Mark.

22.    The starting point of an analysis as to whether trade marks are substantially identical is the well-known dicta of Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’), where his Honour stated:

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.[13]

[13] [1963] HCA 66, [12].

23.    In my opinion, a total impression of dissimilarity emerges from a side by side comparison of the respective marks. Therefore, I do not consider the Trade Mark to be substantially identical with the Cited Mark.

24.    I move to consider whether the Trade Mark is deceptively similar to the Cited Mark. Section 10 provides a definition of deceptively similar being that ‘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’.

25.    Justice Windeyer outlined the following approach for the assessment of deceptive similarity 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 [mark].[14]

[14] Ibid [13].

26.    The respective trade marks must be compared as wholes,[15] having regard to essential or distinguishing features,[16] and considering the marks visually and aurally, and in the context of the relevant surrounding circumstances.[17] What must be considered is the overall impression that the notional buyer, being 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.[18]

[15] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020 [50]. See also, Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] FCA 901, [78] (Bennett J).

[16] Crazy Ron’s Communications v Mobileworld Communications [2004] FCAFC 196, [77]-[88] (Moore, Sackville and Emmett JJ).

[17] New South Wales Dairy Corporation v Murray Goulburn Co-operative Co Ltd [1989] FCA 124; (1989) 86 ALR 549, 589 (Gummow J).

[18] Jockey International Inc v Darren Wilkinson [2010] ATMO 22 (Hearing Officer Spence).

27.    In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd, Kitto J noted the following regarding the risk of deception or confusion:

While a mere possibility of confusion is not enough - for there must be a real, tangible danger of its occurring - it is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough if the ordinary person entertains a reasonable doubt.[19]

[19] Southern Cross (n 5), 594.

28.    Deceived implies the creation of an incorrect belief or mental impression; ‘causing confusion’ may merely involve ‘perplexing or mixing up the minds’ of potential customers.[20]

[20] Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, 122 [39] (Black CJ, Sundberg and Finkelstein JJ) quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62 (Richardson J).

29.    In relation to the comparison of marks, the Full Court said in Starr Partners Pty Ltd v Dev Prem Pty Ltd:

The first step in the analysis is to identify the impression produced by the registered mark considered in its entirety. Similarity is not based on only part of the registered mark. On the other hand, when one decides upon the impression produced by that mark it is not improper to give more or less weight to particular features of it, provided the ultimate conclusion is based on a consideration of the mark in its entirety. This approach does no more than recognise that one word or feature of a mark can be more striking and memorable than another.[21]

[21] [2007] FCAFC 42, [22] (Lindgren, Emmett and Finkelstein JJ).

30.    Thus, the presence of a common element is not conclusive to a finding of deceptive similarity[22] and the determination of the question ‘must necessarily involve some inquiry as to the inherent distinctiveness of the part which is common to both marks under consideration’.[23]

[22] Conde Nast Publications Pty Ltd v Virginia Taylor [1998] FCA 864 (Burchett J); PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2021] FCAFC 128 (Jagot, Nicholas and Burley JJ).

[23] Re Frigiking Trade Mark [1973] RPC 739, 752 (Ch D).

31.    The commonality of idea is part of the process of determining if the marks look or sound alike. In Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd, the High Court observed:

[t]he fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them, although this fact could be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive.[24]

[24] (1952) 86 CLR 536, 539 (Dixon CJ, Williams, McTiernan, Webb and Kitto JJ).

32.    In light of the authorities, I must decide whether there is a real, tangible danger of deception or confusion by reason of the use of the Trade Mark, having regard to the imperfect recollection of the notional consumer. That is not to be judged by a side by side comparison of the Trade Mark and the Cited Mark. I must compare the marks as wholes, visually and aurally considering all their elements with regard to essential or distinguishing features, in the context of the relevant surrounding circumstances. Of importance is the effect and meaning of the trade marks, particularly their effect or impression produced on the mind of ordinary consumers.

33.    The Applicant submits that:

·there are sufficient differences in a comparison of the Trade Mark, being a composite mark, with the Cited Mark, being a word mark;

·the Trade Mark is significantly busier than the Cited Mark and there is a clear overall visual dissimilarity;

·while ‘POWDER MONKEY’ is but one linguistic element in the Trade Mark, it is accompanied by the additional words ‘BREWING CO’;

·the Trade Mark contains further dominant elements which differentiate the Trade Mark including a monkey holding a seed cone of a hops plant[25] (‘Monkey Device’) and two five-point stars;

·a key essential element of the Trade Mark is the Monkey Device that gives the whole mark a specific meaning distinct from the Cited Mark. The monkey is not a person like the historical phrase ‘powder monkey’[26] and the words only add to the idea that the Monkey Device is a key essential element. Consumers will take from that recollection of the Trade Mark the dominant image of the Monkey Device and not the smaller, far less conspicuous, text of the words ‘powder monkey’;

·purchasers are likely to remember trade marks by the idea rather than the specific words in the Trade Mark;

·even when a mark is wholly contained within another mark, a finding of deceptive similarity is not automatic and depends on the extent of the shared element and other additional elements;

·beer and wine are two different types of alcohol and the impression left by the marks are completely different to an ordinary purchaser of beer and wine; and

·consumers engaging with beer and wine have a heightened awareness and concentration given the different and distinct alcohol preferences of the ordinary consumer.

[25] The Applicant at times describe the Monkey Device as a beer making monkey which is not a correct description given the monkey is not making anything let alone making beer.

[26] The Applicant provides a definition of Powder Monkey from the Merriam-Webster Dictionary online being ‘a person who carries or has charge of explosives (as in blasting operations)’.

34.    The Applicant refers to the cases of Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd,[27] McD Asia Pacific LLC v Hungry Jack’s Pty Ltd,[28] The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd[29] and Bed Bath ‘N’ Table Pty Ltd v Global Retail Brands Australia Pty Ltd.[30] I note that the comparison of marks before the court in these cases was very different to that before me. The marks compared were either word marks, word and stylised word marks and/or contained descriptive words.[31] I also note the Applicant submits that In-N-Out Burgers, Inc v Hashtag Burgers Pty Ltd[32] should be treated with significant caution. Given that this case was appealed to the Full Federal Court[33] and the Full Federal Court agreed with the primary judge, no explanation is provided by the Applicant as to why this case should be treated with significant caution.

[27] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

[28] [2023] FCA 1412 (Burley J).

[29] [2023] FCA 482, [55] (Jackman J).

[30] [2023] FCA 1587 (Rofe J). This decision was appealed to the Full Federal Court in Global Retail Brands Australia Pty Ltd v Bed Bath ‘N’ Table Pty Ltd [2024] FCAFC 139 (Nicholas, Katzmann and Downes JJ) but Rofe J’s decision on lack of deceptive similarity was upheld.

[31] The comparisons being Protox v Botox, Big Mac v Big Jack, v The North Agency and v BED BATH ‘N’ TABLE.

[32] [2020] FCA 193 (Katzmann J).

[33] Hashtag Burgers Pty Ltd v In-N-Out Burgers, Inc [2020] FCAFC 235 (Nicholas, Yates and Burley JJ).

35.    The Cited Mark consists of the words POWDER MONKEY[34] which are well adapted to distinguish the goods of the Cited Mark. Given they are the sole words in the Cited Mark, a consumer will retain these words as their impression and recollection of that mark. On the other hand, the Trade Mark is a composite mark consisting of the Monkey Device surrounded by two sets of prominent wording, the distinctive words POWDER MONKEY above and the same sized words BREWING CO. below, the two sets of words being separated by two de minimus stars. While the words BREWING CO cannot be ignored,[35] they are non-distinctive, indicating that the goods are brewed beverages or beverages from a brewing company, so they can to some extent be discounted in comparing the respective marks.[36]

[34] Powder Monkey is defined in the Macquarie Dictionary online as ‘a boy formerly employed on warships, etc., to carry powder’ and ‘a person in charge of explosives in any operation requiring their use’.

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

[36] Re Broadhead’s Application (1950) 67 RPC 209, 215 (Evershed MR); Mond Staffordshire Refinery Co Ltd v Harlem (1929) 41 CLR 475, 477-8 (Know CJ, Gavan, Duffy, and Starke JJ).

36.    After consideration of all the elements of the Trade Mark in their context including the size, prominence, and the stylisation of words and devices, and the relationship of all these elements to each other, considering the Trade Mark as a whole, to me, the words POWDER MONKEY are a noticeable and essential feature of the Trade Mark which strike the eye and have a greater effect on the mind of an ordinary consumer. While the words POWDER MONKEY are defined in the Macquarie Dictionary online, as submitted by the Applicant they are historic words, I believe the meaning of these words would not be known to a great deal of Australians. Thus, in the context of the Trade Mark where the words POWDER MONKEY surround the Monkey Device, to the notional consumer, I consider the Monkey Device is more likely to be seen as an illustration of the words POWDER MONKEY and a reinforcement of the essential and distinctive words POWDER MONKEY rather than as a significant device element which detracts from these words.

37.    I disagree with the Applicant that consumers will recollect the Monkey Device of the Trade Mark and not the words ‘POWDER MONKEY’. I am satisfied that the Monkey Device and the words BREWING CO. in the Trade Mark do not overwhelm the identity of the words POWDER MONKEY and thus the words POWDER MONKEY will inform the basis for any recollection (imperfect or otherwise) of the trade marks by a potential consumer. Given the essential word element in the trade marks is identical and the Monkey Device is likely to be seen as an illustration of the words, these elements are not transformative and do not serve to sufficiently differentiate the Trade Mark from the Cited Mark and thus remove the likelihood of confusion or cause to wonder.

38.    The context of the comparison is of course relevant. While many of the Applicant’s submissions speak as if the Applicant’s Goods were only beer, this is not the case and even if it was, beer is a good of the same description as wine, and these goods are made, distributed and sold by the same large manufacturers to the same customers. I consider the consumers of wine and beer, and indeed any alcoholic beverages, to be anyone over the age of 18 and the consumers of non-alcoholic beverages would include most Australians. Thus, the consumers of the respective goods overlap. Further, there is nothing to suggest that the Applicant’s Goods and goods of the Cited Mark are not requested verbally either in store or in a restaurant or bar.

39.    I do not agree with the Applicant’s submission that consumers engaging with beer and wine have a heightened awareness and concentration given the different and distinct alcohol preferences of the ordinary consumer. Firstly, the Applicant does not expand on what it means by ‘a heightened awareness and concentration’. Is the Applicant submitting that consumers engaging with beer and wine have a heightened awareness and concentration in respect of brands or price or alcohol content or something else? Secondly there is nothing before me to show that consumers engaging with beer and wine have a heightened awareness and concentration of anything.

40.    The Applicant also provides submissions which are directed solely to a comparison of the respective marks for beer and wine claiming that the overall impression left by the marks are completely different stating that ‘it is unlikely that a beer drinker will come to believe that the Cited Mark in the wine section of a Dan Murphy’s store has any connection with the beer Goods of the Applicant, let alone, leave the store with the impression that the Cited Mark may be connected to the Trade Mark’. Aside from the fact that the Applicant’s Goods cover a broad range of alcoholic and non-alcoholic beverages, I do not find the Applicant’s submissions persuasive given my conclusion that beer and wine are goods of the same description.

41.    Having assessed the visual, aural, and conceptual similarities and differences between the Cited Mark and the Trade Mark and the context described in the preceding paragraphs of this decision, and after giving weight to the possibility of imperfect recollection and therefore the possibility that consumers may not remember specific details of the respective marks but instead may recall a general idea or appearance, I find there is a real, tangible danger that a number of customers would be caused to wonder whether it might not be the case that the respective goods come from the same source.

42.    The Trade Mark is deceptively similar to the Cited Mark and I am satisfied on the balance of probabilities that there is a ground for rejecting the Trade Mark under s 44 in respect of all the Applicant’s Goods other than ‘energy drinks’.

43.    For completeness, the Applicant has not filed any evidence that would permit a finding of honest concurrent use or prior use. Nor has the Applicant drawn my attention to any other relevant circumstances that may be considered under section 44(3)(b).

Decision

44.    Section 33 of the Act provides (notes omitted):

Application accepted or rejected

(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.

(4)The Registrar may not reject an application without giving the applicant an opportunity of being heard.

45.    In Apple Inc v Registrar of Trade Marks, Justice Yates found that the fate of a trade mark application must be determined as a whole. He said:

My finding that the application for registration of app store for the designated services in class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole.[37]

[37] [2014] FCA 1304, [232].

46.    In circumstances where a ground for rejection has been established in respect of some, but not all of an applicant’s goods or services the Registrar may proceed to reject the application in its entirety, under the principles outlined above, but also has a discretion to offer an amendment to an applicant, allowing it to amend the application to remove goods and services for which a ground for rejection exists.

47.    In this matter, given that any amendment to the Applicant’s Goods would remove all the Applicant’s Goods except for energy drinks, and given that the Applicant submitted a single possibility of restricting the Applicant’s Goods to ‘beers (including ales, stouts, porters, lagers)’ in class 32, I decline to offer the Applicant with an opportunity to amend the Applicant’s Goods and I reject the Application for possible registration in its entirety.

48.    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.

Anne Makrigiorgos

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

25 June 2025