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    The Applicant filed a response that resulted in the s 41 objection being withdrawn but in the absence of substantive submissions regarding the citation, s 44 was maintained.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…

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.

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Details

Case: [2025] ATMO 122
Decision Date: 25 June 2025

CaseChat Overview and Summary

Powder Monkey IP Limited ('the Applicant') sought to register trade mark number 2372023, comprising the words "POWDER MONKEY" and a monkey device, for goods in classes 32 and 33. The application was opposed by Bleasdale Vineyards Pty Ltd, citing its registered trade mark "POWDER MONKEY" (registration number 1298363) for wine in class 33. The delegate of the Registrar of Trade Marks was required to determine whether the Applicant's trade mark should be rejected under section 44 of the *Trade Marks Act 1995* (Cth) due to its similarity to the cited mark.

The legal issues before the delegate were whether the Applicant's goods were similar or closely related to the goods covered by the cited mark, and whether the Applicant's trade mark was substantially identical with or deceptively similar to the cited mark. The delegate was required to consider these issues afresh, independent of the examiner's findings, and determine if a ground for rejection under section 44 existed on the balance of probabilities.

The delegate reasoned that for section 44 to apply, the cited mark must be registered by another person, have an earlier priority date, and cover goods or services similar or closely related to the applicant's goods, and the marks must be substantially identical or deceptively similar. The delegate found that the cited mark met the first two requirements. Applying principles from cases such as *E & J Gallo Winery v Lion Nathan Australia Pty Ltd* and considering the modern trade practices where alcoholic and non-alcoholic beverages are often produced, distributed, and sold by the same entities to the same consumers, the delegate determined that a significant portion of the Applicant's goods in both classes 32 and 33 were similar or closely related to wine. However, the delegate found that the Applicant's trade mark, when considered as a whole, was not substantially identical to the cited mark. On the question of deceptive similarity, the delegate applied the test of whether the Applicant's mark, viewed through the lens of imperfect recollection of an ordinary consumer, was likely to deceive or cause confusion with the cited mark, considering visual, aural, and conceptual aspects.

Ultimately, the delegate found that the Applicant's trade mark was likely to deceive or cause confusion in respect of all goods covered by the application, save for 'energy drinks' in class 32. As the Applicant had not been afforded an opportunity to amend its specification and the delegate was not satisfied that the application could be accepted in its current form, the trade mark application was rejected.

Orders