Trade mark application number 2458096 (class 20) – FLAIR OFFICE FURNITURE & FITOUTS (fig.) - in the names of Adrian Pursell and Goninon Pty Ltd

[2025] ATMO 41

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2458096 (class 20) – FLAIR OFFICE FURNITURE & FITOUTS (fig.) - in the names of Adrian Pursell and Goninon Pty Ltd

Delegate:

Tracey Berger

Representation:

Applicant: Peter Whitehead of Hazan Hollander

Decision:

2025 ATMO 41

Trade Marks Act 1995 (Cth) – s 33 proceeding – s 44 ground for rejection considered – trade mark deceptively similar to earlier registered mark – trade mark application refused

Background

1. On 14 June 2024, Adrian Pursell and Goninon Pty Ltd (collectively the ‘Applicant’) filed an application to register the trade mark detailed below pursuant to the provisions of the Trade Marks Act 1995 (Cth):[1]

   Trade Mark:                    (‘Trade Mark’)

   Number:   2458096

   Goods:Class 20: office furniture; furniture; ergonomic furniture; furniture for industrial use; home furniture; office furniture (‘Applicant’s Goods’)

   [1] Any references to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) or a regulation of the Trade Marks Regulations 1995 (Cth) respectively, unless otherwise indicated.

2. The application was examined as required by s 33 and on 31 July 2024, an adverse examination report issued raising a ground for rejection under s 44 on the basis that the Trade Mark is substantially identical with or deceptively similar to the earlier trade mark set out below covering the same or similar goods or closely related services (‘Cited Mark’):

Number	Filing Date	Trade Mark	Owner	Goods/Services
1367237	17/6/2010	Court International Ltd	Class 20:  Back panels (parts of furniture); bathroom furniture, common garden furniture, bedroom furniture, kitchen furniture, nursery furniture, office furniture; bean bags in the nature of furniture; inflatable furniture; computer furniture, computer workstations; modular furniture; mirrors being items of furniture; trollies (furniture); vanity units (furniture); wine racks (furniture)  Class 27:  Carpets, rugs, mats, matting, linoleum, vinyl and other materials for covering existing floors  Class 35:  Retail and wholesale of carpet, tiles, floor coverings, furniture, homewares, accessories therefor and cleaning preparations; carpet emporiums  Class 37:  Carpet laying, tile laying, floor covering laying; stripping and removal of carpet, tiles and floor coverings; cleaning of carpet, tiles and floor coverings

1. The Applicant responded to the Examiner’s report providing information about their use of the Trade Mark.  However, the Examiner issued a second report maintaining the objection explaining that the marks are deceptively similar as both marks ‘share the same major memorable element, FLAIR’ and that the information provided was not sufficient to overcome the citation and outlining the evidentiary requirements for establishing prior use under s 44(4).

2. In response, the Applicant responded disputing that the marks are deceptively similar, particularly given the different stylisation, and pointing to a number of decisions where two marks with a common element were found not to be deceptively similar.  The Examiner maintained the objection in a third examination report and following this report, the Applicant asked to be heard by way of video conference.

3. This matter has been allocated to me to determine as a delegate of the Registrar of Trade Marks.  I heard this matter on 14 February 2025.  At the hearing Peter Whitehead of Hazan Hollander appeared for the Applicant and filed a written summary of his submissions prior to the hearing.  I make my decision based on the aforementioned materials and written and oral submissions of the parties.

4. 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 grounds for rejection under s 44 maintained by the Examiner and I am not bound by the Examiner’s findings. While I may consider reasoning provided by the Examiner in support of the objections, ultimately, I must make a decision based on my interpretation of the facts and law.

   Discussion

5. Section 44 relevantly provides:

   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.

6. The Cited Mark is registered in the name of another person and has a priority date earlier than that of the Application.  Further, the Applicant concedes that the class 20 goods of the Cited Mark are the same or similar to the Applicant’s Goods.  Hence, I turn to the question of whether the Trade Mark is substantially identical with or deceptively similar to the Cited Mark.

7. The Examiner did not consider the two marks to be substantially identical.  I agree that when a side by side comparison of the Trade Mark and Cited Mark is conducted, it is obvious that there are differences in the words comprising the marks and the stylisation of each mark such that there is not a total impression of resemblance.

8. Section 10 provides 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’. 

9. The approach for assessing whether two marks are deceptive similarity was enunciated by Windeyer J in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):

   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].[2]

   [2] [1963] HCA 66, [13] (Windeyer J).

10. The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd (‘Self Care’)[3] conveniently stated the relevant principles, which was summarised in The Agency Group Australia Limited v. H.A.S. Real Estate Pty Ltd[4] as follows:

    [3] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

    [4] [2023] FCAFC 203 (Yates, Markovic and Kennett JJ).

    (a)the resemblance between the two marks must be the cause of the likely deception or confusion;[5]

    [5] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69] (Yates, Abraham and Rofe JJ).

    (b)in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[6]

    [6] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).

    (c)the marks should not be compared side by side;[7]

    (d)the effect of spoken description must be considered; if a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods (or services), then similarities both of sound and of meaning may play an important part;[8]

    (e)the focus is upon the effect or impression produced on the mind of potential customers of the goods (or services) in relation to which the two marks are used and in the case of the registered mark, allowing for ‘imperfect recollection’;[9]

    (f)the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the marks prior to filing, or any reputation associated with the registered mark;[10]

    (g)the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods or services covered by the registration), with the impression that the notional buyer would have of notional and normal fair use of the opposed mark;[11]

    (h)‘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; [12]

    (i)the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected, having regard to the character of the customers who would be likely to buy the goods in issue;[13]

    (j)it is not necessary to establish actual probability of deception or confusion, but a mere possibility of confusion is not enough. There must a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be ‘a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source’;[14]

    (k)evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[15] and

    (l)any intention to deceive or cause confusion may be a relevant consideration but is not required.[16]

    [7] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).

    [8] Ibid.

    [9] Ibid.

    [10] C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, 62 [43] (Ryan, Branson and Lehane JJ).

    [11] Shell (n 2), 415.

    [12] 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).

    [13] Campomar Sociedad Limited v Nike International Limited (2000) 202 CLR 45, 79 [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).

    [14] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50(ii)] (‘Woolworths’) (French J) restating principles from Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-595 (Kitto J).

    [15] Australian Woollen Mills Ltd (n 6).

    [16] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) citing Australian Woollen Mills (n 6), 657.

11. The Applicant argues that there is no likelihood of confusion or deception between the use of the Trade Mark and the Cited Mark because the Trade Mark is ‘novel and distinctive’ and when the marks are considered in their entirety, the numerous additional elements of the Trade Mark together with the stylisation create a different appearance from the Cited Mark.  Also, the Applicant contends that the two marks are conceptually different.  As a result, the Trade Mark creates a ‘vastly different’ recollection to that of the Cited Mark.

12. In the Applicant’s submission, the following decisions, each of which found the marks in question not to be deceptively similar, are analogous to the present case:

Case	Prior Mark	Later Mark
The Agency Group v H.A.S Real Estate Pty Ltd[17]	THE NORTH AGENCY
Global Retail Brands Australia Pty Ltd v Bed Bath ‘N’ Table Pty Ltd[18]	BED BATH ‘N’ TABLE
McD Asia Pacific LLC v Hungry Jack’s Pty Ltd[19]	BIG MAC MEGA MAC	BIG JACK MEGA JACK
COMPASS Pathfinder Limited[20] (‘Compass Pathways decision’)	Compass Health Group	COMPASS PATHWAYS
Beiersdorf AG v KOSE Corporation[21] (‘Q10 decision’)

[17] [2023] FCAFC 203, [73]-[109] (Yates, Markovic and Kennett JJ).

[18] [2024] FCAFC 139, [64], [110]-[132] (Nicholas, Katzmann and Downes JJ).

[19] [2023] FCA 1412, [95]-[106] (Burley J).

[20] [2024] ATMO 16 (Hearing Officer T. Berger).

[21] [2024] ATMO 71 (Hearing Officer N. Smith).

1. In my opinion, each of these decisions can be distinguished from the current situation for various reasons. During oral submissions, the Applicant specifically highlighted the Compass Pathways and Q10 decisions. I believe both of these decisions, along with the other cases mentioned, differ from the present case because the common element is non-distinctive, descriptive, and/or commonly used for the relevant goods/services. In the Compass Pathways decision, the marks were not found to be deceptively similar partly because ‘PATHWAYS’ was not entirely descriptive of the services, unlike ‘Health Group’. More importantly, the evidence showed that numerous ‘Compass’ marks, which are more similar to Compass Health Group than COMPASS PATHWAYS, were in use for the same services in the Australian market. Similarly, in the Q10 decision, the common element Q10 was shown to be commonly used and registered for the relevant goods. Each case must be decided on its own merits, and in the present circumstances, there are significant differences between the decisions relied on by the Applicant and the issue before me. Here, while the common element ‘FLAIR’ may suggest that the furniture is elegant, it is not directly descriptive. The other main element, HOME, in the Cited Mark is non-distinctive (unlike PATHWAYS), and there is no evidence that FLAIR is a term commonly used or registered by other traders for such goods.

2. The Cited Mark features the words ‘HOME FLAIR’ in running script, with ‘flooring and furnishings’ in small block print underneath. The words ‘HOME’ and ‘flooring and furnishings’ are non-distinctive. Although the Cited Mark appears on a yellow background, the registration is not limited to specific colors, meaning the background could be any color, including white. Therefore, I do not consider the background significant in comparing the two marks. Consequently, the distinctive and essential element of the Cited Mark is the word ‘FLAIR’.

3. In the Trade Mark, the dominant element is the word ‘FLAIR’, which despite being rendered in a particular font with the ‘R’ appearing backwards, is still recognisable as ‘FLAIR’. The words ‘OFFICE FURNITURE & FITOUTS’ are in a significantly smaller font and are descriptive. Although the Trade Mark includes a device element, I do not find the wavy lines particularly significant. In my view, the distinctive and memorable element of the Trade Mark is the word ‘FLAIR’.

4. The Applicant contends that the common element ‘FLAIR’ is not identical due to the stylisation of the word, particularly in the Trade Mark. Nonetheless, I believe that ‘FLAIR’ is a prominent component of both marks and the element that consumers are likely to recall. The descriptive words in each mark cannot be ignored, and while these words differ, ‘flooring and furnishings’ and ‘office furniture & fittings’ convey a similar idea. Thus, each mark suggests the idea of FLAIR furniture, whether for the home or office, implying that the furniture offered under the respective marks is stylish or elegant. Despite the differences in stylisation, I believe there is a likelihood of confusion, as consumers might wonder whether goods offered under the Trade Mark are the ‘office’ version of those provided under the Cited Mark or otherwise related.

5. For these reasons, I am satisfied that the Trade Mark is deceptively similar to the Cited Mark and that a ground for rejection exists under s 44.

6. For completeness, the Applicant has not filed any evidence that would permit a finding of honest concurrent use or prior use under ss 44(3) or (4).  Nor has the Applicant drawn my attention to any other relevant circumstances that may be considered under s44(3)(b).

   Decision

7. I am satisfied on the balance of probabilities that a ground for rejecting the application to register the Trade Mark exists under s 44.

8. Accordingly, under s 33(3), I reject trade mark application number 2458096.  If the Registrar is served with a notice of appeal within one month of the date of this decision, I direct that the disposition of the application be in accordance with the court’s order or direction. 

   Tracey Berger

   Hearing Officer

   Oppositions and Hearings

   Trade Marks and Designs

   27 February 2025