Turbo Systems Switzerland Ltd v Cummins Inc

[2025] ATMO 99

TRADE MARKS ACT 1995

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

Re:Opposition by Turbo Systems Switzerland Ltd to registration of trade mark applications 2258617 ACCELERA, 2327545 ACCELERA (Figurative) and 2327538 ACCELERA (Figurative) – all in classes 7, 11, 37, 39, 40 -  in the name of Cummins Inc.

Delegate:

Nicholas Smith

Representation:

Opponent: Written Submissions by Griffith Hack

Applicant: Written Submissions by Allens Patent and Trademark Attorneys

Decision:

2025 ATMO 99

Trade Marks Act 1995 (Cth) - section 52 opposition: ss 42(b), 44, 58 and 60 considered – none established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Turbo Systems Switzerland Ltd (‘Opponent’) to the registration of the trade marks (collectively ‘Trade Marks’) which are the subjects of the applications detailed below in the name of Cummins Inc. (‘Applicant’): 

Application Number:		2258617
Filing Date[1]:		24 March 2022
Goods and Services:		Class 7: Electric power generators; integrated fuel cell hybrid power generators; fuel cell power generators with integrated hydrogen generator; portable proton exchange membrane (PEM) for hydrogen generation; fuel cell power generator with integrated hydrogen storage capacities for use in fuel management, thermal management, humidification, power conditioning, overall system monitoring and control and manufacturing; membranes for hydrogen fuel cells and water electrolyzers for hydrogen generation; hydrogen fuel dispensers for hydrogen fueling stations; equipment and installations for the generation of electric power; Fuel cell power generators; Hydrogen and fuel cell power generation system; Hydrogen and fuel cell power generation subsystem; integrated fuel cell power generating systems and subsystems comprising of fuel cell stacks, valves, pumps, compressors, pressure regulators, sensors, electronic controls, hydrocarbon reformers, and fluid and heat transfer piping; components for hydrogen and fuel cell power generation systems and their sub-systems; automobile-grid connected fuel cell power generation system; components for automobile-grid-connected fuel cell power generation system and its sub-systems; heat exchangers as part of integrated fuel cell power generating systems and subsystems; electrolytic apparatus for generating hydrogen and oxygen; hydrogen refuelers, namely hydrogen refueling stations; hydrogen generator parts, namely separators and membranes for generators, circulation frames for generators, end walls and boxes for generators, rectifying demisters for generators, gas liquid separators Class 11: Heat exchangers, other than parts of machines; hydrogen generator systems for industrial purposes; hydrogen generators for industrial purposes; industrial hydrogen generator parts, namely compressors for generators; industrial installations for generating hydrogen and oxygen from water and renewable electricity using steam reforming; hydrogen purifiers; rectifying demisters. Class 37: Installation and maintenance of hydrogen fuel cells for vehicles; installing, servicing and repairing of fuel cell systems and hydrogen generators; building systems for the generation of alternative energy; operation of hydrogen refueling stations and related services, namely maintenance and installation of hydrogen refueling stations; hydrogen dispensing services; hydrogen fueling services. Class 39: Hydrogen storage services; electricity supply and distribution, namely, distribution of hydrogen gas, natural gas and electricity. Class 40: Electricity generation; generation of power; commissioning and providing systems for the generation energy; custom manufacturing of industrial and commercial hydrogen systems; custom manufacturing of fuel cell systems and hydrogen generators; hydrogen generation services; manufacturing of fuel cell systems and hydrogen generators; manufacture of hydrogen fuel cells for vehicles.
Trade Mark:		ACCELERA		(‘2258617 Mark’)
Application Number:		2327538
Filing Date[2]:		12 January 2023
Goods and Services:		Class 7: Electric power generators; integrated fuel cell hybrid power generators; fuel cell power generators with integrated hydrogen generator; fuel cell power generator with integrated hydrogen storage capacities for use in fuel management, thermal management, humidification, power conditioning, overall system monitoring and control and manufacturing; hydrogen fuel dispensers for hydrogen fueling stations; equipment and installations for the generation of electric power; heat exchangers as part of integrated fuel cell power generating systems and subsystems; electrolytic apparatus for generating hydrogen and oxygen; hydrogen refuelers, namely hydrogen refueling stations. Class 11: Heat exchangers, other than parts of machines; hydrogen generator systems for industrial purposes; hydrogen generators for industrial purposes; Industrial hydrogen generator parts, namely compressors for generators; Industrial installations for generating hydrogen and oxygen from water and renewable electricity using steam reforming; hydrogen purifiers; reactors for use in the chemical industry for generating hydrogen as a fuel; hydrogen generator parts, namely separators and membranes for generators, circulation frames for generators, end walls and boxes for generators, rectifying demisters for generators, gas liquid separators; rectifying demisters.. Class 37: Installation and maintenance of hydrogen fuel cells for vehicles; installing, servicing and repairing of fuel cell systems and hydrogen generators; building systems for the generation of alternative energy; operation of hydrogen refueling stations and related services, namely maintenance and installation of hydrogen refueling stations; hydrogen dispensing services; hydrogen fueling services. Class 39: Hydrogen storage services; electricity supply and distribution, namely, distribution of hydrogen gas, natural gas and electricity. Class 40: Electricity generation; generation of power; commissioning and providing systems for the generation energy; custom manufacturing of industrial and commercial hydrogen systems; custom manufacturing of fuel cell systems and hydrogen generators; hydrogen generation services; manufacturing of fuel cell systems and hydrogen generators; manufacture of hydrogen fuel cells for vehicles.
Trade Mark:		(‘2327538 Mark’)
Application Number:	2327545
Filing Date[3]:	12 January 2023
Goods and Services:	Class 7: Electric power generators; integrated fuel cell hybrid power generators; fuel cell power generators with integrated hydrogen generator; fuel cell power generator with integrated hydrogen storage capacities for use in fuel management, thermal management, humidification, power conditioning, overall system monitoring and control and manufacturing; hydrogen fuel dispensers for hydrogen fueling stations; equipment and installations for the generation of electric power; heat exchangers as part of integrated fuel cell power generating systems and subsystems; electrolytic apparatus for generating hydrogen and oxygen; hydrogen refuelers, namely hydrogen refueling stations. Class 11: Heat exchangers, other than parts of machines; hydrogen generator systems for industrial purposes; hydrogen generators for industrial purposes; Industrial hydrogen generator parts, namely compressors for generators; Industrial installations for generating hydrogen and oxygen from water and renewable electricity using steam reforming; hydrogen purifiers; reactors for use in the chemical industry for generating hydrogen as a fuel; hydrogen generator parts, namely separators and membranes for generators, circulation frames for generators, end walls and boxes for generators, rectifying demisters for generators, gas liquid separators; rectifying demisters.. Class 37: Installation and maintenance of hydrogen fuel cells for vehicles; installing, servicing and repairing of fuel cell systems and hydrogen generators; building systems for the generation of alternative energy; operation of hydrogen refueling stations and related services, namely maintenance and installation of hydrogen refueling stations; hydrogen dispensing services; hydrogen fueling services. Class 39: Hydrogen storage services; electricity supply and distribution, namely, distribution of hydrogen gas, natural gas and electricity. Class 40: Electricity generation; generation of power; commissioning and providing systems for the generation energy; custom manufacturing of industrial and commercial hydrogen systems; custom manufacturing of fuel cell systems and hydrogen generators; hydrogen generation services; manufacturing of fuel cell systems and hydrogen generators; manufacture of hydrogen fuel cells for vehicles.
Trade Mark:	(‘2327545 Mark’)

[1] This Trade Mark has a Convention Priority date of 17 March 2022 arising from United States Trade Mark Application number 97/317194. Nothing turns on the difference between the Filing Date and the Convention Priority Date.

[2] This Trade Mark has a Convention Priority date of 9 January 2023 arising from United States Trade Mark Application number 97746992. Nothing turns on the difference between the Filing Date and the Convention Priority Date.

[3] This Trade Mark has a Convention Priority date of 9 January 2023 arising from United States Trade Mark Application number 97747097. Nothing turns on the difference between the Filing Date and the Convention Priority Date.

1. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.  In addition when I refer to the ‘Applicant’s Goods and Services’ I am referring to the specific goods and services for which the Applicant seeks to register each of the Trade Marks, although practically nothing turns on the relatively minor differences in the specifications.

2. Following the advertisement of the applications’ acceptance for possible registration, the Opponent filed Notices of Intention to Oppose the registration followed by Statements of Grounds and Particulars (‘SGPs’).   The SGPs raised grounds of opposition under ss 42(b), 44[4], 58 and 60.  The Applicant filed Notices of Intention to Defend in April 2024. 

   [4] As the Opponent relied on protected international trade mark applications as the basis of this ground of opposition, the technical ground of opposition is under reg 4.15A of the Regulations rather than s 44 of the Act. 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 Opponent’s Trade Marks (as defined later in the decision) should be recognised as protected international trade mark applications.

   Evidence

3. The parties filed the following evidence in this matter:

Declarant and Position	Date	Annexures or Exhibits
Evidence in support
Patrizia Aberle, Head of Group Intellectual Property at the Opponent, and Dirk Bergmann, Chief Technology Officer of the Opponent (‘Aberle-Bergmann declaration’)	16 July 2024	1 to Confidential 23
Evidence in answer
None Filed
Evidence in reply
None Filed

1. Once the time allowed for filing evidence had ended, the parties were given an opportunity to request an oral hearing or a hearing by written submissions.  On 20 November 2024 the Opponent requested a hearing by submissions and paid the appropriate fee (the Applicant also later requested and paid to file written submissions).  The matter was set down for a hearing on 18 February 2025.  In line with usual practice, a letter was sent to the parties on 12 December 2024 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 4 February 2025 (‘Opponent’s Submissions’).  The Applicant filed written submissions on 11 February 2025 (‘Applicant’s Submissions’). 

2. I am a delegate of the Registrar of Trade Marks and I am to decide the oppositions as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the   application was opposed has been established. 

   In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.

   The Opponent

3. The Opponent is a Swiss company that, along with its various predecessor entities, has been involved in manufacturing turbocharging technology and systems for approximately 100 years.  

4. The Opponent is the owner of the trade marks listed below (‘Opponent’s Trade Marks’)[5].  The goods and services for which the Opponent’s Trade Marks are registered are collectively referred to as the ‘Opponent’s Goods and Services’. 

   [5] This was the case at the relevant date.  At the date of the decision the trade marks are now in the name of Accelleron Switzerland Ltd.

Number	Trade Mark	Priority Date	Goods or Services
2292573 (IR 1677646)	ACCELLERON (‘ACCELLERON Mark’)	5 Nov 2021	9.   Class 7: Turbochargers; parts for motors, engines, propellers, propulsion systems and power generation systems; turbines; compressors; turbochargers for internal combustion engines, particularly diesel engines and gas engines for powering ships, for stationary current-generating installations and for heavy-oil internal combustion engines; parts and accessories for turbochargers, particularly turbines, compressors, bearings, lubrication and cooling devices, gas and air chambers, air filters, shock absorbers and electricity generators; none of the aforesaid goods intended for road vehicles. 10.  Class 9: Computer software for the use in connection with turbochargers, motors, engines, propellers, propulsion systems and power generation systems; Computer software for the control and regulation of turbochargers, motors, engines, propellers, propulsion systems and power generation systems, including for measuring of temperatures, pressures, velocities and vibrations within a turbocharger, motor, engine, propeller, propulsion system and power generation system; electronic control and regulation devices for turbochargers, motors, engines, propellers, propulsion systems and power generation systems, including instruments for measuring of temperatures, pressures, velocities and vibrations within a turbocharger, motor, engine, propeller, propulsion system and power generation system; sensors (measurement apparatus) for generating data for turbochargers, motors, engines, propellers, propulsion systems and power generation systems; sensors (measurement apparatus) for turbochargers, motors, engines, propellers, propulsion systems and power generation systems. 11.  Class 12: Motors and engines for land vehicles. 12.  Class 37: Installation, maintenance and repair of turbochargers, motors, engines, propellers, propulsion systems and power generation systems; Installation, maintenance and repair of plants, motors, engines, propulsion systems and power generation systems that contain turbochargers; provision of information on installation, maintenance and repair of turbochargers, motors, engines, propellers, propulsion systems and power generation systems. 13.  Class 38: Provision of access to databases and computer and communication networks for use in connection with the installation, maintenance and repair of turbochargers, of plants, motors and engines that contain turbochargers, of propellers, of propulsion systems and of power generation systems. 14.  Class 42: Quality control and authentication services; Design, development, installation, maintenance and repair of computer software for use in connection with turbochargers, motors, engines, propellers, propulsion systems and power generation systems; design, development, installation, maintenance and repair of computer software for the control and regulation of turbochargers, motors, engines, propellers, propulsion systems and power generation systems, including for measuring of temperatures, pressures, velocities and vibrations within a turbocharger, motor, engine, propeller, propulsion system or power generation system; design, development, installation, maintenance and repair of electronic control and regulation devices for turbochargers, motors, engines, propellers, propulsion systems and power generation systems, including instruments for measuring of temperatures, pressures, velocities and vibrations within a turbocharger, motor, engine, propeller, propulsion system and power generation system; design, development, installation, maintenance and repair of sensors (measurement apparatus) for generating data for turbochargers, motors, engines, propellers, propulsion systems and power generation systems; design, development, installation, maintenance and repair of sensors (measurement apparatus) for turbochargers, motors, engines, propellers, propulsion systems and power generation systems; engineering services in the field of computer software and hardware for use in connection with turbochargers, motors, engines, propellers, propulsion systems and power generation systems; industrial analysis and industrial research services in the area of turbochargers, motors, engines, propellers, propulsion systems and power generation systems; design, development, installation, maintenance and repair of computer software; software as a service (SaaS); design and development of computer hardware and software for industrial applications; design and development of software for evaluation and calculation of data.
2315565 (IR 1696180)	1 Feb 2022	15.  Class 7: Turbochargers; parts for motors, engines, propellers, propulsion systems and power generation systems; turbines; compressors; turbochargers for internal combustion engines, particularly diesel engines and gas engines for powering ships, for stationary current-generating installations and for heavy-oil internal combustion engines; parts and accessories for turbochargers, particularly turbines, compressors, bearings, lubrication and cooling devices, gas and air chambers, air filters, shock absorbers and electricity generators; all the aforesaid products not intended for use with road vehicles. 16.  Class 9: Computer software for the use in connection with turbochargers, motors, engines, propellers, propulsion systems and power generation systems; Computer software for the control and regulation of turbochargers, motors, engines, propellers, propulsion systems and power generation systems, including for measuring of temperatures, pressures, velocities and vibrations within a turbocharger, motor, engine, propeller, propulsion system and power generation system; electronic control and regulation devices for turbochargers, motors, engines, propellers, propulsion systems and power generation systems, including instruments for measuring of temperatures, pressures, velocities and vibrations within a turbocharger, motor, engine, propeller, propulsion system and power generation system; sensors (measurement apparatus) for collecting data for turbochargers, motors, engines, propellers, propulsion systems and power generation systems; sensors (measurement apparatus) for turbochargers, motors, engines, propellers, propulsion systems and power generation systems. 17.  Class 12: Motors and engines for land vehicles. 18.  Class 37: Installation, maintenance and repair of turbochargers, motors, engines, propellers, propulsion systems and power generation systems; Installation, maintenance and repair of plants, motors, engines, propulsion systems and power generation systems that contain turbochargers; provision of information on installation, maintenance and repair of turbochargers, motors, engines, propellers, propulsion systems and power generation systems; installation, maintenance and repair of electronic control and regulation devices for turbochargers, motors, engines, propellers, propulsion systems and power generation systems, including instruments for measuring of temperatures, pressures, velocities and vibrations within a turbocharger, motor, engine, propeller, propulsion system and power generation system; installation, maintenance and repair of sensors (measurement apparatus) for collecting data for turbochargers, motors, engines, propellers, propulsion systems and power generation systems; installation, maintenance and repair of sensors (measurement apparatus) for turbochargers, motors, engines, propellers, propulsion systems and power generation systems. 19.  Class 38: Provision of access to databases and computer and communication networks for use in connection with the installation, maintenance and repair of turbochargers, of plants, motors and engines that contain turbochargers, of propellers, of propulsion systems and of power generation systems. 20.  Class 42: Quality control and authentication services; Design, development, installation, maintenance and repair of computer software for the use in connection with turbochargers, motors, engines, propellers, propulsion systems and power generation systems; design, development, installation, maintenance and repair of computer software for the control and regulation of turbochargers, motors, engines, propellers, propulsion systems and power generation systems, including for measuring of temperatures, pressures, velocities and vibrations within a turbocharger, motor, engine, propeller, propulsion system or power generation system; design and development of electronic control and regulation devices for turbochargers, motors, engines, propellers, propulsion systems and power generation systems, including instruments for measuring of temperatures, pressures, velocities and vibrations within a turbocharger, motor, engine, propeller, propulsion system and power generation system; design and development of sensors (measurement apparatus) for collecting data for turbochargers, motors, engines, propellers, propulsion systems and power generation systems; design and development of sensors (measurement apparatus) for turbochargers, motors, engines, propellers, propulsion systems and power generation systems; engineering services in the field of computer software and hardware for use in connection with turbochargers, motors, engines, propellers, propulsion systems and power generation systems; industrial analysis and industrial research services in the area of turbochargers, motors, engines, propellers, propulsion systems and power generation systems; design, development, installation, maintenance and repair of computer software; Software as a Service (SaaS); design and development of computer hardware and software for industrial applications; design and development of software for the evaluation and calculation of data.

1. The relevant claims/statements in the Aberle-Bergmann declaration can be summarised as follows:

   ·     The Opponent’s corporate history stretches back to 1924 and prior to 2022 it was part of and known as the ABB Group.  After its spin-off from the ABB Group, the Opponent continues to supply turbocharging technologies and various solutions for engines.  In 2022, following the spin-off, the Opponent had revenue of USD 781 million, an installed base of approximately 180,000 turbochargers and a network of more than 100 service stations world wide.

   ·     On 15 February 2022 the Opponent announced that it would commence using the ACCELLERON Mark as its primary trademark and applied to register it and related marks.  This mark was coined by the Opponent’s brand agency in 2021.  Since the Opponent’s spin-off the Opponent has used the Opponent’s Trade Marks in relation to the design, manufacture, installation, repair and servicing of turbochargers as well as related services such as supported software products, engineering and research services and provision of databases and computer networks to support the Opponent’s turbocharger business.

   ·     The Opponent commenced use of the ACCELLERON Mark in Australia on 11 April 2022 and since then has invested heavily in promotion of the Opponent’s Goods and Service under the ACCELLERON Mark and the other Opponent’s Trade Marks, including through sponsorship, attendance at conferences, social media and its website.  The Opponent has received considerable media attention and has a strong reputation for its goods and services.  It considers that the use of the Trade Marks is likely to lead to a real risk of confusion.

2. The annexures to the Aberle-Bergmann declaration provide evidence of the spin-off of the Opponent, the launch of its new brand, as well as various examples of use of the Opponent’s Trade Marks in in various formats and with various taglines.  I note that the evidence of sales and marketing spend provided by the Opponent is global and there is little evidence of any direct marketing spend, or marketing generally, targeted at the Australian market.

   The Applicant

3. The Applicant has not filed any evidence and as such I have no information about it other than what is set out on the Register. 

   Grounds of Opposition, Onus and Standard of Proof

4. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 58 and 60.  To successfully oppose the application the Opponent needs to establish one of the nominated grounds.  

5. The onus of proof in an opposition rests upon the Opponent.[6]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[7]  The dates at which the rights of the parties are to be determined for the purposes of ss 42(b) and 58 are the filing dates of each of the applications in Australia.[8] The Applicant has also claimed Convention Priority dates for each of the Trade Marks pursuant to the Madrid Protocol, these are dates at which the rights of the parties are to be determined for the purposes of ss 44 and 60. In this decision I use the term relevant date, to refer to the date at which the rights are determined for each mark, which may differ depending on the mark referred to and the ground of opposition being discussed.

   [6] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [7] Following Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [8] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [4] (Kitto J) (‘Southern Cross’), see also s 29(1) Trade Marks Act 1995 (Cth).

   Discussion

   Section 44

6. The relevant provisions of ss 44 are reproduced below:

   Section 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)it 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).

   (2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if:

   (a)it is substantially identical with, or deceptively similar to:

   (i)     a trade mark registered by another person in respect of similar services or closely related goods; or

   (ii)    a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

   Note 1: For deceptively similar see section 10.

   Note 2: For similar services see subsection 14(2).

   Note 3: For priority date see section 12.

   Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A. …

   (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. 

   Note:  For limitations see section 6.

   (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.

   Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

   Note 2: For predecessor in title see section 6.

   Note 3: For priority date see section 12.

   Section 10 - Definition of deceptively similar

   For the purposes of this Act, 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.

7. To successfully oppose the application pursuant to s 44 the Opponent must establish the requirements of s 44(1) and/or (2), i.e. that at least one of the trade marks upon which it relies, being a trade mark registered or sought to be registered[9] by a person other than the Applicant:

   ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

   ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

   ·     is in respect of similar goods/services, and/or services/goods which are closely related to, the Applicant’s Goods and Services (‘the third requirement’).

   [9] or an international registration designating Australia protected or sought to be protected under Reg 4.15A

8. In the event that each of these requirements is satisfied by the Opponent it may still be possible for me to allow the application to proceed to registration if I am satisfied, pursuant to ss 44(3) and 44(4), that there has been honest concurrent use of the Trade Mark, there are other circumstances which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark. In the present case as the Applicant has provided no evidence of use prior to the relevant date or other circumstances that would make registration of the Trade Mark proper it is not necessary to consider these provisions.

9. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Marks.  Each of the Opponent’s Trade Marks has a priority date that is earlier than the priority date of the Trade Marks.  In addition I am satisfied that a significant portion of the Opponent’s Goods and Services are similar to the Applicant’s Goods and Services, noting that all the marks are registered or sought to be registered for various motors, engines, power generation systems and engineering and related services connected to the above goods.  I am satisfied that the first and third requirements are satisfied; it remains necessary to consider the second requirement.

10. While the Opponent particularised this ground by reference to the Opponent’s Trade Marks it is ultimately only necessary to consider whether the ACCELLERON Mark is substantially identical or deceptively similar to the Trade Marks. The remaining mark particularised by the Opponent contains additional elements that further differentiates it from the Trade Marks.  If I were to find that one or more of the Trade Marks is not substantially identical or deceptively similar to the ACCELLERON Mark I would necessarily reach the same conclusion for the remaining Opponent’s Trade Mark

    Substantially identical and/or deceptively similar

11. I will now consider whether any of the Trade Marks are substantially identical to the ACCELLERON Mark.  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’) Windeyer J said:

    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.[10]

    [10] [1963] HCA 66, [12].

12. The Trade Marks and the ACCELLERON Mark are set out below:

    ACCELERA              

    ACCELLERON

13. On a side-by-side comparison there are clear differences which mean that a total impression of dissimilarity emerges from a comparison of each of the Trade Marks and the ACCELLERON Mark.   The fact that the marks share the letters ‘ACCEL’ does not, despite the submissions of the Opponent, render two different words, with different suffixes (and in some cases different devices) substantially identical.  I move then to consider whether the Trade Marks and the ACCELLERON Mark are deceptively similar.

14. The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J 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 [trade mark].[11]

    [11] Ibid [13].

15. The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[12] conveniently stated the relevant principles, which were summarised in The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd[13] as follows:

    [12] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

    [13] [2023] FCA 482, [55] (Jackman J).

    (a)the resemblance between the two marks must be the cause of the likely deception or confusion;[14]

    [14] [2023] HCA 8 [26] citing 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;[15]

    [15] [2023] HCA 8 [26] citing Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd  [1952] HCA 15 (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).

    (c)the marks should not be compared side by side;[16]

    (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;[17]

    (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’;[18]

    (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;[19]

    (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;[20]

    (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; [21]

    (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;[22]

    (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”;[23]

    (k)evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[24] and

    (l)any intention to deceive or cause confusion may be a relevant consideration but is not required.[25]

    [16] [2023] HCA 8 [27] citing Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).

    [17] Ibid.

    [18] [2023] HCA 8 [28], [29] citing Australian Woollen Mills, 658 (Dixon and McTiernan JJ) .

    [19] [2023] HCA 8 [28], [29] citing Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69]-[70], [77]-[80] (Yates, Abraham and Rofe JJ).

    [20] [2023] HCA 8 [29] citing Shell, 415.

    [21] [2023] HCA 8 [30] citing 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).

    [22] [2023] HCA 8 [31] citing Campomar Sociedad Limitada v Nike International Limited (2000) 202 CLR 45, 79 [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).

    [23] [2023] HCA 8 [32] citing Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50)] (French J) restating principles from Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-595 (Kitto J).

    [24] [2023] HCA 8 [30], [71] citing Australian Woollen Mills Ltd, 658.

    [25] 2023] HCA 8 [30], Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) (‘Hashtag Burgers’) citing Australian Woollen Mills, 657.

16. Furthermore, the Court, in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[26], noted the following[27]:

    In considering the likelihood of confusion or deception, "the court is not looking to the totality of the conduct of the defendant in the same way as in a passing off suit"[28]. In addition to the degree of similarity between the marks, the assessment takes account of the effect of that similarity considered in relation to the alleged infringer's actual use of the mark[29], as well as the circumstances of the goods, the character of the likely customers, and the market covered by the monopoly attached to the registered trade mark[30]. Consideration of the context of those surrounding circumstances does not "open the door" for examination of the actual use of the registered mark, or, as will be explained, any consideration of the reputation associated with the mark.[31]

    [26] [2023] HCA 8, [33] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

    [27] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [33] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

    [28] New South Wales Dairy Corporation v Murray-Goulburn Co‑operative Co Ltd [1989] FCA 124; (1989) 86 ALR 549, 589 (emphasis added) (Gummow J), approved in CA Henschke & Co v Rosemount Estates Pty Ltd  (2000) 52 IPR 42, 62 [44] (Ryan, Branson and Lehane JJ), Hashtag Burgers,  [64], Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel [2021] FCAFC 8, [27], PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (2021) 285 FCR 598, [97] (see also 626 [111]) and Swancom (2022) 168 IPR 42, [73].

    [29] Act, s 68.

    [30] New South Wales Dairy [1989] FCA 124; (1989) 86 ALR 549, 589.

    [31] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (2022) 168 IPR 42, 59 [2022] FCAFC 157 [89]. See also CA Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, 62 [44] (Ryan, Branson and Lehane JJ).

17. As stated above, for the purposes of considering deceptive similarity, the reputation of the Opponent’s Trade Mark is not a relevant factor.[32]  Distinctiveness is a factor that can legitimately be taken into account when considering deceptive similarity.[33]

    [32] See Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [93] (Yates, Abraham and Rofe JJ) and, albeit in the s 120(1) context Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [49] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

    [33] Stone & Wood Group Pty Ltd v Intellectual Property Development Corporation Pty Ltd (2018) 129 IPR 238, [66] (Allsop CJ, Nicholas, Katzmann JJ).

18. Justice French expressed the view in Registrar of Trade Marks v Woolworths Ltd[34] (‘Woolworths’) that the determination of whether, and to what degree, an applicant’s goods or services are similar to, or closely related to, the relevant goods or services of the earlier trade mark owner is “logically antecedent to” assessing the similarity of the parties’ trade marks. In particular, French J explicitly approved the observation in Wilcox J’s first instance decision in the Woolworths matter that, ‘[t] he closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive’.[35]

    [34] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [39] (French J).

    [35] Ibid. See also Enagic Co Ltd v Horizons (Asia) Pty Ltd (No 3) [2021] FCA 1512, [33] (Charlesworth J).

1. In the present case, the market for the common goods and services is likely to be a highly sophisticated one, with specialist procurement experts who will take great care prior to spending the thousands or millions of dollars necessary to purchase the complex industrial products involved. In such cases a greater degree of similarity is usually required for a finding that marks are deceptively similar.  I note that the marks share a very close prefix, being the letters ‘ACCEL’ (and also ACCELER and ACCELLER).  In addition they have phonetic similarities, differing only by the ending syllable.  However they are  otherwise visually and conceptually different being invented words.  Finally, as noted in the Applicant’s Submissions, the shared prefix is recognisable as a reference to the word ‘Accelerate’ and hence is commonly used across the industries in which the Applicant and Opponent operate, the Applicant having provided considerable evidence of use of ‘ACCEL-formative’ marks in the engineering space such as ACCELERATOR, ACCEL, ACCEL DEEP and ACCEL (fancy) in class 7.  I am not satisfied that the shared prefix is likely to result in a real, tangible danger of deception or confusion given the nature of the goods and services and sophisticated entities purchasing the common goods or services.

2. I find that the Opponent has failed to establish the ground of opposition under s 44.

   Section 58

3. Section 58 is reproduced below:

   Section 58. Applicant not owner of trade mark

   The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

   Note:For applicant see section 6.

4. The owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application in Australia (while having an intention to use the applied-for mark), whichever is the earlier.  It is now well established at law that in order to succeed under this ground of opposition the Opponent must establish three factors.  These are:

   · that the Trade Marks are identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first factor’);[36]

   · that the Applicant’s Goods and/or Services are the ‘same kind of thing’ as the goods and/or services for which the trade mark(s) relied upon by the Opponent was used (‘the second factor’);[37] and

   ·     that a person other than the Applicant has the earlier claim to ownership of the Trade Marks based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Marks by the Applicant (‘the third factor’).[38]

   [36] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375 (Gummow J).

   [37] Re Hicks’ Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).

   [38] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).

5. The ground based on s 58 was particularised in the SGPs as follows:

   For 2258617:

   The Opponent has been using the ACCELLERON Marks in Australia in relation to the goods and services covered by the Opponent’s Registrations since at least February 2022. To the best of the Opponent’s knowledge, this is earlier than the Applicant’s first use of the Opposed Mark and/or the filing date of the opposed application, being 24 March 2022. The Opposed Mark is substantially identical to the ACCELLERON Marks and the opposed application covers goods and/or services that are the same kind of thing as the Opponent’s goods and/or services that are the subject of the Opponent’s Registrations

   For 2327545:

   The Opponent has been using the ACCELLERON mark in relation to its goods and services covered by Australian Trade Mark Registration No. 2292573 in Australia since February 2022 and the priority date of the Opponent’s registration is 6 April 2022, which is before the filing date of Australian Trade Mark Application No. 2327545, being 12 January 2023. The Applicant’s mark is substantially identical to the ACCELLERON trade mark.

   For 2327538:

   The Opponent has been using the ACCELLERON mark in relation to its goods and services covered by Australian Trade Mark Registration No. 2292573 in Australia since February 2022 and the priority date of the Opponent’s registration is 6 April 2022, which is before the filing date of Australian Trade Mark Application No. 2327538, being 12 January 2023. The Applicant’s mark is substantially identical to the ACCELLERON trade mark.

6. In paragraph 33 above I concluded that none of the Trade Marks were substantially identical to the ACCELLERON mark (and would reach the same conclusion with respect to the other Opponent’s Trade Mark).  As the Opponent has failed to establish the first factor (and must establish all three factors to succeed under the s 58 ground of opposition), I find that the Opponent has failed to establish the ground of opposition pursuant to s 58.

   Section 60

7. Section 60 is reproduced below:

   Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

8. To establish a ground of opposition under s 60, an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.

9. Some of the relevant principles of s 60 are summarised in the recent case of Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods as follows:

   The first of these elements calls for a factual inquiry into the extent and nature of the reputation that had been acquired by the existing trade mark – here, the Aachi mark – in Australia. The second element calls for an assessment of the likelihood of deception or confusion arising from use of the new trade mark as a consequence of that reputation.

   The existing trade mark need not even be registered for s 60 to be engaged (Fry Consulting Pty Ltd v Sports Warehouse Inc [2012] FCA 81; 201 FCR 565 (Fry Consulting) at [121] (Dodds-Streeton J); Qantas Airways Ltd v Edwards [2016] FCA 729 (Qantas Airways) at [144] (Yates J)). The classes of goods and/or services in respect of which the existing trade mark has been used, and those in which the new trade mark is intended to be used, may be very relevant to the likelihood of confusion (see Qantas Airways at [143] and GAIN Capital UK Limited v Citigroup Inc (No 4) [2017] FCA 519 at [148] (Markovic J)), but the fact that the classes are not the same cannot be determinative. The reputation of the existing trade mark need not relate specifically to the goods or services that are the subject of the proposed application (Qantas Airways at [143]; Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923 (Rodney Jane Racing) at [87] (O’Bryan J)). The question is simply whether the reputation of the existing trade mark in Australia is such that the use of the new trade mark is “likely” to be deceptive or cause confusion.[39]

   [39] [2023] FCA 487, [20]-[21] (Kennett J)

10. In McCormick & Co Inc v McCormick,[40] Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[41]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

    [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[42]

    [40] [2000] FCA 1335.

    [41] Ibid, [81].

    [42] (1992) 33 FCR 302, 343.

11. On the subject of reputation, Kenny J also referred to Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG, where the Registrar’s delegate observed:

    [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

    As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

    It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[43]

    [43] (1999) 47 IPR 423, 436 (Hearing Officer Thompson).

12. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[44] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955 (Cth). That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’. Nevertheless, the words of Heerey J provide some guidance:

    What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[45]

    [44] [2000] FCA 1587.

    [45] Ibid [91] (emphasis in original). Justice Heerey’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

13. The Opponent has particularised the ground of opposition in the SGPs in the manner set out below: 

    For 2258617:

    The trade mark/s had acquired reputation before the priority date of the trade mark being opposed.

    The Opponent has acquired a reputation in its ACCELLERON word mark and its logo (collectively, ACCELLERON Marks) the subject of Australian Trade Mark Registration Nos. 2292573 and 2315565 (Opponent’s Registrations), including in respect of the goods and services covered by the Opponent’s Registrations. The ACCELLERON Marks have been continuously used by the Opponent globally and in Australia since February 2022. Due to the Opponent’s reputation in its ACCELLERON Marks, use of the Applicant’s ACCELERA trade mark the subject of Australian Trade Mark Application No. 2258617 (Opposed Mark) is likely to deceive or cause confusion in the marketplace.

    For 2327545:

    The trade mark/s had acquired reputation before the priority date of the trade mark being opposed.

    The Opponent has acquired a reputation in its ACCELLERON mark, including in respect of the goods and services covered by its Australian Trade Mark Registration No. 2292573. The Opponent’s ACCELLERON mark has been continuously used globally and in Australia since February 2022. Use of the Applicant’s ACCELERA trade mark is likely to deceive or cause confusion.

    For 2327538:

    The trade mark/s had acquired reputation before the priority date of the trade mark being opposed.

    The Opponent has acquired a reputation in its ACCELLERON mark, including in respect of the goods and services covered by its Australian Trade Mark Registration No. 2292573. The Opponent’s ACCELLERON mark has been continuously used globally and in Australia since February 2022. Use of the Applicant’s ACCELERA trade mark is likely to deceive or cause confusion.

14. At the relevant date for Trade Mark no. 2258617, the Opponent had not used the Opponent’s Trade Marks in Australia, and had limited use globally. The requirements of s 60(a) are not satisfied in respect of Trade Mark no. 2258617.

15. With respect to the remaining Trade Marks, the Opponent had been using the mark globally for 11 months and in Australia for 8 months. While the Opponent is a significant global entity with a significant historical reputation, 8 months of use (absent any evidence of sales figures or marketing expenditure in Australia, or media articles or evidence of the general esteem that the brand was held in Australia) is simply an insufficient amount of time for the Opponent to establish reputation in its ACCELLERON mark sufficient for the requirements under s 60(a). I note that the entirety of the Opponent’s evidence of Australia-specific use prior to the relevant dates of the remaining Trade Marks is a single Turbocharger service report; it does not even provide evidence of an Australia-specific quote or purchase order entered into under the ACCELLERON mark. It is not necessary to consider the likelihood of confusion though I note that even if I had found a reputation, for the reasons set out in paragraph 39 above, I would consider it highly unlikely for confusion to arise between the marks.

16. I find that the Opponent has failed to establish the ground of opposition pursuant to s 60.

    Section 42

17. Section 42 is reproduced below:

    42 - Trade mark scandalous or its use contrary to law

    An application for the registration of a trade mark must be rejected if:
    (a) the trade mark contains or consists of scandalous matter; or
    (b) its use would be contrary to law.

18. The Opponent pressed this ground of opposition solely on the basis that the use of the Trade Mark would be contrary to law (s 42(b)).  The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[46]  The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[47]

    [46] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).

    [47] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353 (Wilcox J).

19. The Opponent has particularised the ground of opposition in each SGP as follows: 

    Competition and Consumer Act 2010; Tort of passing off

20. The Opponent has failed to particularise a ground of the Competition and Consumer Act but the Opponent’s submissions refer to ss 18 and 29 of the Australian Consumer Law (‘ACL’). As previously stated the Opponent has failed to establish a ground of opposition under s 60. The test for misleading or deceptive conduct under s 18 of the ACL is a more stringent one than that for deception or confusion under s 60,[48] and consequently I find that the Opponent has also failed to establish that the Applicant’s use of the Trade Mark would be contrary to s 18 of the ACL.

    [48] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36] (Hearing Officer Williams); Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).

21. Paraphrasing the statement of the Registrar’s delegate in A G Professional Hair Care Products Ltd v Geagroup Invest SRL[49], where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Justice Beaumont considered—in connection with the superseded Trade Practices Act1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[50] Sections 52 and 53 of the TPA were, respectively, the equivalent provisions to ss 18 and 29 of the ACL. Justice Hill in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:

    The scope for the operation of s. 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s. 52 or s. 53 will invariably mean that proceedings for passing off would likewise fail.[51]

    [49] [2014] ATMO 65, [50] (Hearing Officer Wilson).

    [50] [2003] FCA 104, [107] (Beaumont J).

    [51] [1989] FCA 506, [40] (citations omitted).

22. For these reasons I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law.  Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).

    Decision and Costs

23. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application numbers 2258617, 2327545 and 2327538 may proceed to registration not less than one month from the date of this decision.  If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.

24. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs in respect of trade mark number 2258617 against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations. In respect of trade mark number 2327545 I award costs against the Opponent to be taxed in the same manner as indicated in Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd[52].   In respect of trade mark number 2327538 I award costs against the Opponent to be taxed in the same manner as indicated in Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd[53]. 

    [52] [2001] ATMO 78 (Hearing Officer Williams).

    [53] [2001] ATMO 78 (Hearing Officer Williams).

    Nicholas Smith

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    3 June 2025