Undefeated, Inc. v Behaviour Interactive Inc - [2025] ATMO 139

TRADE MARKS ACT 1995

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

Re:Oppositions by Undefeated, Inc. to registration of trade mark application numbers 2207695 (classes 9, 14, 16, 18, 21, 25, 28 and 41) – logo device and 2207696 (classes 9, 14, 16, 18, 21, 25, 28 and 41) – logo device- both in the name of Behaviour Interactive Inc.

Delegate:

Benjamin Goldsworthy

Representation:

Opponent: Pipers Intellectual Property

Applicant: Jonathan Feder from K&L Gates

Decision:

2025 ATMO 139

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under ss 42(b), 44, 58, 58A and 60 and reg 4.15A of the Trade Marks Regulations 1995 (Cth) – earlier registered deceptively similar trade marks in respect of some similar goods and closely related services – honest concurrent use not established – s 44 and reg 4.15A established – no other grounds of opposition established for remaining goods and services – goods and services amended – trade marks may proceed to registration.

Background

On 2 September 2021 (‘Relevant Date’), Behaviour Interactive Inc. (‘Applicant’) filed applications under the Trade Marks Act 1995 (Cth)[1] to register two trade marks (‘Trade Marks’), details of which I extract below:
[1] Unless specified otherwise, a reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth) (‘Regulations’).
Trade mark application number: 2207696
Priority date: 2 September 2021
Trade mark:
(‘2207696’)
Specification: Classes 9, 14, 16, 18, 21, 25, 28 and 41. See Schedule 1 (‘Applicant’s Goods and/or Services’).

---

Trade mark application number: 2207695
Priority date: 2 September 2021
Trade mark:
(‘2207695’)

Specification: Applicant’s Goods and/or Services.[2]
[2] I note that these are identical to those of the Applicant’s Goods and/or Services.

The Trade Marks were examined and on 3 February 2022 their acceptance was advertised.
On 1 April 2022, Undefeated, Inc. (‘Opponent’) filed its Notices of Intention to Oppose the registration of the Trade Marks. On 29 April 2022, the Opponent filed its Statements of Grounds and Particulars (‘SGP’).
On 23 July 2022, the parties requested a cooling off period. This was allowed and the cooling-off period was set to expire on 23 December 2022 for both proceedings.
On 1 August 2022, the Applicant filed a letter submitting that the SGP was inadequate in respect of ss 42(b) 58, 58A and 60 for both proceedings.
On 16 December 2022, the Applicant requested that the cooling-off period be discontinued in respect of both proceedings, which a delegate of the Registrar or Trade Marks (‘Registrar’) confirmed.
On 16 January 2023, the Applicant filed its Notices of Intention to Defend.
On 18 April 2023, the Opponent filed the same Evidence in Support (‘EIS’) in respect of both opposition proceedings, consisting of two declarations of Edward Cruz, co-founder and President of the Opponent, one dated 13 April…

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 139
Decision Date: 17 July 2025

CaseChat Overview and Summary

The Registrar of Trade Marks was required to decide whether to register trade marks applied for by Undefeated, Inc. (the Applicant) in opposition to Behaviour Interactive Inc. The dispute concerned the Applicant's proposed specifications of goods and services for its trade mark applications, which were opposed by Behaviour Interactive Inc. on grounds including those under section 44 of the *Trade Marks Act 1995* (Cth) and regulation 4.15A of the *Trade Marks Regulations 1995* (Cth).

The central legal issue before the Registrar was whether the grounds of opposition established by Behaviour Interactive Inc. necessitated a refusal of the trade mark applications, or if the applications could proceed to registration subject to amendments to the specified goods and services. The Registrar had to determine the extent to which the grounds of opposition were established and, consequently, whether to refuse registration or register the trade marks with or without conditions or limitations, as provided by section 55 of the *Trade Marks Act 1995* (Cth).

The Registrar found that grounds of opposition under section 44 and regulation 4.15A were established in respect of at least some of the Applicant's proposed goods and services. Following communication with the Applicant, the Registrar offered the option to amend the specifications to remove the offending elements. The Applicant's representative subsequently agreed to specific amendments, deleting certain words and adding others to the specifications. Consequently, the Registrar decided that the trade marks could proceed to registration subject to these agreed amendments, with registration to occur no earlier than one month from the date of the decision, unless an appeal was filed.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

Section 55 relevantly provides:55 Decision (1) Unless subsection (3) applies to the proceedings, 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.Note: For limitations see section 6. I am satisfied that there are grounds of opposition established under s 44 and reg 4.15A for the Trade Marks in respect of at least some of the Applicant’s Goods and Services. I wrote to the Applicant and confirmed that I would refuse the applications for registration of the Trade Marks unless the Applicant agreed to amend the Applicant’s Goods and Services for each of the Trade Marks to remove the relevant specification. The Applicant’s representative ultimately requested the following amendments to the specification (strikethrough text indicating deletion of words and bold text indicating the addition of words): Accordingly, the Trade Marks may proceed to registration subject to these amendments, not earlier 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 of the Trade Marks shall not occur until the appeal has been decided or discontinued and the disposition of the application should otherwise be in accordance with the Court’s order or direction.

Ratio Decidendi

Legal Principle Established

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