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 2023 with Exhibits EC-1 to EC39 (‘Cruz-1’) and another confidential declaration, dated 13 April 2023 (‘Cruz-2’).
On 18 July 2023, the parties made an application for suspension of the oppositions for the purpose of negotiations under reg 5.19. On 23 July 2023, a delegate of the Registrar directed that the proceedings be suspended for a period of six months until 18 January 2024. On 18 January 2024, a further request was made which was refused by a delegate of the Registrar. The delegate confirmed in writing that the revised date for the filing of Evidence in Answer (‘EIA’) was 9 May 2024.
On 8 May 2024, the Applicant filed the same Evidence in Answer (‘EIA’) in respect of both opposition proceedings consisting of a declaration of Julie Carpentier, Senior Director of Contracts and Business Affairs at the Applicant, dated 7 May 2024, with Annexures JC-1 to JC-19 (‘Carpentier’).
The Opponent did not file any Evidence in Reply in respect of either of the opposition proceedings.
On 21 August 2021, the Applicant requested to be heard by written submissions. On 11 February 2025, the Applicant filed its written submissions, prepared by Jonathan Feder from K&L Gates. The Opponent did not request to be heard.
I am to decide this matter as a delegate of the Registrar with reference to the SGPs, the evidence and written submissions.

Evidence

EIS

Cruz-1

Cruz-1 states that a store was established by Edward Cruz and James Bond in 2001 for clothing, footwear and headgear.
Cruz-1 notes use of the following two Australian registered trade marks (‘Opponent’s Trade Marks’):
Owner: Undefeated, Inc.
Priority date: 6 October 2006
Trade mark number: 1139426
(‘1139426’)
Specification: Class 25: Clothing, footwear and headgear.
---
Owner: Undefeated International, LLC
Priority date: 11 October 2012
International registration number: 1157107
Trade mark number: 1554905
(‘1554905’)
Specification: Class 14: Jewelry; sports watches; watches; key fobs of common metal; metal key chains; metal key rings
Class 41: Entertainment services, namely, music concerts; providing web sites featuring information, images, videos and text in the fields of music; entertainment services, namely, providing music and music videos via the internet; providing information in the field of music; providing music news via the internet; providing information in the field of music from a website; providing information about art and music from a website; providing online information in the field of art; providing online information in the music; art exhibitions
I refer to the Opponent’s goods in classes 14 and 25 as the Opponent’s Goods and the Opponent’s services in class 41 as the Opponent’s Services throughout these written reasons.
Without definition of the words ‘the UNDEFEATED trade marks’, Cruz-1 states:
that the Opponent has sold a wide variety of products bearing the UNDEFEATED trademarks. such as: metal products such as metal keychains and key rings; flashlights; sunglasses; cellphone cases; bags for computers; DVDs; iPad cases; mousepads; whistles; safety equipment namely carabiners; watches; stickers; decals; bags and luggage; bottles; bottle openers; clothing, footwear, headgear; toys and sporting goods, such as basketballs, footballs, toy figures, foam novelty hands; cigarette lighters.[3]
[3] Cruz-1, [16].
There are examples catalogues and other promotional materials with various goods and showing the Opponent’s Trade Marks throughout Cruz-1, for example at Exhibits EC-2 and EC-5. It is not always clear whether these materials have been distributed or are targeted at Australia.
Sales in Australia of goods are declared to have occurred since 2016.[4] Exhibits EC-33 and EC-34 to Cruz-1 show that the geographical spread of sales of goods across Australia.
[4] Cruz-1, [66].
Cruz-1 also discusses the retail operations connected to the sale of the Opponent’s Goods. Physical operations of retail stores commenced in California, USA, with eight stores in the USA. Licensed stores are also in five locations in Japan. Three other stores are located in Hong Kong, Shanghai and Shengyang in China. There does not appear to be a physical retail store operated in Australia by the Opponent shown by the evidence.
In 2003, the website was launched. The products there are declared to be sold worldwide. The website also contained photographs of products, a blog, news and other information. Screen captures appear at Exhibit EC-27. Cruz-1 declares that, ‘[u]ndefeated products were sold worldwide from Undefeated’s website, starting as early as 2003.’
Much of Cruz-1 otherwise addresses the issue of the reputation of the Opponent and its trade marks.[5] Cruz-1 also canvasses other promotional activities and that the Opponent has a number of overseas registrations.[6] There are a number of celebrities shown in the EIS to have worn the clothing, footwear and headgear of the Opponent which have carried the Opponent’s Trade Marks.
[5] Cruz-1, [18]-[40] and Exhibits EC-6 to EC-24 thereto.
[6] Cruz-1, [47]-[56].
Cruz-1 also declares that:
Undefeated first commenced sales of products bearing our marks into Australia in around 2007. Undefeated had a commercial relationship with the a (sic) distributor in Australia, through Stussy, Inc. a United States Company. The distribution relationship with Stussy ended in 2017 and Undefeated has sold direct to consumers through its website since 2018.[7]
[7] Cruz-1, [58].
Cruz-1 makes broad statements about the investment of resources into promotion of products sold across all states and territories of Australia. There are also statements made broadly that the Opponent’s trade marks are applied on labels and/or packaging, as well as in marketing material. Exhibit EC-33 to Cruz-1 shows many instances of apparently the sale of goods in Australia in the years 2016 to 2019 of various goods. Sales figures for online sales between 2020 and 2023 are also provided at Exhibit EC-34. The sales data at Exhibits EC-33 and EC-34 to Cruz-1 does not expressly state which particular trade mark of those referred to in the evidence has been applied to the goods listed as sold.

Cruz-2

Cruz-2 concerns ‘further evidence of the use that [the Opponent] has made in respect of its Undefeated trade mark in Australia… [and] the annual sales revenue and annual advertising spend, are set out….’.[8] Cruz-2 declares that a ‘table sets out the annual global sales, as well as advertising and promotional expenses associated with the Undefeated brand worldwide since 2012. Whilst the brand has been in use since 2002, it was only practicable to provide the details below in relation to the last 11 years.’[9] The tables containing the data are then set out. The amounts mentioned are substantial for the global sales.
[8] Cruz-2, [5].
[9] Cruz-2, [7].
Cruz-2 also provides a ‘table [which] sets out the annual sales and advertising and promotional expenses associated with the Undefeated brand in Australia since 2016. Whilst the brand has been in use in Australia since 2007, it was only practicable to provide the sales details for the last seven years. The advertising expenditure is very low in Australia because predominantly all of our advertising is done globally via social media.’ The amounts mentioned in the table specifically for Australia in the years 2016-2019, 2020, 2021 and 2022 are low both in terms of the sales and advertising. There is again no clear demarcation between the trade marks used for any specific goods.

EIA

The Applicant is a Quebec, Canada, based video game developer founded in 1992. Carpentier declares that since its founding, the Applicant has grown to become one of the world’s largest independent gaming software developers globally, including in Australia.
The Applicant’s flagship video game is one known as Dead by Daylight (‘DBD’) and was launched in 2016. The theme of the game appears to be one concerned with horror. There are many unique Australian users of DBD.[10] Sales figures of Applicant for the year 2022 are provided at Confidential Annexure JC-4 which are substantial in Canadian and Australian dollar terms.
[10] Confidential Annexure JC-7.
The background to the adoption of the Trade Marks is set out in Carpentier.[11] Carpentier states that ‘[2207696] was adopted by the Applicant without knowledge of, nor reference to, the Opponent or its trade marks.’[12] The Trade Marks are displayed on DBD packaging cases and whenever Australian consumers purchase and download DBD. Confidential Annexure JC-13 shows evidence of this.
[11] Paragraphs [24]-[30].
[12] Carpentier, [25].
The use of various signs is also canvassed in Carpentier, including on social media accounts. Also noted is the ability to purchase DBD from at least 9 April 2016. Social media accounts show 2207696 as an avatar image for an account on YouTube, with videos with millions of views. Screen captures from a website at Annexure JC-12 show that goods could be purchased from Australia which bear the Trade Marks.
Carpentier shows that DBD was published on the following major gaming platforms on the following dates: Steam, June 2016; PlayStation, 4 June 2017; Nintendo Switch, September 2019; Android iOS, April 2020; Stadia, October 2020; XBoX Series X/S, November 2020; Playstation 5 November 2020; and Epic Games, December 2021.[13] The Steam platform is the predominate platform for DBD and Annexures JC-14 and JC-15 show that DBD has enjoyed a high ranking.
[13] Carpentier, [35].
Confidential Annexure JC-16 to Carpentier contains a summary of the revenue derived from sales of DBD in Australia to the end of 2021.
Confidential Annexure JC-17 to Carpentier contains (all figures being in US dollar terms):
(a) a summary of sales of [DOD]-branded apparel featuring the [Trade Marks] into Australia from before the Priority Date;
(b) images of some of the merchandise featuring the [Trade Marks] sold to consumers in Australia;
(c) invoices for the sale of [DOD]-branded apparel featuring the [Trade marks] into Australia from before the Priority Date; and
(d) images of the merchandise featuring the [Trade Marks] described in the above invoices with the [Trade Marks] shown in a red circle.
Annexure JC-11 to Carpentier shows screen captures of the website (‘Applicant’s Website’) displaying either of the Trade Marks applied to, for example, clothing, sporting apparel, headwear, footwear being socks, fabric patches, gaming console cases, mobile phone cases, mugs, shot glasses, bum bags and mousepads. The dates for use of the Trade Marks on the goods generally range across 2017 to 2021. The Applicant’s Website contains pricing indications in Australian dollar terms in certain years. Carpentier also declares broadly that goods have been available for purchase through the Applicant’s Website from at least 9 April 2016 and remain so. Confidential Annexure JC-12 to Carpentier contains screen captures of the Applicant’s Website which support the claim that goods have been able to be purchased in Australian dollars and shipped to Australia.
Carpentier declares that after internal inquiries by the declarant they are not aware of any instances of confusion either before or after the Relevant Date. Carpentier also declares since the Applicant had begun using the Trade Marks in February 2016 to when the Opponent filed the opposition proceedings on 1 April 2024, at no point did the Opponent object to the Applicant's use of the Trade Marks anywhere in the world, including Australia.[14]
[14] Carpentier, [42].
Carpentier also declares that the Applicant is the owner of a number of registered trade marks which contain elements of the Trade Marks, in Canada, Japan, Russia, the EU, UK and USA. These appear at Annexure JC-18.
Carpentier declares that:
None of the Opponent's trade marks have ever been cited as obstacles to registration of the the (sic) Skull Logo or the Black Logo in Australia or overseas. Similarly, in the EU and UK where earlier filed similar trade marks are not cited as obstacles to registration, the Applicant did not receive notification from either the UKIPO or EUIPO that the Opponent had been notified of the Skull Logo or the Black Logo having been accepted for registration.[15]
[15] Carpentier, [41].

Onus and grounds

The Opponent has the onus of establishing at least one of the nominated grounds of opposition.[16] The standard of proof is the ordinary civil standard of the balance of probabilities.[17]
[16] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[17] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ) (‘Telstra’).
The SGPs for both proceedings nominated grounds of opposition under ss 42(b), 44, 58, 58A and 60 as well as reg 4.15A. The date for the rights of the parties to be determined is the Relevant Date.

Consideration

Section 44/reg 4.15A

The Opponent relies on s 44 which relevantly provides:[18]
[18] I do not extract the text of reg 4.15A as it is expressed in similar terms that of s 44.
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.
…
(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.
…
(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.

To establish a ground of opposition under s 44 and/or reg 4.15A all of the following must be shown:
that another trade mark application, registration and/or protected international trade mark (‘PITM’) exists which is in the name of a person other than the Applicant;
that trade mark application, registration and/or PITM has a priority date that is earlier than the Relevant Date;
the Trade Mark is substantially identical or deceptively similar to the other registered or applied for trade mark/PITM;
the Applicant’s Goods and/or Services are similar or closely related to the goods or services of the earlier trade mark/PITM.
The Opponent relies on registered trade mark 1139426 in respect of its ground of opposition under s 44 and PITM 1157107 in respect of its ground of opposition under reg 4.15A. Both of these are in the names of persons other than that specified for each of the Trade Marks and both have a priority date which is earlier than those of the Trade Marks.

Similar and/or closely related goods and services?

The first issue I should consider is whether any of the Applicant’s Goods and Services are either similar or closely related to any of the Opponent’s Goods and Services. I note at the outset that there are no submissions from the Opponent on any of these points.
The Applicant submits:
With regard to class 9… that the only Contested Goods & Services that could conceivably be considered similar or closely related to the Opponent's Goods & Services are those that specifically refer to musical performances or music, except where that claim is limited to being for playing video games. In its statement of grounds and particulars, the Opponent contends that “at least some of [the class 9 goods] are similar or closely related to the services covered by the class 41 services claimed in Australian trade mark no. 1554905. However, the Opponent does not detail the goods which it claims are similar.
The “association” of classes 16 and 41 arises largely by virtue of the classes covering publications and publishing services, respectively. The Opponent's entertainment services in respect of music and art are in a completely different field of interest as the Applicant's printed matter and stationery. The Applicant therefore submits that its designated class 16 goods are not closely related to the Opponent's Goods & Services in class 41.
The Applicant does not accept that the goods claimed in class 18 in the Opposed Marks are similar to the class 14 and class 25 goods claimed in the Opponent's Marks. The class 18 goods claimed are limited to bags and related products such as wallets. The Opponent has not put on any evidence which suggests that the manufacturers and retailers of the class 14 goods claimed (jewellery products and watches) and class 25 goods (clothing products and footwear) also offer for sale and sell class 18 goods (bags and wallets). The Applicant also submits that the Australian Trade Mark Search product offered by IP Australia does not list class 18 as an associated class with either class 14 or class 25.
All of the Opponent's class 41 services are specifically limited to being in respect of music and art whereas the majority of the Applicant's class 41 services are mostly limited to being in respect of video games, games and amusement parks. The Applicant submits that its class 41 services that are limited to being in respect of video games, games and amusement parks are not similar to the Opponent's class 41 services.
The parties agree that the Applicant's Goods & Services in classes 21 and 28 (Unrelated Goods) are neither the same as, similar to, nor closely related to the Opponent's Goods & Services. The Opponent's statement of grounds and particulars provides no basis for the goods claimed by the Applicant in classes 21 and 28 of the Opposed Marks being similar to any of the goods and services claimed in the Opponent's Marks

I first compare the Applicant’s Goods and Opponent’s Goods in classes 14 and 25. The meaning of ‘similar goods’ is provided in s 14 of the Act as:
14 Definition of similar goods and similar services
(1) For the purposes of this Act, goods are similar to other goods:
(a) if they are the same as the other goods; or
(b) if they are of the same description as that of the other goods.
There are various factors relevant to the consideration of whether goods are similar. These include the nature, purpose, respective trade channels and how the ordinary consumers of the goods would regard the traders. In an interpretation of the language of a specification, I should look to the ordinary meaning of the words, not restricting myself to how or in what the Opponent or Applicant actually trades.[19]
[19] Registrar of Trade Marks v Woolworths [1999] FCA 1020, [88] (French J) (‘Woolworths’).
Put broadly, the Opponent’s Goods consist of clothing, footwear, headgear, jewellery and watches. Some of the similarities between the specifications can also be readily distilled. All of the Applicant’s Goods in class 25 are clearly identical to at least some of the claims of 1139426 in class 25. All of the Applicant’s Goods in class 14 are clearly identical or included in the language of at least some of the Opponent’s Goods in class 14.
The Opponent has not filed any evidence or submissions regarding the Applicant’s Goods in classes 16, 18, 21 and 28. I am not satisfied that any of these are similar to any of the Opponent’s Goods.
I should also consider whether any of the Applicant’s Goods are closely related to the Opponent’s Services. The Act does not offer a definition of the words ‘closely related’. However, in Registrar of Trade Marks v Woolworths Ltd, French J stated that the relationship between goods and services, ‘may, and perhaps in most cases will, be defined by the function of the service with respect to the goods’.[20] The nature, function and circumstances of the trade, such as trade channels, are also relevant as is the likelihood of consumer association of the services with the goods because they are generally offered by the same people.[21] I must also consider whether the services are performed directly upon or by the means of the goods and whether the goods and services are generally regarded by the ordinary consumer as originating in, or as being part of, the one industry or trade, or, a closely related industry or trade.[22]
[20] Ibid [38].
[21] Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods [2023] FCA 487, [40] (Kennett J). See also Enagic Co Ltd v Horizons (Asia) Pty Ltd (No 3) [2021] FCA 1512, [33] (Charlesworth J).
[22] Re Aussat Pty Ltd [1993] ATMO 55 (Hearing Officer Thompson).
The Opponent’s Services relate to mostly information about music, musical performances and concerts and art. By contrast, the specification of the Applicant’s Goods in classes 9 and 16 relate mostly to video games. The Opponent has gone to no effort to make a case for why any of the Applicant’s Goods in class 9 are closely related to the Opponent’s Services. Nor is there any evidence which is instructive on the point. I am not satisfied that the Applicant’s Goods related to video games are closely related to the Opponent’s Services related to provision of music events and information about music and art.
However, some of the Opponent’s Services do appear to have a nexus with some of the Applicant’s Goods in class 9. Whilst performers or providers of musical performances often will partner with a publisher, they also may self-publish and may do so under the same trade mark by which they offer their entertainment services. I am satisfied that, for example, the following of the Applicant’s Goods in class 9 are closely related to the Opponent’s Services in class 41:
pre-recorded CDs and DVDs containing audio and video clips; DVDs containing recordings of television shows and movies featuring musical performances; downloadable digital audio recordings of television shows and movies featuring musical performances; downloadable digital audio recordings of musical performances; compact discs containing music; lp records; audio tapes featuring music
I confirm that I am not otherwise satisfied that the Opponent’s Services in class 41 are closely related to any of the Applicant’s Goods in classes 16, 18, 21, 25 and 28.
I must also consider whether the Applicant’s Services are ‘similar’ to any of the Opponent’s Services. In this regard, s 14 relevantly provides a definition of ‘similar’:
14 Definition of similar goods and similar services
(1) …
(2) For the purposes of this Act, services are similar to other services:
(a) if they are the same as the other services; or
(b) if they are of the same description as that of the other services.
For the comparison of services, I should take account of the respective natures, uses and trade channels of the services.[23] I must examine the essential characteristics of each.[24] Ultimately, I should also look to the language of the respective claims and rely upon the evidence that is before me. A comparison of services should be based on what can be done should the Trade Marks be registered, and it is not limited to any particular actual use of the parties.[25] When comparing services I should compare the totality of the services rather than just individual aspects and must not overlook the respective essences.[26] Any alignment in the course of trade or business should also be considered.[27] Whether consumers would regard or expect the trade origin to be same for the services can also be relevant.[28] Particularly relevant factors can be the purpose of the services and their inherent character, the persons by which the services are offered, how they are provided and used, their method of communication and how they are perceived by the consumers.[29]
[23] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [5] (Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ) adopted in Mid Sydney Pty Ltd v Australian Tourism Co Ltd [1998] FCA 1616 (Burchett, Sackville and Lehane JJ).
[24] Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, [337] (Greenwood, Besanko and Katzmann) (‘Accor’).
[25] Woolworths (n 19) [50] (French J).
[26] Sensis Pty Ltd v Senses Direct Mail and Fulfilment Pty Ltd [2019] FCA 719, [125] (Davies J).
[27] Reckitt & Colan Ltd v Boden (1945) 70 CLR 84, 94 (Dixon J).
[28] Corporate Express Inc v Winglide Pty Ltd [1999] ATMO 78 (Hearing Officer Thompson).
[29] Accor (n 24) [339].
Many of the Applicant’s Services in class 41 are video game related and by contrast the Opponent’s Services in class 41 relate to music and art. I am not satisfied that these services are similar. However, I consider, for example, the following of the Applicant’s Services in class 41 to be similar to the Opponent’s Services because of the close similarity in subject matter of each relating to music or musical performances or including such services:
production of films and television shows, other than advertising films; production of radio, film and television entertainment programs; entertainment services, namely, continuing television programs and interactive television programs featuring musical performances; organization and presentation of live stage show performances, presentation of live show performances by costumed characters, and presentation of live theatrical performances; production and distribution of motion pictures and television programs; providing television programmes, not downloadable, via video-on-demand services; entertainment in the form of television shows; providing digital audio recordings of musical recordings online, not downloadable.
I also am not satisfied that any of the remaining of the Applicant’s Services are closely related to any of the Opponent’s Goods.

Comparison of trade marks

The question of deceptive similarity in particular turns on whether the consumer would be caused to wonder whether the Applicant’s Goods and Services come from a related trade source to those of the Opponent’s Trade Marks. The distinctiveness of a shared element, such as here a five strike counter sign, is often a critical factor in the consideration of the likelihood of confusion. Generally, a distinctive shared element can increase the likelihood of consumer confusion, the opposite being true when the shared element is common or descriptive.
I turn to the similarities between the trade marks. I start with the presence of what is clearly a five strike counter sign in both trade marks. I consider the signs to be distinctive for the goods and services. While there are some differences including the stylisation of the signs and the orientation of the horizontal elements, when considering the devices in each of the trade marks overall I find that they do share significant visual similarities. Whilst the five strike counter as such can be viewed as a device which could indicate the number five, how common its use might be or its descriptive nature is not explored in the evidence before me. The use of this kind of sign, even if it is supposed to conceptually allude to the number 5, would be relatively striking and memorable to a consumer of each the claimed goods and/or services.
The imperfect recollection of consumers is also a relevant consideration for the purposes of deceptive similarity. Since the trade marks are not being viewed side by side, I must consider whether a person who has seen the Opponent’s Trade Marks before (but may have only their recollection to go on), would upon seeing each of the Trade Marks, be confused as to whether the Applicant’s Goods and Services offered in relation to it, come from the Opponent or a related trade source. The presence of what appear to be small skulls in 2207696 does not so change that recollected impression. Nor does the difference in the angle and gradient of the diagonal strike element of each of the trade marks. The impression is that of a five strike tally count symbol. I consider the stylisation differences to have little relevant impact on the impression of the trade marks.
The Applicant submits that it has registrations for trade marks in the UK and Russia and that there is arguably no jurisdiction more comparable to Australia than the UK. It says that if this is considered to be a borderline case then the Opponent's Trade Marks should not be raised as an obstacle to the registration of the Opposed Marks. Australia has its own law and principles and those are what I apply in deciding this matter.
The lack of any additional wording or other elements in the trade marks heightens the risk of confusion here. A consumer of the relevant goods and/or services upon viewing the trade marks with an imperfect recollection, would likely be confused as to whether there is a link between the two trade sources. I am satisfied that there is a real tangible danger of confusion occurring when considering the similarities and likely imperfect recollection of the trade marks. As such, I find that the Trade Marks are deceptively similar to each of the Opponent’s Trade Marks.
I am satisfied that there is a deceptively similar earlier registered trade mark and PITM in respect of some of the Applicant’s Goods and Services.

Section 44(3)(a) / reg 4.16A(3)(a) honest concurrent use

In the event that I am satisfied that there is an earlier deceptively similar trade mark or PITM in relation to similar goods and/or services and/or those that are closely related, the Applicant submits that the discretion of the Registrar to accept the application under s 44(3)(a)/reg 4.15A(3)(a) should be applied. This must be based on evidence of honest concurrent use of the Trade Marks and is a discretion for the Registrar. The onus for establishing honest concurrent use and the applicability of s 44(3)(a)/reg 4.15A(3)(a) is with the Applicant.[30] Reliance must be made on circumstances before the Relevant Date to establish the applicability of s 44(3)(a)/reg 4.15A(3)(a).[31] The factors which are usually considered relevant for these purposes include: the honesty of an applicant’s adoption and use of the trade mark; the extent of use in terms of time, geographical area, and sales volume and value; the degree of likely confusion; the manner of use; the relative inconvenience caused by allowing or denying the registration of the Trade Mark; and any instances of actual confusion.[32] Knowledge of an earlier trade mark is not of itself always necessarily fatal.[33]
[30] Trident Seafoods Corporation v Trident Foods Pty Limited [2018] FCA 1490, [186] (Gleeson J) (‘Trident’); Hills Industries Limited v Bitek Pty Ltd [2011] FCA 94, [147] (Lander J) (‘Hills Industries’); Telstra (n 17) [238].
[31] Hills Industries ibid [177]; Trident ibid [186].
[32] Alex Pirie & Sons Ltd’s Application (1933) 50 RPC 147, 159-160 (Lord Tomlin); Re Fitton’s Application (1949) 66 RPC 110, 112 (UK Reg), which have been widely adopted and applied in Australia.
[33] McCormick & Co Inc v McCormick [2000] FCA 1335 (Kenny J) (‘McCormick’); Baume & Co Ltd v Moore (A H) Ltd [1958] RPC 226, 235 (CA); Joseph Rodgers & Sons Ltd v W N Rodgers & Co (1924) 41 RPC 277, 291 (Romer J).
I am satisfied on the balance of probabilities that the adoption of the Trade Marks by the Applicant was honest and I turn to consider the other factors.
There is evidence of the use of signs which contain the Trade Marks and sales data for those goods at Confidential Annexure JC-17 to Carpentier. Sales of clothing into Australia according to these figures are minimal in quantity and dollar amounts in April 2019 to December 2020, January to August 2021 and total sales from April 2019 to August 2021 are minimal. This is especially so considering the large market for clothing in Australia. Whilst there are sales of clothing goods mentioned in the figures I consider these to be low. There is, for example, mention of the sale of other goods not being clothing. Confidential Annexure JC-16 to Carpentier also concerns figures in US dollars which are a summary of the revenue derived from sales of the DBD in Australia to the end of 2021. I consider these figures to be significant. However, these figures are confined to sales under the Trade Marks of video game related goods and services.
The problem with the Applicant’s submissions in respect of s 44(3)(a)/reg 4.15A(3)(a) is that there is little evidence of the use of the Trade Marks in relation to many of the Applicant’s Goods and/or Services. Even so, the trade in the Applicant’s Goods being various forms of especially clothing, footwear and headwear has been minimal. Much of the other evidence is simply irrelevant as it relates to goods other than those of the Applicants Goods and/or Services which are similar. Overall, the invoices and sales figures reflect a low amount of sales for a limited period of time for the similar and/or closely related goods and services, if at all.
I am not satisfied that s 44(3)(a) and/or reg 4.15A(3)(a) are applicable or that I should apply these to register the Trade Marks.

Section 44(4) / reg 4.15A(5) prior use and s 44(3)(b) / reg 4.15A(3)(b)

None of the use of the Trade Marks by the Applicant in evidence is dated prior to the priority dates of the Opponent’s Trade Marks. Regardless, the Applicant does not appear to rely on s 44(4) or reg 4.15A(5).[34] Accordingly, s 44(4) or reg 4.15A(5) are not applicable.
[34] Applicant’s written submissions, [138].
For completeness, I also note that I am also not satisfied on the evidence that other circumstances would make it proper to apply s 44(3)(b)/reg 4.15A(3)(b).

Decision on s 44 ground of opposition

Accordingly, the ground of opposition under s 44 and reg 4.15A has been established in respect of the following of the Applicant’s Goods and Services:
Class 9: pre-recorded CDs and DVDs containing audio and video clips; DVDs containing recordings of television shows and movies featuring musical performances; downloadable digital audio recordings of television shows and movies featuring musical performances; downloadable digital audio recordings of musical performances; compact discs containing music; lp records; audio tapes featuring music
Class 14: Key chains; jewellery pins and ornamental pins; jewellery and watches
Class 25: Clothing and casual clothing, namely, shirts, t-shirts, sweat shirts, sweaters, jackets, pants, jeans, shorts; footwear, namely shoes, boots, sandals, athletic shoes, casual footwear; headwear, namely hats, toques, caps, head bands and visors; underwear; anklet socks; neck ties; clothing belts
Class 41: production of films and television shows, other than advertising films; production of radio, film and television entertainment programs; entertainment services, namely, continuing television programs and interactive television programs featuring musical performances; organization and presentation of live stage show performances, presentation of live show performances by costumed characters, and presentation of live theatrical performances; production and distribution of motion pictures and television programs; providing television programmes, not downloadable, via video-on-demand services; entertainment in the form of television shows; providing digital audio recordings of musical recordings online, not downloadable.

Consideration of the remaining grounds

I consider the remaining of the Applicant’s Goods and Services (‘Remaining Goods and Services’) in respect of the remaining grounds of opposition from here.

Section 58A

I note that s 44(4) and/or reg 4.15A(5) are not applicable in these proceedings.
Accordingly, the ground of opposition under s 58A is not established.

Section 58

Section 58 provides:
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.
The term ‘owner’ is not defined in the Act. However, it is well established that the owner of a trade mark is the person who first uses it in Australia, or first files an application for it in Australia, whichever is the earlier.
To establish this ground the Opponent must show that:
- a person other than the Applicant used the Trade Marks, or a trade mark with additions or alterations which do not substantially affect the identity of the Trade Marks,[35] in the course of trade in Australia; and
- the use was before the filing date of the Trade Marks, or before use of the Trade Marks by the Applicant, whichever is the earlier; and
- the use was in relation to the Applicant’s Goods and/or Services or in relation to goods or services considered to be the same kind of thing as the Applicant’s Goods and/or Services.[36]
The Opponent relies on the use of the Opponent’s Trade Marks. I firstly should note that the parts of EIS which are undated cannot assist in showing use before the Relevant Date.
At Exhibit EC-12 to Cruz-1 there are, for example, baseball cards which display 1139426 and are dated in September and October 2021 in social media posts. Exhibit EC-15 shows as throw blanket which carries the word ‘UNDEFEATED’ after which 1139426 follows, surrounding the Los Angeles Kings jockey team logo, which is dated 19 November 2021. Exhibit EC-29 also shows an American football which bears 1139426. The Opponent fails to establish that these social media posts or uses are directed to Australia. The problem with these and much of the EIS where it is dated before the Relevant Date is that where it suggests the use of the Opponent’s Trade Marks, it is not clearly evidence of use directed to Australian consumers.[37] This is so for many of the promotional materials, extracts of magazine covers and brochures of unspecified distribution. Otherwise, many of the goods in the EIS with use of the Opponent’s Trade Marks are plainly not the same kind of things as those of the Applicant’s Goods and Services such as umbrellas or software goods and services concerned with video games.
[37] Ward Group Pty Ltd v Brodie & Stone Plc [2005] FCA 471, [37] (Merkel J).

Even where the use of trade marks is dated prior to the Relevant Date, there is little evidence filed in these proceedings which demonstrates the use of substantially identical trade marks prior to the filing of the applications for registration of the Trade Marks, other than for various clothing, footwear and headgear which are already the subject of the ground of opposition under s 44 and reg 4.15A. Some Exhibits to Cruz, show images of what appears to be a toy, bottles, glasses, bags, sunglasses, air fresheners, cases for electronic devices, collectable baseball cards, a blanket, flashlight, mouse pads, shot glasses, whistles, pins and stickers. I also note that that there is mention in transactions occurring in Australia, documented in Exhibits EC-33 and EC-34, of some of the kinds of goods pictured. Goods listed in Exhibits EC-33 and EC-34 include, for example, various kind of bags, throws, basketballs and basketball sets, packable coolers ice cube trays, car mats, license plates, ashtrays mugs, shoe bags, wallets, BBQ tool sets, BBQ lighters, aprons, carabiners and air fresheners.
However, the EIS in combination does not satisfy me as to whether any of these transactions involved the Trade Marks, or trade marks without additions or alterations which substantially affect the identity of either of the Trade Marks. The transactions perhaps hint at such. However, the Opponent has not drawn a link with between the relevantly dated transactions and any example of the goods. Without more I cannot test what is behind the descriptions and product codes mentioned in Exhibits EC-33 and EC-34 to Cruz-1. There is no link that is obvious to me. Even after close inspection, and even where the words ‘UNDEFEATED ICON’ or ‘STRIKES’ are mentioned in the lists of transactions, the evidence is referentially insufficient. I do not find that goods appearing in evidence, for example in catalogues dated in 2008, 2010 and 2012 at Exhibit EC-5, necessarily relate to the goods listed for transactions occurring in 2016 to 2023 in Exhibits EC-33 and EC-34 to Cruz-1. I am left only to speculate about the use of trade marks which may have occurred in relation to these goods. I note again at this point that the Opponent has the onus in this matter to demonstrate the requirements of s 58.
Overall, I am not satisfied that there has been use of the Trade Marks, or a substantially identical trade mark, in respect of goods and/or services which are the same kind of thing as those of the Remaining Goods and Services.
Accordingly, the ground of opposition in relation to s 58 is not established for any of the Remaining Goods and Services.

Section 60

The Opponent also relies upon s 60, which provides:
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.
Note: For priority date see section 12.B
A relevant ‘reputation’ for the purposes of s 60 is not to be simply assumed.[38] It is for the Opponent to establish that a reputation exists as a matter of fact.[39] The word ‘reputation’ here means ‘the recognition of the [trade mark] by the public generally’.[40] The Opponent may demonstrate such a reputation by a variety of means, including quantum of sales or advertising and promotional activities.[41] Advertisements or other appearances of the other trade mark on television, radio or in magazines and newspapers may also be relevant. The required reputation is most often inferred from a high volume of sales, together with substantial advertising expenditures and other promotions.[42] Direct evidence of consumer appreciation of a mark, while often harder to produce, is another avenue for showing that a reputation exists.[43]
[38] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J) (‘ConAgra’).
[39] ConAgra, ibid. See also, Sara Lee Corp v Bali Blue Pty Ltd [2003] ATMO 81 (Hearing Officer Skivington).
[40] McCormick (n 33) [127].
[41] Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [83] (O’Bryan J).
[42] McCormick (n 33) [80].
[43] Ibid.
The Opponent relies on the use of the Opponent’s Trade Marks to assert that there is a reputation in those trade marks for the purposes of the ground of opposition under s 60. Whilst the global sales and advertising and promotional expenditure figures are substantial the Opponent’s figures are low in respect of Australia for each year mentioned in the EIS. The evidence of transactions in Australia also concerns almost exclusively clothing and shoes, with a few other examples of other goods. It is also not clear in many instances what signs have been used by the Opponent or whether they have been used in relation to the goods listed as the subject of sales mentioned in the evidence, for example in Exhibits EC-33 and EC-34.
I have also noted the many references to celebrities wearing clothing and footwear of the Opponent, bearing the Opponent’s Trade Marks such as those shown at Exhibit EC-22 to EC-24 to Cruz-1. There are also various cross promotional goods and collaborations with brands such as Nike, Converse, major sporting teams and Land Rover. Much of this evidence dates from periods far back in time and the various overseas publications have an unclear rate of distribution to, and effect on, the consuming Australian public. I also note that the majority of these activities relate to clothing, footwear and headgear. There is also minimal evidence of the use of the Opponent’s Trade Marks in relation to, collaboration with, and provision of, information about art and radio.
Overall, I am not satisfied on the evidence before me that there is a reputation in the Opponent’s Trade Mark.
Accordingly, the ground of opposition under s 60 is not established in respect of the Remaining Goods and Services.

Section 42(b)

Section 42(b) provides that an application for the registration of a trade mark must be rejected if its use would be contrary to law. The Opponent must satisfy the Registrar that use of the Trade Marks would not could be contrary to law.[44]
[44] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).
The SGPs in respect of both Trade Marks state:
(i)Given the reputation enjoyed by the Opponent in its trade marks, use of the [Trade Marks] by the Applicant would constitute conduct that is misleading or deceptive, or likely to mislead or deceive, in contravention of section 18 or section 29 of the Australian Consumer Law (‘ACL’) (Schedule 2 to the Competition and Consumer Act 2010 (Cth)
(ii)The Opponent submits that due to its reputation in its trade marks, the registration and use of the [Trade Marks] would be likely to deceive or cause confusion as:
a.   the [Trade Marks are] substantially identical or deceptively similar to the [Opponent’s Trade Marks];
b.     the [Trade Marks relate] to the same, similar and/or closely related goods and services as those in respect of which the Opponent has used its earlier Trade Marks for many years; and
c.   there is as real risk of use of the [Trade Marks] in respect of the goods and services for which registration is sought would constitute conduct that would, or would be likely to mislead or deceive consumers, as there is a real risk that consumers would believe that such goods and services came from the Opponent, or had some relationship or connection with the Opponent such as the license or approval of the Opponent. At the very least, such persons would be causes to wonder, or be left in doubt, as to whether such goods and services came from the same source.
Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading. There is no material difference between the expression ‘mislead or deceive’ in s 18 of the ACL and ‘false or misleading’ in s 29 of the ACL.
As already indicated in respect of s 60, I am not satisfied that there is a reputation in another trade mark. It follows that on the stricter test posited by the ACL, I am not satisfied that use of the Trade Marks is likely to mislead or deceive, or amount to a false or misleading impression under ss 18 and 29 of the ACL.
The Opponent has not established that use of the Trade Marks would be contrary to law. Consequently, the ground of opposition under s 42(b) has not been established in respect of the Remaining Goods and Services.

Decision and costs

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):

Class 9: Computer video games; compact discs and cartridge containing computer games and video games; downloadable computer games and video games; downloadable electronic games; downloadable video games; downloadable electronic game software for use with mobile telephones, handheld computers and tablet computers; downloadable applications for mobile phones, tablet computers and smart phones for playing video games; downloadable software for playing video, computer and online games; downloadable software incorporating computer games; downloadable computer software for video and audio games; downloadable multimedia and interactive software for playing video games; downloadable computer software for mobile phones for playing video games; audiovisual games on computer hardware platforms; downloadable software featuring music and motion pictures sound tracks for playing video games; exposed cinematographic films; pre-recorded CDs and DVDs containing audio and video clips; DVDs containing recordings of television shows and movies featuring action, adventure, comedy, drama, historical films, horror, fantasy, science fiction, musical performances and documentaries; downloadable digital audio recordings of television shows and movies featuring action, adventure, comedy, drama, historical films, horror, fantasy, science fiction, musical performances and documentaries; protective covers adapted for mobile phones; protective covers adapted for laptops; downloadable ring tones and graphics for mobile phones; ~~downloadable digital audio recordings of musical performances~~; decorative magnets~~; compact discs containing music; lp records; audio tapes featuring music;~~ none of the foregoing goods including pre-recorded CDs and DVDs containing audio and video clips; none of the foregoing goods including DVDs containing recordings of television shows and movies featuring action, adventure, comedy, drama, historical films, horror, fantasy, science fiction, musical performances and documentaries; none of the foregoing goods including downloadable digital audio recordings of television shows and movies featuring action, adventure, comedy, drama, historical films, horror, fantasy, science fiction, musical performances and documentaries; none of the foregoing goods including downloadable digital audio recordings of musical performances; none of the foregoing goods including compact discs containing music; none of the foregoing goods including lp records; none of the foregoing goods including audio tapes featuring music
~~Class 14: Key chains; jewellery pins and ornamental pins; jewellery and watches~~
Class 16: Printed matter, namely manuals, guides, books, comic books, magazines, posters, booklets, leaflets and newsletters on computer and video games and video game characters and fiction stories; greeting cards; notebooks; sticker albums and stickers; paper gift wraps; pencil cases
Class 18: Bags, namely, handbags, sports bags and carry-all bags, backpacks, wallets, purses, fanny packs, parts and accessories for all aforesaid goods; umbrellas
Class 21: Shooter glasses; drinking glasses; drinking cups; dishes and plates; lunch boxes; bottle openers; travel mugs; coffee mugs; drinking bottles for sports; plastic water bottles; water bottles sold empty
~~Class 25~~: Clothing and casual clothing, namely, shirts, t-shirts, sweat shirts, sweaters, jackets, pants, jeans, shorts; footwear, namely shoes, boots, sandals, athletic shoes, casual footwear; headwear, namely hats, toques, caps, head bands and visors; underwear; anklet socks; neck ties; clothing belts
Class 28: Toys, namely, action figures, soft small toys in the nature of plush toys, stuffed toys, mechanical toys, bath toys, and toy guns; board games, namely card games, dice games, memory games and role-playing games; inflatable toys; playing balls; puzzle games; action skill game and arcade games; video game machines for use with television; electronic games consoles adapted for use with an external screen or monitor; toy figurines, dolls, accessories for dolls and clothing for dolls; playing cards; electronic game consoles; video game consoles; computer game consoles; computer video game joysticks; hand-held units for playing video games; hand held joystick units for playing video games; decorations for Christmas trees; costume masks; theatrical masks
Class 41: Entertainment services, namely, providing online video games; entertainment services, namely, providing online and non-downloadable video games via the Internet; providing online computer games; online video gaming services; organization of exhibitions in the field of entertainment, namely in the field of video games; organizing, conducting and operating video game competitions and tournaments; organization of exhibitions for cultural or educational purposes in the field of video games; publishing of entertainment, educational and instructional texts in the field of video games; publication of magazines, newspapers and books in the field of video games; online publications, namely, online magazines featuring information, news and commentary in the field of video games; providing entertainment news and information via a website in the field of online computer games; games offered online on a computer network; providing non-downloadable games by mobile telephone communication; provision of non-downloadable games via mobile applications on mobile telephones, handheld computers and tablet computers; entertainment services in the nature of an amusement park attraction, namely, a themed area; amusement park and theme park services; providing entertainment and amusement center services, namely, interactive play areas; production of films and television shows, other than advertising films; production of radio, film and television entertainment programs; entertainment services, namely, continuing television programs and interactive television programs featuring action, adventure, comedy, drama, historical films, horror, fantasy, science fiction, musical performances and documentaries; organization and presentation of live stage show performances, presentation of live show performances by costumed characters, and presentation of live theatrical performances; production and distribution of motion pictures and television programs; ~~providing television programmes, not downloadable, via video-on-demand services; entertainment in the form of television shows~~; providing entertainment and information videos via a website in the field of video games; ~~providing digital audio recordings of musical recordings online, not downloadable~~; none of the foregoing services including production of films and television shows, other than advertising films; none of the foregoing services including production of radio, film and television entertainment programs; none of the foregoing services including entertainment services, namely, continuing television programs and interactive television programs featuring action, adventure, comedy, drama, historical films, horror, fantasy, science fiction, musical performances and documentaries; none of the foregoing services including organization and presentation of live stage show performances, presentation of live show performances by costumed characters, and presentation of live theatrical performances; none of the foregoing services including production and distribution of motion pictures and television programs; none of the foregoing services including providing television programmes, not downloadable, via video-on-demand services; none of the foregoing services including entertainment in the form of television shows; none of the foregoing services including providing digital audio recordings of musical recordings online, not downloadable

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.

100.Both parties have requested costs. Whilst it is normal for costs to follow the event, there is a measure of success for both parties here and I note that the evidence across the two proceedings has essentially been the same. I decline to make any award of costs.

Benjamin Goldsworthy

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

17 July 2025

Schedule 1

Class 9: Computer video games; compact discs and cartridge containing computer games and video games; downloadable computer games and video games; downloadable electronic games; downloadable video games; downloadable electronic game software for use with mobile telephones, handheld computers and tablet computers; downloadable applications for mobile phones, tablet computers and smart phones for playing video games; downloadable software for playing video, computer and online games; downloadable software incorporating computer games; downloadable computer software for video and audio games; downloadable multimedia and interactive software for playing video games; downloadable computer software for mobile phones for playing video games; audiovisual games on computer hardware platforms; downloadable software featuring music and motion pictures sound tracks for playing video games; exposed cinematographic films; pre-recorded CDs and DVDs containing audio and video clips; DVDs containing recordings of television shows and movies featuring action, adventure, comedy, drama, historical films, horror, fantasy, science fiction, musical performances and documentaries; downloadable digital audio recordings of television shows and movies featuring action, adventure, comedy, drama, historical films, horror, fantasy, science fiction, musical performances and documentaries; protective covers adapted for mobile phones; protective covers adapted for laptops; downloadable ring tones and graphics for mobile phones; downloadable digital audio recordings of musical performances; decorative magnets; compact discs containing music; lp records; audio tapes featuring music

Class 14: Key chains; jewellery pins and ornamental pins; jewellery and watches

Class 16: Printed matter, namely manuals, guides, books, comic books, magazines, posters, booklets, leaflets and newsletters on computer and video games and video game characters and fiction stories; greeting cards; notebooks; sticker albums and stickers; paper gift wraps; pencil cases

Class 18: Bags, namely, handbags, sports bags and carry-all bags, backpacks, wallets, purses, fanny packs, parts and accessories for all aforesaid goods; umbrellas

Class 21: Shooter glasses; drinking glasses; drinking cups; dishes and plates; lunch boxes; bottle openers; travel mugs; coffee mugs; drinking bottles for sports; plastic water bottles; water bottles sold empty

Class 25: Clothing and casual clothing, namely, shirts, t-shirts, sweat shirts, sweaters, jackets, pants, jeans, shorts; footwear, namely shoes, boots, sandals, athletic shoes, casual footwear; headwear, namely hats, toques, caps, head bands and visors; underwear; anklet socks; neck ties; clothing belts

Class 28: Toys, namely, action figures, soft small toys in the nature of plush toys, stuffed toys, mechanical toys, bath toys, and toy guns; board games, namely card games, dice games, memory games and role-playing games; inflatable toys; playing balls; puzzle games; action skill game and arcade games; video game machines for use with television; electronic games consoles adapted for use with an external screen or monitor; toy figurines, dolls, accessories for dolls and clothing for dolls; playing cards; electronic game consoles; video game consoles; computer game consoles; computer video game joysticks; hand-held units for playing video games; hand held joystick units for playing video games; decorations for Christmas trees; costume masks; theatrical masks

Class 41: Entertainment services, namely, providing online video games; entertainment services, namely, providing online and non-downloadable video games via the Internet; providing online computer games; online video gaming services; organization of exhibitions in the field of entertainment, namely in the field of video games; organizing, conducting and operating video game competitions and tournaments; organization of exhibitions for cultural or educational purposes in the field of video games; publishing of entertainment, educational and instructional texts in the field of video games; publication of magazines, newspapers and books in the field of video games; online publications, namely, online magazines featuring information, news and commentary in the field of video games; providing entertainment news and information via a website in the field of online computer games; games offered online on a computer network; providing non-downloadable games by mobile telephone communication; provision of non-downloadable games via mobile applications on mobile telephones, handheld computers and tablet computers; entertainment services in the nature of an amusement park attraction, namely, a themed area; amusement park and theme park services; providing entertainment and amusement center services, namely, interactive play areas; production of films and television shows, other than advertising films; production of radio, film and television entertainment programs; entertainment services, namely, continuing television programs and interactive television programs featuring action, adventure, comedy, drama, historical films, horror, fantasy, science fiction, musical performances and documentaries; organization and presentation of live stage show performances, presentation of live show performances by costumed characters, and presentation of live theatrical performances; production and distribution of motion pictures and television programs; providing television programmes, not downloadable, via video-on-demand services; entertainment in the form of television shows; providing entertainment and information videos via a website in the field of video games; providing digital audio recordings of musical recordings online, not downloadable.