Universal Health International Pty Ltd v Universal Protein Supplements Corporation

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Universal Health International Pty Ltd to registration of trade mark application 1289893 (5) - UNIVERSAL & Device - in the name of Universal Protein Supplements Corporation

Delegate:

Hearing Officer: Michael Kirov

Representation:

Opponent: No appearance and no written submissions.

Applicant: Gerard Skelly of Shelston IP.

Decision:

2014 ATMO 64

Section 52 opposition: ss 41, 42(b), 43, 44, 58 and 60 considered – trade mark inherently capable of distinguishing the Applicant’s goods - trade mark deceptively similar to the Opponent’s earlier registered mark covering similar goods but s 44(3) applied – use not otherwise likely to mislead, deceive or cause confusion – Applicant the owner of the trade mark – registration to proceed. Costs awarded against the Opponent.

Background

This is an opposition brought by Universal Health International Pty Ltd (“the Opponent”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark subject of the application detailed below in the name of Universal Protein Supplements Corporation (“the Applicant”):
Application Number:  1289893
Trade Mark:            (“the Opposed Mark”)
Priority Date:       16 March 2009                  (“the Priority Date”)
Goods:[1]  Class 5: Sports and body building supplements, namely, dietary food supplements, dietary supplements, food supplements, herbal supplements, meal replacement and dietary supplement drink mixes, mineral nutritional supplements, mineral supplements, nutritional supplements, nutritional supplement drink mix, vitamin and mineral supplements, vitamin supplements, meal replacement bars
(“the Applicant’s Goods”)
Endorsement: Provisions of paragraph s 44(3)(a) and/or Reg 4.15A(3)(a) applied.
[1] When originally opposed, application 1289893 had a broader Class 5 specification, but the Applicant requested its amendment on 25 July 2013 introducing the qualifying words, “Sports and body building supplements, namely…”
The Opponent filed its Notice of Opposition (“the Notice”) on 2 November 2012 raising some 13 grounds corresponding to various provisions of the Act. Although the Opponent has played no part in proceedings since filing its Evidence in Support, it is apparent from that evidence that it intended to pursue only those grounds based on ss 41, 42(b), 43, 44, 58 and 60 of the Act. I accordingly treat the remaining grounds listed in the Notice as abandoned.
Principally underpinning those grounds being pursued is the Opponent’s registration 839349 and/or the claimed reputation in the marketplace of the registered mark in question. I will discuss this registration further below in connection with the Opponent’s s 44 ground, but it is convenient at this point to set out its essential details:
Registration Number:                   839349
Trade Mark:
(“the Opponent’s Mark”)
Priority Date:       19 June 2000
Goods & Services:  Class 5: Pharmaceutical, homoeopathic medicines, herbal medicines, health care products
Class 42:Medical, health care services, scientific and medical research, chiropractic
I note that in 2010 the Applicant applied for partial removal of the Opponent’s Mark from the Register on the grounds of non-use (“the Removal Application”). The Removal Application was subsequently withdrawn before being actually determined but, as indicated below, several of the declarations relied on by the parties in those earlier proceedings are also in evidence in the current opposition.
The parties served and filed the following Statutory Declarations as Evidence in Support and Evidence in Answer:
Evidence in Support
▪ Peter Bablis made on 28 March 2013, with Exhibits PB 1 to PB 17 (“Bablis 4”)
Bablis 4 includes the following Exhibits comprising copies of three further Statutory Declarations made by Peter Bablis, the originals of which were filed by the Opponent as evidence in the Removal Application:
Exhibit PB 14A: Statutory Declaration made on 24 January 2011, with Exhibits PB 1 to PB 6 (“Bablis 1”)
Exhibit PB 14B: Statutory Declaration made on 28 January 2011, with Exhibits PB 7 to PB 10 (“Bablis 2”)
Exhibit PB 14C: Statutory Declaration made on 27 March 2012, with Exhibits PB 11 to PB 13 (“Bablis 3”)
Evidence in Answer
▪ Gerard James Skelly made on 20 June 2012, with Exhibits GJS-1 to GJS-6 (“Skelly 1”)
Skelly 1 includes the following Exhibits comprising copies of three further Statutory Declarations, the originals of which were filed by the Applicant as evidence in the Removal Application (Douglas and Rockoff 1) or in support of acceptance of the opposed application under s 44(3)(a) (Rockoff 2):
Exhibit GJS-1: Statutory Declaration by Craig Raymond Douglas made on 26 August 2011 (“Douglas”)
Exhibit GJS-2: Statutory Declaration by Michael Rockoff made on 29 July 2011 (“Rockoff 1”)
Exhibit GJS-3: Statutory Declaration by Michael Rockoff made on 20 June 2012 (“Rockoff 2”)
▪ Ian Duncan Furlong made on 20 September 2013, with Exhibits IF-1 to IF-8 (“Furlong”)
▪ Gerard James Skelly made on 26 September 2013, with Exhibits GJS-7 to GJS-10 (“Skelly 2”)
I will refer to the parties’ evidence further, as necessary, in the “Discussion” section below. For the present I note that, according to its Managing Director, Dr Peter Bablis, as at January 2010 when Bablis 1 was made:
5. The Opponent was incorporated on 27 March 2003.
6. The Opponent specialises in providing leading edge services and products within the Chiropractic and Natural Medicines fields. In particular, the Opponent creates, manufactures and distributes homeopathic medicines, herbal medicines and health care products using the [Opponent’s] Mark. The Opponent operates two health centres in Sydney, New South Wales, and distributes products throughout Australia.
7. The Opponent has used the [Opponent’s] Mark on its range of homeopathic medicines, herbal medicines and health care products (“Opponent’s Products”) since 2003. The Opponent’s Products are sold through the Opponent’s health centres. The Opponent currently has over 34,000 patients on its database.
As for the Applicant, Michael Rockoff has been its Vice-President since 1991 and he says in Rockoff 1, made in July 2011, that:
9. [The Applicant] has been a leading manufacturer of sports nutrition supplements since 1977.
10. [The Applicant] operates a website at the domain name < This domain name was first registered on July 22 1998.
11. With a worldwide sales volume in excess of $20 million each year since 2003, [the Applicant’s] sales constitute approximately seven (7) percent of the global sports nutrition market. Worldwide advertising expenditure has also exceeded US$1 million for each of the last five years.
…
13. [The Applicant’s] products are distributed worldwide.
14. EMI Nutrition Distributors are the principal Australian distributor for [the Applicant’s] products. The relationship between EMI Nutrition Distributors and [the Applicant] was formally established on 9 February 2003.
15. The UNIVERSAL trade mark has been used since 1977 by [the Applicant].
16. [The Applicant’s] products have been imported into Australia since at least 2004.
17. EMI Nutrition Distributors first imported [the Applicant’s] products, including products bearing the [Opposed Mark], into Australia in 2004.
…
20. [The Applicant’s] products are sold under the [Opposed Mark] throughout Australia in a variety of stores including gyms, health stores, chemists and pharmacies; through personal trainers; and via online retailers.
As mentioned, at the heart of the present opposition is the claimed similarity of the Opposed Mark to the Opponent’s Mark and the deception or confusion it is said would ensue if the Opposed Mark is registered and used for the Applicant’s Goods.
I heard the matter as a delegate of the Registrar of Trade Marks on 16 June 2014 in Sydney. Gerard Skelly of Shelston IP appeared for the Applicant. His oral submissions were supplemented by written submissions emailed to the Opponent and me on 6 June in accordance with the timetable set out in a directions email I sent to the parties on 23 May 2014. There was no appearance by the Opponent, nor did it file any written submissions. My directions email of 23 May had requested the Opponent to respond by 2 June advising who would be attending the hearing, confirming the required hearing fee had been paid and providing a copy of its written submissions. Reminder emails were also sent on 3 and 6 June. In the event the only response received from the Opponent was an email apparently sent on 10 June (received 12 June) from Peter Bablis requesting my contact telephone number, to which I replied on 12 June. Neither I, nor as far as I am aware IP Australia, has had any further contact from Dr Bablis since then.
Grounds of Opposition, Onus and Standard of Proof
As mentioned, it is apparent from the Opponent’s evidence that the Opponent is pressing only the grounds in the Notice based on sections 41, 42(b), 43, 44, 58 and 60 of the Act. In particular, Bablis 4 contains, in addition to evidence per se, what are essentially submissions in support of these particular grounds. The grounds in question are discussed in detail below in the order indicated, except that I have found it convenient to deal with the s 42(b) ground last.
To succeed, the Opponent bears the onus of establishing at least one of the six grounds pressed. I proceed on the basis that the relevant standard of proof required is the ordinary civil standard based on the balance of probabilities.[2]
[2] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26].
As indicated by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd,[3] the relevant date at which the rights of the parties are to be determined is the Priority Date.
Discussion
[3] (1954) 91 CLR 592 at 595.
Section 41
The ground based on s 41 is indicated in the Notice as follows:
The [Opposed Mark] is not capable of distinguishing the Applicant’s Goods from the goods or services of other persons.
Without limiting any other ground of opposition, the [Opposed Mark] should not have been accepted under application of section 41 and particularly subsection 41(5).
I note that as from 15 April 2013 the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 repealed s 41 of the Act as it then stood and substituted new wording. The Registrar’s position is nevertheless that the now repealed section continues to apply to trade mark applications filed before that date.[4] Accordingly the repealed section remains relevant here and all references to s 41 in this decision are to the section as it stood prior to its amendment, as set out below:
[4] See Clearlight Investments Pty Ltd v Sandvik Mining and Construction Oy (2013) ATMO 50.
Trade mark not distinguishing applicant's goods or services
41.(1) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.
Note 1: For applicant and predecessor in title see section 6.
Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).
(2) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.
Note: For goods of a person and services of a person see section 6.
(3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.
(4) Then, if the Registrar is still unable to decide the question, the following provisions apply.
(5) If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:
(a) the Registrar is to consider whether, because of the combined effect of the following:
(i) the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;
(ii) the use, or intended use, of the trade mark by the applicant;
(iii) any other circumstances;
the trade mark does or will distinguish the designated goods or services as being those of the applicant; and
(b) if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant's goods or services from the goods or services of other persons; and
(c) if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant's goods or services from the goods or services of other persons.
Note 1: For goods of a person and services of a person see section 6.
Note 2: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).
(6) If the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:
(a) if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;
(b) in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.
Note 1: Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b) the time of production of goods or of the rendering of services.
Note 2: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).
Under the heading “Section 41(2)” in Bablis 4, Dr Bablis says:
30. Given that the [Opposed Mark] is deceptively similar to the Opponent’s Mark and for same or similar goods, the [Opposed Mark] is not capable of distinguishing the Applicant’s Goods from the goods and services provided by the Opponent.
Dr Bablis, (who had previously obtained a copy of IP Australia’s file on the opposed application under the Freedom of Information Act 1982), goes on to note that the Examiner of the application had considered the Opposed Mark was deceptively similar to the Opponent’s Mark.[5] In apparent support of the s 41 ground, he concludes by saying:
33. I believe that any use by the Applicant of the [Opposed Mark] would drive customers and potential customers to the conclusion that the goods offered by the Applicant were in fact offered by or derived from the Opponent or vice versa.
[5] See below at paragraph 35.
The Opponent’s s 41 ground, based as it apparently is on potential deception or confusion as between the Opposed Mark and the Opponent’s Mark, is misconceived on the face of it. Section 41 is concerned with a trade mark’s “in principle” capacity to distinguish an applicant’s goods or services of interest, (whether such capacity be inherent or acquired or some combination thereof), and is assessed independently of its similarity or otherwise to other trade marks.
I note that there is no evidence before me suggesting that the Opposed Mark would offend against s 41 for any other reason. In this regard the application of s 41 was analysed by Branson J in the leading case of Blount Inc v Registrar of Trade Marks as follows: [6]
Subsections (3)–(6) of s 41 of the Act are designed to control the process by which the registrar is to reach a conclusion as to whether the trade mark for which registration is sought is capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (the designated goods or services). If the trade mark is not so capable, the application for its registration must be rejected: s 41(2). Subsection (3) requires the registrar first to “take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons”. Having taken such matter into account, it is theoretically open to the registrar to conclude:
(a) that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or
(b) that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; or
(c) that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.
[6] (1998) 40 IPR 498 at 504.
The first issue to be considered under s 41 indicated by her Honour is the extent to which the trade mark in question is “inherently adapted to distinguish the designated goods or services from the goods or services of other persons”, as specified in s 41(3). If it is considered the trade mark is sufficiently so adapted then s 41 is satisfied and the trade mark is prima facie registrable.
Guidance in interpreting the term “adapted to distinguish” is generally found in the well known words of Kitto J in Clark Equipment Company v Registrar of Trade Marks in connection with the (word) mark MICHIGAN:[7]
[T]he question whether a mark is adapted to distinguish [is to] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.
[7] (1964) 111 CLR 511 at 514. Kitto J was in effect paraphrasing the words of Lord Parker of Waddington in Re W & G du Cros Ltd’s Application (1913) 30 RPC 660 which Kitto J had earlier (at 514) quoted with approval.
The Opposed Mark contains two principal elements, being the word “universal” and the device of a strongman. I note that the strongman device solus is subject of registration 1566848 owned by the Applicant and was considered prima facie registrable in its own right for the goods and services in Classes 5, 25 and 35 covered. It is true that the other element of the Opposed Mark, the word “universal”, has a well known meaning indicating “widespread”, “applicable to all/everything” or similar. However the word does not necessarily convey any relevant descriptive significance in terms of the Applicant’s Goods. It is not in my view “directly descriptive” of them to the extent that the inherent adaptation of the Opposed Mark as a whole to distinguish the Applicant’s Goods is called into question. Indeed, a check of the Trade Marks Register confirms that the word “universal” alone (in plain capital letters) is the subject of several current registrations owned by various different parties and covering a wide range of goods and services and that it has invariably been considered to be prima facie capable of distinguishing those goods and services in its own right.[8]
[8] I note the oldest of these, registration 5837 UNIVERSAL covering “sporting articles” in Class 28, dates from 1908.

In the present case I confirm I am accordingly satisfied that the Opposed Mark as a whole contains sufficient inherent adaptation to distinguish the Applicant’s Goods from those of others as to qualify for registration on that basis alone. The opposition ground based on s 41 of the Act is therefore not established.
Section 43
The ground based on s 43 of the Act is indicated in the Notice as follows:
The use of the [Opposed Mark] in relation to some and probably all of the Goods would be likely to deceive or cause confusion because of some connotation the [Opposed Mark] has.
The use of the [Opposed Mark] will be likely to deceive or cause confusion contrary to sections 43 and 60 of the [Act].
Section 43 is reproduced below:
Trade mark likely to deceive or cause confusion
43. An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
Under the heading “Section 43” in Bablis 4, Dr Bablis says:
39. Given that the [Opposed Mark] is deceptively similar to the Opponent’s Mark and is for the same of [sic] similar goods, I believe that use by the Applicant of the [Opposed Mark] would lead to deception and confusion because persons encountering the [Opposed Mark] would assume that there was some real connection with the Opponent, or that the goods were in fact being provided by the Opponent.
40. I refer to Report 2 at Exhibit 16. The Examiner states that due to the similarity of the goods and the shared word, being the most significant non device element in the marks, there “is a strong likelihood that consumers will assume that the goods covered by both trade marks are from the same trader, and that deception or confusion will arise”.
41. On this basis I believe that registration of the [Opposed Mark] should be refused under Section 43 of the [Act].
It is apparent from this that the “connotation” relied upon by the Opponent stems from the fact that the Opposed Mark, like the Opponent’s Mark, features the word “universal”. Once again, reliance on s 43 for such reason is misconceived, as the offending connotation must be inherent in the opposed trade mark. In Winton Shire Council v Lomas Spender J put it this way:[9]
Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60.
[9] (2002) 56 IPR 72 at [19].
As Gyles J further explained in Pfizer Products Inc v Karam:[10]
“Connotation” is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question, rather than, for example, deception by reason of some similarity with other marks…
[10] (2006) 70 IPR 599 at [53].
In short, deception or confusion caused as a result of similarity to another trade mark is outside the scope of s 43. The ground based on s 43 of the Act is accordingly not established.
Section 44
The ground based on s 44 is indicated in the Notice as follows:
Without limiting any other ground of opposition, the [Opposed Mark] should not have been and should not be accepted pursuant to section 44 or should not have been accepted without the imposition of conditions or limitations.
The [Opposed Mark], in respect of the [Applicant’s] Goods, is substantially identical with, or deceptively similar to one or more prior trade mark rights separately owned including, without limitation, the trade mark “Universal Health Creating Lasting Improvements” (device) (No. 839349, filed on 19 June 2000) which is registered in respect of closely related goods and services having a priority date or use date earlier than the priority date of the [Opposed Mark].
Details of registration 839349 for the Opponent’s Mark were set out in paragraph 3 above.
Insofar as relevant to the present matter, s 44 of the Act is reproduced below:
Identical etc. trade marks
44.(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.
Note 1: For deceptively similar see section 10.
Note 2: For similar goods see subsection 14(1).
Note 3: For priority date see section 12.
(2) …
(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) …
Under the heading “Section 44” in Bablis 4, Dr Bablis says:
42. I refer to Report 1 and Report 2 at Exhibits 15 and 16. The Examiner held that the [Opposed Mark] was deceptively similar to the Opponent’s Mark.
43. Notwithstanding the Examiner’s finding, I have considered the relevant question, being whether an ordinary consumer of average intelligence with imperfect recollection would be confused as to whether two products come from the same supplier.
44. I refer to my comments at paragraph 18 and 19 above that the Applicant and the Opponent provide the same or similar goods.
45. Due to the striking similarities between the marks including as described in paragraph 31(i) and (ii) above,[11] I believe that the [Opposed Mark] and the Opponent’s Mark would be remembered in the same way by consumers.
46. Additionally, the Opponent’s Mark was filed in 2000 and quite obviously has an earlier priority date than does the [Opposed Mark].
47. Therefore, the [Opposed Mark] has a later priority date than the Opponent’s Mark, is deceptively similar and covers goods of the same description.
48. Further, I refer to my comments at paragraph 14 to 27 above.[12] I do not believe that there has been honest concurrent use.
49. On this basis I believe that registration of the [Opposed Mark] should be refused under Section 44 of the [Act].
[11] See paragraph 35 below.
[12] See paragraphs 59 to 64 below.
As Dr Bablis points out, the Opponent’s registration 839349 dates from 19 June 2000, well before the Priority Date.
Moreover, Mr Skelly confirmed that:
…the Applicant does not dispute that [the] very broad specification [of registration 839349] embraces similar goods[13] to [the Applicant’s Goods].
[13] As defined in s 14(1) of the Act, namely the same goods and/or goods of the same description.
Nor does Dr Bablis claim that the Opposed Mark is substantially identical with the Opponent’s Mark. Accordingly the key issue for determination as far as s 44(1) is concerned is whether the parties’ marks are “deceptively similar”. In this regard Dr Bablis points to IP Australia’s assessment of the issue during examination of the opposed application, and says at paragraph 31 of Bablis 4:
31. I refer to Report 2 at Exhibit 16. The Examiner finds that the [Opposed] Mark is deceptively similar to the Opponent’s Mark for the following reasons:
(i) Both marks feature the word “UNIVERSAL” as the main feature.
(ii) Both marks include an image of a standing figure with outstretched hands.
(iii) The Opponent’s Mark also includes the word “HEALTH” and the phrase “CREATING LASTING IMPROVEMENTS” which the [Opposed] Mark does not. In the context of class 5 and 42, “HEALTH” is descriptive of the focus or function of the goods and services and “CREATING LASTING IMPROVEMENTS” is descriptive of the benefits of the goods and services.
(iv) The stylistic and font differences between the marks are not enough to overcome the similarities.
Section 10 of the Act provides that “a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion”. Unlike the position when assessing substantial identity, the marks under comparison should not be looked at side by side and the possible “imperfect recollection” of the Opponent’s Mark by relevant consumers when they encounter the Opposed Mark must accordingly be given due weight. As Mr Skelly mentioned in his submissions, guidance in assessing deceptive similarity is generally found in the words of Windeyer J at first instance in Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (“Shell”), where his Honour said:[14]
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 [Opponent’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 [Opposed Mark]. To quote Lord Radcliffe again [de Cordova v Vick Chemical Co (1951) 68 RPC 103 at 106; 1B IPR 496 at 499]:
The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him … It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.
[14] (1961) 109 CLR 407 at 415; (1963) 1B IPR 523 at 529.
I note that the distinction between the terms “deceive” and “cause confusion” was addressed by the Full Federal Court (Black CJ, Sundberg and Finkelstein JJ) in The Coca-Cola Company v All-Fect Distributors Ltd:[15]
[39] Section 10 of the Act provides that a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion. No intention to deceive or cause confusion is required: Re Bali Brasserie Co Inc's Registered Trade Mark (1968) 118 CLR 128 at 139. The distinction between “likely to deceive” and “likely to cause confusion” lies not in some element of culpability in the user to be inferred from the word “deceive”, but in the effect of the mark on prospective purchasers. In Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410 at 423 Richardson J, in the New Zealand Court of Appeal, said:
“Deceived” implies the creation of an incorrect belief or mental impression and causing “confusion” may go no further than perplexing or mixing up the minds of the purchasing public … Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.
[15] (1999) 96 FCR 107; 47 IPR 481 at [39].
Moreover as far as “confusion” in particular is concerned, as Dodds-Streeton J noted recently in Tivo Inc v Vivo International Corporation Pty Ltd:[16]
It is well established that trade marks may be deceptively similar for the purposes of ss 44(1) and (2) of the Act even if confusion is unlikely to persist up to the point of, and contribute to, inducing sale.
[16] [2012] FCA 252 (19 March 2012) at [105]. Dodds-Streeton J’s ultimate finding was upheld unanimously on appeal to the Full Federal Court (Keane, CJ (as he then was), Nicholas & Dowsett, JJ) in Vivo International Corporation Pty Ltd v Tivo Inc (2012) 99 IPR 1.
Mr Skelly went on to distil several further propositions from various leading cases relevant to assessing deceptive similarity. The most significant of these for present purposes were restated recently by the Full Federal Court (Keane CJ, Stone and Jagot JJ) in Food Channel Network Pty Ltd v Television Food Network GP,[17] endorsing the approach of an earlier Full Federal Court (Moore, Sackville and Emmett JJ) in Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd[18] (“Crazy Ron’s”). As the Court put it at [91]:
The approach to the comparison to be made between marks that are said to be deceptively similar was summarised by this court in Crazy Ron’sat [73]–[79]:
[73] First, as the primary judge pointed out, the question of deceptive similarity of marks, unlike substantial identity, is not to be judged by a side-by-side comparison …
[75] Second, the question of deceptive similarity involves factual issues in respect of which similarities of sound may be important …
[76] Third, it is necessary to show a tangible danger of deception or confusion, although it is enough if an ordinary person entertains a reasonable doubt …
[77] Fourth … the court must make allowance for the imperfect recollection a person may have of the registered trade mark in determining whether another mark so nearly resembles the registered mark that it is likely to deceive or cause confusion …
[79] Fifth, the authorities also recognise that the concept of imperfect recollection may be applied to trade marks other than those consisting simply of an invented word (as in Aristoc v Rysta[19] and Berlei v Bali[20]). If a registered trade mark includes words which can be regarded as an essential feature of the mark, another mark that incorporates those words may well infringe the registered trade mark. The other mark may also infringe if there is a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of the words constituting an essential feature of the registered mark.
[17] (2010) 86 IPR 437.
[18] (2004) 209 ALR 1; 61 IPR 212.
[19] Re Rysta Ltd’s Application[1943] 1 All ER 400; (1943) 60 RPC 87 (CA) and Aristoc Ltd v Rysta Ltd [1945] AC 68; [1945] 1 All ER 34; (1944) 1B IPR 467 (HL).
[20] Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353; 1 ALR 443.
In terms of the Court’s last proposition at [79] above, a key question I must consider is whether the element UNIVERSAL common to both parties’ marks can be regarded as an “essential feature” of the Opponent’s Mark, a “significant detail” by which one or both marks might be imperfectly remembered or perceived by relevant consumers such that deception or confusion was likely. On this point Mr Skelly submitted:
In Crazy Ron’s, the Full Federal Court considered the concept of an “essential feature” of a registered trade mark at paragraphs 93-103 and noted that “some caution needs to be exercised before characterising words in complex composite registered trade mark as an ‘essential feature’ of that mark in assessing the question of deceptive similarity”.
Mr Skelly mentioned other cases where the presence of a common element in composite marks under comparison had not led to a finding of deceptive similarity,[21] submitting:
In the present case, it is necessary to assess the Opponent’s registered mark as a complex, composite mark. The word “Health” is given equal prominence to the word “Universal”. The tagline “Creating lasting improvements” is also a significant element, as is the stylised letter “V” and background disc. It is incorrect to characterise the word “Universal” or, for that matter, the words “Universal Health” as the essential feature of this composite mark.
[21] In particular, CA Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42 per Ryan, Branson & Lehane JJ; Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J; Fry Consulting Pty Ltd v Sports Warehouse, Inc (No 2) (2012) 94 IPR 551; 288 ALR 727 per Dodds-Streeton J; Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd (2012) 97 IPR 183 per Jacobson J and Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited [2014] FCA 373] (11 April 2014) per Murphy J.
Highlighting what has become known as the “presumption of registrability” under the Act and submitting that, “The Opponent’s trade mark registration does not give the Opponent exclusive rights in other trade marks containing the word UNIVERSAL”, Mr Skelly concluded by highlighting the following further matters:
• The results of a search of the Trade Marks Register for trademarks in Class 5 containing the part word “univers” exhibited with Skelly 1 located registration 736858 UNIVERSAL INFORMER LIBRARY owned by a third party and the Applicant’s own registration 1289893 Universal Nutrition & Device. Since that search, application no. 1600509 UNIVERSAL CHOICE Logo owned by yet another party has also been accepted.
• These days “the visual characteristics of brands take on much greater significance” and the Applicant’s Goods would “tend to be self selected from retail stores or ordered online”. Aural use of the Opposed Mark would be “less common”.
• The Applicant’s Goods are aimed at a market segment “particularly interested in supplements to build body mass and shape when training and weight lifting” and such purchasers “are likely to have a reasonably good knowledge of competing brands and product features.”
• The cost of the Applicant’s Goods “can be significant and purchases are not likely to be made on impulse or in a hurry”, unlike the case with “everyday vitamin and mineral supplements purchased by the general population”.
• Given the intended market segment for the Applicant’s Goods, the strongman device in the Opposed Mark “takes on added importance and is a significant memory cue.”
• The Applicant has registered the strongman device in Classes 5, 25 and 35 in its own right (covering “Nutritional supplements for human consumption” in Class 5).
• The Opposed Mark “will be perceived and recalled as something quite different to the Opponent’s composite mark”.
• The word “universal” is “a familiar and common English word with known meanings” and “there are over 160 trade mark registrations across all classes which contain or consist of this exact word and consumers would be accustomed to seeing this word being used in a brand context”.
These submissions notwithstanding, I find I am essentially in agreement with the reasoning of the Examiner who originally considered the opposed application, as reproduced in Bablis 4 and set out in paragraph 35 above. I have accordingly concluded, on balance, that the Opposed Mark is indeed deceptively similar to the Opponent’s Mark.
It is true, as Mr Skelly submitted, that the marks must be compared as wholes. Given in this case that the marks are obviously different in terms of their overall look, I would agree the marks as wholes might reasonably be considered readily distinguishable on a side by side comparison or where both marks were well known to relevant consumers. I must however consider the issue from the point of view of potential purchasers of the relevant Class 5 goods who only know of the Opponent’s Mark (and perhaps have an imperfect recollection of it) and I should attempt to assess the effect or impression produced on the minds of such purchasers when they encounter similar goods being offered under the Opposed Mark. As the authorities indicate, it is enough if the person of ordinary intelligence and memory would be caused to wonder, or be left in doubt, about whether the goods in question come from the same source.

As Sir Wilfred Greene MR of the English Court of Appeal put it in Saville Perfumery Ltd v June Perfect Ltd:[22]
Now the question of resemblance and the likelihood of deception are to be considered by reference not only to the whole mark, but also to its distinguishing or essential features, if any.
[22] (1939) 1B IPR 440 at 453; (1941) 58 RPC 147 at 162.
More recently, the Full Federal Court (Lindgren, Emmett and Finkelstein JJ) in Starr Partners Pty Ltd v Dev Prem Pty Ltd (“Starr Partners”) further explained:[23]
[22] The first step in the analysis is to identify the impression produced by the registered mark considered in its entirety. Similarity is not based on only part of the registered mark. On the other hand, when one decides upon the impression produced by that mark it is not improper to give more or less weight to particular features of it, provided the ultimate conclusion is based on a consideration of the mark in its entirety. This approach does no more than recognise that one word or feature of a mark can be more striking and memorable than another.
...
[26] Because the likelihood of deception or confusion must be assessed in the light of the imperfection of human recollection, where a trade mark includes both common and uncommon words, the uncommon words … will be the more memorable, and therefore significant for infringement purposes, than the common words...
[23] (2007) 71 IPR 459 at [22] and [26].
To my mind the element UNIVERSAL is an essential or distinguishing feature of the Opponent’s Mark. On the face of it the combined elements UNIVERSAL HEALTH dominate the mark as a whole, with the tagline “CREATING LASTING IMPROVEMENTS” rendered in very much smaller point size and unlikely in my view to make a significant impression on, or be significantly recalled by, many consumers. The word “health”, for its part, is on the face of it entirely descriptive in the context of the goods and services covered by the registration. Nor in my view does the fact that the mark also features a disc containing a device element, which forms the letter “V” of the word “universal” of essentially proportional size to the surrounding letters, detract significantly from the prominence of the element UNIVERSAL in the mark as a whole. In this regard the Opponent’s Mark is not on the face of it analogous to the composite word and device mark being considered by the Court in the Crazy Ron’s case referred to by Mr Skelly, in which, as the Court noted, “The words themselves are not especially prominent and indeed are subsidiary to the fantasy character, which occupies the dominant position in the overall image.”
Further, in the context of the medicines and health care products in Class 5 and the health care services in Class 42 covered by the Opponent’s registration, not only the element HEALTH, but also the words of the mark’s tagline are essentially descriptive. They are, as the Court in Starr Partners might put it, “the common words”. As discussed earlier in connection with the Opponent’s s 41 ground, the element UNIVERSAL by contrast is not directly descriptive of the parties’ goods or services. Indeed it is the sole “uncommon” word in the Opponent’s Mark and would on the face of it be all the more memorable as a consequence.
I do not believe the existence of the two Class 5 registrations and the accepted application featuring the element UNIVERSAL owned by the Applicant and other parties mentioned by Mr Skelly is particularly relevant to this conclusion. They do not indicate, for example, that the element UNIVERSAL has become common to the trade for relevant goods. Indeed, there is no evidence before me that relevant consumers know of these other marks or, indeed, of the extent of use, if any, that the marks concerned might have enjoyed.[24]
[24] The sole earlier registration, 736858 UNIVERSAL INFORMER LIBRARY, covers very different Class 5 goods in any event, being “Collection of chemical compounds for use in research in the life sciences field”.
As mentioned, Mr Skelly argued that because the intended market for the Applicant’s Goods was made up of people interested in supplements to build body mass, the strongman device in the Opposed Mark “takes on added importance and is a significant memory cue”. Be that as it may, it would presumably not be so significant for the notional consumer who only knew of the Opponent’s Mark and who had no specific interest in building body mass. As far as those people are concerned, I think Dr Bablis is quite possibly correct to say that the fact that both parties’ marks also feature, as Dr Bablis puts it, “an image of a standing figure with outstretched hands”, may be a factor tending to increase the likelihood of deception or confusion, particularly when a consumer’s imperfect recollection is taken into account. This is despite the obvious differences between the figures themselves which would be apparent if the consumer had the opportunity to inspect the parties’ goods side by side.
Nor is the actual similarity between the parties’ devices limited to them both being “an image of a standing figure with outstretched hands”. In both cases the device is essentially the same size relative to the element UNIVERSAL featured in the parties’ respective marks and also forms a letter of that element. Accordingly, relevant consumers may well be caused to wonder whether the Opposed Mark was perhaps an “updated” version of the Opponent’s Mark, or possibly an alternative version specifically used with the Opponent’s (putative) sports and body building supplements.
I also agree with the submission in Bablis 4 quoted earlier that the element UNIVERSAL would most likely also be perceived by relevant consumers as “the main feature” of the Opposed Mark. Consumers wishing to refer to, or enquire about, the Applicant’s Goods orally or in writing or via an Internet search engine would on the face of it need to use the word “universal”, whether or not they also referred to the only other element in the Opposed Mark, the strongman device. The device itself, forming as it does the letter “I” of the element UNIVERSAL and being no larger than any of its other letters, is at most of secondary significance in my view.
In summary, bearing in mind the prominence of the element UNIVERSAL in both parties’ marks I think that the descriptive nature, and/or the relative lack of prominence, of the other elements in the parties’ marks make it less likely they would obviate the risk of deception and confusion as between the marks as wholes. Despite the differences between the parties’ marks I accordingly consider there is a real likelihood that a significant number of ordinary consumers would wonder, or be left in doubt about, whether the parties’ similar Class 5 goods come from the same source.
My finding, then, is that the Opposed Mark is deceptively similar to the Opponent’s Mark. As already indicated the opposed application covers similar goods to those covered by the Opponent’s registration 839349. The Opponent has thus in principle established its ground of opposition based on s 44(1) of the Act.
Section 44(3)(a) and Honest Concurrent Use
Section 44(1) is however subject to s 44(3)(a), which goes on to provide that, “the Registrar may accept the application…subject to any conditions or limitations that the Registrar thinks fit to impose” if “satisfied that there has been honest concurrent use of the 2 trade marks”. The opposed application was in fact originally accepted for registration relying on this provision. In the event that I were to find against the Applicant under s 44(1), Mr Skelly submitted it was indeed appropriate to apply s 44(3)(a) in the Applicant’s favour in this case.
The Examiner’s favourable assessment under s 44(3)(a) was based on evidence of the Applicant’s use of the Opposed Mark in Australia for Class 5 goods since 2003 contained in Rockoff 2. Michael Rockoff has been the Applicant’s Vice President since 1991 and in Rockoff 2 he says, inter alia, that:
• the Applicant has sold “sports and and body building supplements under the UNIVERSAL brand since 1977 and its supplements are distributed worldwide”. (Mr Rockoff discloses substantial annual worldwide sales figures, estimating the Applicant has “approximately [a significant percentage is given] of the global market” for these goods.)
• the Applicant has since 22 July 1998 owned the domain name < from which it operates a website via which the Applicant’s Goods are promoted and sold.
• the Applicant has continuously offered for sale and sold the Applicant’s Goods in Australia through its exclusive distributor EMI Nutrition Pty Ltd (“EMI”) since 2003.
• EMI supplies the goods to, inter alia, “gyms, health stores, pharmacies, personal trainers and online retailers”. (Mr Rockoff provides the names of a selection of some 29 businesses across every State and Territory who purchase the Applicant’s Goods through EMI and provides wholesale sales figures for each of the financial years from 2004/05 up to the making of Rockoff 2 in 2012.)
• EMI advertises and promotes the Applicant’s Goods “by means of (1) advertisements placed in magazines including Iron Man, Mass Attack, Mixed Martial Arts, Flex and Muscle Magazine, (2) posters distributed to retailers of nutritional supplements, (3) sample sessions at retail store openings and various gyms, (4) samples distributed to retailers of nutritional supplements and (5) ancillary promotional merchandise such as t-shirts and booklets.” (Mr Rockoff exhibits examples of EMI’s activities in this regard and pages downloaded from EMI’s website. He also provides an estimate of EMI’s annual expenditure on advertising and promoting the Applicant’s Goods in Australia.)
• the Opposed Mark “is ranked in the top ten nutritional supplement brands distributed in Australia”.
Mr Rockoff concludes Rockoff 2 saying:
At the time of first supplying [EMI] with the [Applicant’s] Goods for sale in Australia under the [Opposed] Mark, I believe [the Applicant] was not aware of the [Opponent’s] Mark. Furthermore, over the years [the Applicant] has sold [the Applicant’s] Goods in Australia, I believe [the Applicant] and [EMI] have not been made aware of any instances of confusion with the [Opposed] Mark. It is my understanding that the [Opponent] operates the website at < and is interested in products in the general wellness, chiropractic and natural medicines fields. As far as I am aware it does not provide nutritional or other supplements directed to fitness and body building and its products circulate in different trade channels to [the Applicant’s] Goods.
Nevertheless Dr Bablis, who as mentioned earlier had obtained a copy of Rockoff 2 from IP Australia prior to the Opponent preparing its evidence in support of the present opposition, disputes the appropriateness of applying s 44(3)(a) at some length in Bablis 4. It is significant to note, however, that in accordance with standard procedure under the Freedom of Information Act 1982 Dr Bablis’ copy of Rockoff 2 had all sales and advertising figures and the names of EMI’s many Australia-wide (commercial) customers redacted. Accordingly, many of the matters raised in Bablis 4 are unsustainable, in my estimation, once that redacted information is taken into account. I note too that following filing of Bablis 4 the Applicant filed its evidence in answer, which included unredacted copies of both Rockoff 1 and Rockoff 2, and that the Opponent has opted to take no part in proceedings since that time. Moreover much of the Applicant’s evidence in answer (Skelly 1, Skelly 2 and Furlong in particular) provides further significant details of relevant use of the Opposed Mark pre-dating the Priority Date and which has obviously not been challenged by the Opponent. It is also germane again to note that since the filing of Bablis 4 the specification of the opposed application has been narrowed.
That said, Dr Bablis refers to the guidelines contained in Part 28 of IP Australia’s Office Manual of Practice and Procedure, which are intended to assist trade marks examiners and others assess whether application of s 44(3)(a) is appropriate. Those guidelines indicate that five main criteria should be considered, being:
(1) The degree of confusion likely between the trade marks in question;
(2) Whether instances of confusion have in fact occurred;
(3) The honesty or otherwise of the concurrent use;
(4) The extent of use in duration, area and volume; and
(5) The relative inconvenience that would be caused to the respective parties if the applicant's mark should be registered.
Dr Bablis only specifically addresses the fourth criterion, noting that the Part 28 guidelines suggest “as sufficient concurrent use…a term of 10 years together with an extensive turnover” and that only use of the Opposed Mark before the Priority Date should be relevant in this regard. In fact the relevant Part mentions a wide range of judicial and Office decisions where considerably less than 10 years of concurrent use was considered sufficient, particularly in cases such as the current one where there is no evidence of any actual confusion. Dr Bablis’ submissions notwithstanding, I am satisfied the six years or so of concurrent use before the Priority Date, and the volume of sales evidenced in Rockoff 2 (unredacted) without any confusion apparently resulting, are sufficient to invoke s 44(3)(a) in this case.
As regards the first criterion mentioned in Part 28, Dr Bablis does stress that, contrary to Mr Rockoff’s claim, “There is no doubt in my mind that the goods of interest for both parties are the same”. However this statement was made before the Applicant restricted the specification of the opposed application with the qualifying words, “Sports and body building supplements, namely…”[25] As mentioned, Mr Skelly in any event agreed that the wide coverage of the Opponent’s registration 839349, extending as it does to “health care products” generally, would in principle embrace similar goods to the Applicant’s Goods. I confirm having taken this into account in upholding the Opponent’s s 44(1) ground. Nevertheless, I agree in the main with Mr Skelly’s submissions under s 44 discussed above suggesting that the likelihood of actual deception or confusion amongst relevant consumers of the parties’ respective goods would be relatively low in this case.
[25] See footnote 1.
Dr Bablis did not question the honesty or otherwise of the Applicant’s use of the Opposed Mark and I confirm that I am satisfied based on the testimony of Mr Rockoff that the mark was indeed honestly adopted and used in Australia.
Finally, the relative inconvenience to the parties if registration of the Opposed Mark were refused under s 44 also suggests it is appropriate in this case to invoke s 44(3)(a). In this regard I am satisfied from the evidence that the Applicant has a global business trading under the Opposed Mark and that it would be unreasonably onerous for it now to be forced to rebrand its products for the Australian market. By contrast, the relative inconvenience to the Opponent would on the face of it be slight, particularly given Dr Bablis does not indicate in Bablis 4, (declared in 2013, some ten years after use of the Opposed Mark commenced in Australia), that he was then aware of any instances of actual confusion.
I mention that I have reached this conclusion based on Rockoff 2 alone and notwithstanding the matters raised by Dr Bablis in Bablis 4. It is accordingly not necessary to discuss in detail the further evidence of use of the Opposed Mark in Australia contained in Skelly 1, Skelly 2 and Furlong, which was filed by the Opponent in answer to Bablis 4. I do highlight in passing, nevertheless, that Ian Duncan Furlong is the “Operations Manager” of the Applicant’s local distributor, EMI, and that Mr Furlong provides significant further corroborating evidence of the Applicant’s activities in Australia as described above in Rockoff 2.
To conclude, while the Opponent has established its ground based on s 44(1) of the Act, I am satisfied that it is appropriate in this case to apply s 44(3)(a) in the Applicant’s favour, with any registration to mature from the opposed application to be endorsed accordingly.
Section58
The ground based on s 58 is indicated in the Notice as follows:
The Applicant is not the owner of the [Opposed Mark].
Section 58 itself is reproduced below:
Applicant not owner of trade mark
58. 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.
Under the heading “Section 58” in Bablis 4, Dr Bablis says:
50. The Opponent has used the Opponent’s Mark continuously since 2003.
51. The Opponent is the owner of the Opponent’s Mark in Australia.
52. The [Opposed Mark] is deceptively similar to the Opponent’s Mark.
53. The [Opposed Mark] as claimed by the Applicant is for the same or similar goods as those provided by the Opponent.
54. As far as I am aware, the Applicant has no reputation in Australia that predates the use of the Opponent’s Mark by the Opponent. As such, I believe that the Applicant is not the owner of the [Opposed Mark] in Australia and therefore the registration should be refused pursuant to section 58 of the [Act].
Once again, the reasons offered for invoking s 58 are misconceived on the face of it. A single use of a trade mark, or indeed merely filing an application to register an unused trade mark, is sufficient to establish on a prima facie basis that one is the “owner” of that mark for particular goods or services. Thus, no reputation in a mark is required (indeed, the mark may be unused) in order to make a valid claim to its ownership. While the word “owner” is not actually defined in the Act, there are numerous decisions where courts have considered its meaning at common law. It is well established that in the absence of fraud the owner of a trade mark in Australia for particular goods or services is taken to be the first person[26] to use it in the course of trade in Australia in relation to those goods or services,[27] or the first person to apply to register it for those goods or services, whichever is the earlier.[28]
[26] Which s 6 of the Act indicates “includes a body of persons, whether incorporated or not”.
[27] Or in relation to goods or services considered to be “the same kind of thing” -see Re Hicks’ Trade Mark (1897) 22 VLR 636.
[28] Seven Up Co v OT Ltd (1947) 75 CLR 203.
To establish its section 58 ground, then, the Opponent would need to show that a party other than the Applicant first used the Opposed Mark itself, or a mark substantially identical to the Opposed Mark, in Australia, for goods adjudged to be “the same kind of thing” as the Applicant’s Goods. The use must have taken place before the Priority Date, or before the Applicant’s first use of the Opposed Mark for relevant goods, whichever is the earlier.[29]
[29] Re Hicks’ Trade Mark (1897) 22 VLR 636; Carnival Cruise Lines v Sitmar Cruises Ltd (1994) 31 IPR 375.
In the present case the Opponent’s submission is effectively that since it is the owner of the Opponent’s Mark, and since the Opposed Mark is “deceptively similar to” its mark and has not enjoyed earlier use, the Opponent, and not the Applicant, is the true owner of the Opposed Mark as far as the Applicant’s Goods are concerned. Contrary to the Opponent’s apparent belief, however, deceptive similarity is not sufficient to enliven s 58. As mentioned, the Opponent would have to show that it (or some third party) had used a mark which was the same as the Opposed Mark, or at least one that was “substantially identical with the Opposed Mark, for relevant goods.
For the sake of completeness I confirm I do not consider the Opposed Mark is substantially identical with the Opponent’s Mark. As Mr Skelly mentioned in his submissions, the accepted starting point for assessing substantial identity is generally found in the words of Windeyer J in Shell, where his Honour said:[30]
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 feature of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.
[30] (1961) 109 CLR 407 at 414; (1963) 1B IPR 523 at 528.

The parties’ marks are set out side by side below:
Based on such a side by side comparison I am satisfied that “the total impression of resemblance or dissimilarity that emerges” is rather one of dissimilarity and this is why I conclude the parties’ marks are not substantially identical.
There is otherwise no evidence before me that a party other than the Applicant used, or applied to register, the Opposed Mark, or a trade mark substantially identical thereto, for any goods or services before the Priority Date, or at all. The Opponent’s s 58 ground is accordingly not established.
Section 60
The ground based on s 60 is indicated in the Notice as follows:
The use of the [Opposed Mark] will be likely to deceive or cause confusion contrary to sections 43 and 60 of the [Act].
Section 60 of the Act itself is reproduced below:
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.
Under the heading “Section 60” in Bablis 4, Dr Bablis says:
55. The [Opposed Mark] is deceptively similar to the Opponent’s Mark used by the Opponent.
56. The Applicant and Opponent provide similar or closely related goods.
57. The Opponent has acquired a strong reputation in the healthcare and natural medicines field and within the public marketplace as being the owner of the Opponent’s Mark.
58. I understand that the date at which such deception or confusion should be considered is [the Priority Date],
59. The Opponent’s reputation in the Opponent’s Mark pre-dates [the Priority Date], being 16 March 2009. The reputation is demonstrated in respect of the field of endeavour in which both the Applicant and Opponent work, that is, within the health care and natural medicines field.
60. Both the [Opposed Mark] and the Opponent’s Mark will be encountered by customers in the same trade channels.
61. I believe that there is a real risk that if [the Opposed Mark] is registered and used by the Applicant, a number of persons will be deceived or confused as to whether the source of the Applicant’s goods, and the Opponent’s goods, are the same or that there is some connection between the Applicant and the Opponent.
62. On this basis I believe that registration of the [Opposed Mark] should be refused under s 60 of the [Act].
As with s 44, what needs to be considered in the case of s 60 is the fair notional use the Applicant might make of the Opposed Mark in relation to the particular “sports and body building supplements” covered by the opposed application. The issue is whether such use would be likely to deceive or cause confusion amongst, as it is often put, a “significant” or “substantial” number of potential consumers of the relevant Class 5 goods in light of the reputation of the Opponent’s Mark as at the Priority Date. As Heerey J noted in Le Cordon Bleu B.V. v Cordon Bleu International Ltee:[31]
…the reputation contended for by the [opponent] would have to be one of which a significant or substantial number of persons were aware: ConAgra at FCR 346.[32] 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.
[31] (2000) 50 IPR 1 at [91]. His Honour’s observation was in the context of s 28(a) of the Trade Mark Act 1955 which, in the circumstances of that case, also required reputation to be established.
[32] ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 23 IPR 193.
In the present case Mr Rockoff says that the Applicant’s Goods “have a strong following in the body building and fitness training industry” and I agree with Mr Skelly that the predominant market for sports and body building supplements is likely to be a relatively small subset of the Australian population generally. I think Mr Skelly is right, too, that the goods actually sold under the Opponent’s Mark are on the evidence essentially directed to a quite different target market.
As far as assessing the reputation of the Opponent’s Mark amongst relevant consumers is concerned, as Mr Skelly noted, Kenny J said the following in McCormick & Co Inc v McCormick:[33]
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, eg, Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd(1999) 47 IPR 198; Marks & Spencer Plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson(1998) 42 IPR 473; and RS Components Ltd v Holophane Corp(1999) 46 IPR 451. This court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, among other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd(2001) 51 IPR 1, Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd(1997) 38 IPR 495 (Nettlefold), in which Heerey J relied upon the public visibility of the applicant's marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.
[33] (2002) 51 IPR 102 at [86].
Kenny J also quoted with approval the words of Hearing Officer Thompson in Hugo Boss AG v Jackson International Trading Company Kurt D Bruhl GmbH & Co KG:[34]
As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the 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 owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, “contra deals” and so forth.
[34] (1999) 47 IPR 423 at 436.
In the present case the Opponent relies on the same evidence of use it relied on in the Removal Application, being the information contained in Bablis 1, 2 and 3, to establish the Opponent’s Mark had the requisite reputation. The Removal Application was filed on 23 September 2010 and these declarations are accordingly principally concerned with establishing that the Opponent’s Mark was in use for the goods covered by registration 839349 during the three year period ending on 23 August 2010. That said, the most relevant information from Bablis 1 pertaining to use of the Opponent’s Mark before the 16 March 2009 priority date of the opposed application may be summarized as follows:
• “The [Opponent’s] Mark was assigned to the Opponent by [another company] on 21 November 2003 and has been used consistently by the Opponent since that time in relation to a range of services and products within the Chiropractic and Natural Medicines fields.”
• “The Opponent has used the [Opponent’s] Mark on its range of homeopathic medicines, herbal medicines and health care products (“Opponent’s Products”) [which it “creates, manufactures and distributes” itself] since 2003.”
• “The homeopathic medicines…include (i) Insomnia; (ii) Livertone; (iii) Flu tonic; (iv) Rescue Tonic; and (v) Joint/Pain Tonic.”
• “The herbal medicines…include (i) Cleansing Tonic; (ii) Digestive Tonic; (iii) Galactogenic Mix; (iv) Adrenal Mix; (v) Brain Tonic; (vi) Immune Tonic; and (vii) Kidney StoneFlush”.
• “The health care products…include (i) Positive Purpose; (ii) Safety; (iii) Forgive & Let Go, (iv) Strength & Purpose, Expression & Freewill, (vi) Adrenal Formula; (vii) Trust & hope; (viii) Shock & Trauma; and (ix) Self Esteem.”
• “As a registered medical herbalist, homeopath and naturopath, [Dr Bablis] also create[s] [the Opponent’s Products] which are specific for the needs of individual patients. These products are sold to individual patients using the [Opponent’s] Mark.”
• “The Opponent operates two health centres in Sydney, New South Wales, and distributes products throughout Australia.”
• “The Opponent’s Products are sold through the Opponent’s health centres. The Opponent currently has over 34,000 patients on its database.”
• “Advertising and exposure of the [Opponent’s] Mark has been undertaken by the Opponent in relation to the Opponent’s Products throughout Australia.”
In relation to advertising in particular, Dr Bablis says in Bablis 1:
• “The Opponent produces brochures and other advertising material that are distributed to customers and suppliers of the Opponent.”
• “The Opponent’s Products include labels which clearly incorporate the [Opponent’s] Mark.” “The Opponent estimates that over 35,000 labels were produced during the period of three years ending [23 August 2010] at the cost of $23,450.”
• “A majority of purchase orders and stock receipts received by the Opponent for the Opponent’s Products feature the [Opponent’s] Mark or refer to the [Opponent’s] Mark.”
• “The Opponent uses the [Opponent’s] Mark to advertise and promote a selection of the Opponent’s Products through its website at >
Examples of the Opponent’s brochures, labels, purchase orders and receipts and copies of pages downloaded from the Opponent’s website were exhibited with Bablis 1.
Dr Bablis also provides (on a confidential basis) “approximate gross income figures for each financial year between 2004 and 2010 in relation to the Opponent’s Products sold under the [Opponent’s] Mark”.
Bablis 2, concerned as it is with establishing use per se of the Opponent’s Mark during the alleged non-use period, does not shed much further light on the issue of the mark’s reputation in Australia as at the Priority Date. Dr Bablis does exhibit “true copies of statutory declarations signed by 200 of the Opponent’s current [that is, as at 28 January 2011] patients who have purchased, and still continue to purchase, [g]oods [bearing the Opponent’s Mark] from the Opponent since 2001 [sic]”.[35] However, all of the 200 declarations are in identical format and simply state the minimum that might be required to defend the Removal Application for which they were prepared, namely:
I have been a patient of Universal Health International Pty Ltd since [year].[36] I have used and am currently using Universal Health homeopathic and herbal remedies.
[35] Presumably the year “2001” is a typographical error since the Opponent was not incorporated until 27 March 2003. Moreover, as Mr Skelly pointed out, there is no evidence of any use of the Opponent’s Mark by the Opponent’s predecessor in title prior to its assignment on 21 November 2003.
[36] I note in passing that many of the 200 declarants claim to have been a patient of the Opponent years before the Opponent’s incorporation in 2003, several nominating the years 1995 to 1999.
As regards the relevance of these 200 declarations to the current matter, I agree with Mr Skelly’s submission that they, “…are made by patients of the Opponent and cannot be relied upon to support any broader reputation.” Moreover they also suggest that even amongst the Opponent’s patients, it is the Opponent’s “homeopathic and herbal remedies”, rather than “sports and body building supplements” per se, which the patients particularly recall.
Bablis 3 was originally filed in reply to the Applicant’s evidence in answer in the Removal Application and principally seeks to counter the matters put in the Statutory Declaration of Craig Raymond Douglas made on 26 August 2011. As mentioned, the Douglas declaration has also been included in the Applicant’s evidence in the current proceedings as Exhibit GJS-1 to Skelly 1. Mr Douglas has been a private investigator for over 30 years and was instructed by the Applicant’s attorneys to try and establish the nature and extent of use of the Opponent’s Mark during the relevant three year period. Specifically, he was instructed to ascertain whether the Opponent’s Mark had been used “in relation to health care products, other than homeopathic medicines and herbal medicines, including particularly protein powders and related goods such as general vitamin and mineral products.” Based on his own internet and telephone enquiries and on the report of another investigator he had visit the Opponent’s business premises in Double Bay, Sydney, Mr Douglas concluded:
The investigations conducted by me and the investigative agent indicate to me that the business of [the Opponent] is concerned with treating people for health problems using treatment methods such as chiropractic and homeopathic remedies. The investigations conducted did not find any evidence of trade in a range of general health or fitness products, or any use of the [Opponent’s Mark] in relation to those goods.
Dr Bablis is very critical of Mr Douglas’ investigation and in particular the fact that his agent only spoke to “employees responsible for the reception area and customer services of the Opponent [whose information] may not be completely accurate, and in most cases will not give a complete picture as to the marketing and branding activities of the Opponent.” As he puts it:
…had Mr Douglas or the Agent spoken to myself, they would have been informed that the [Opponent’s] Mark has been used, and continues to be used, in relation to protein, vitamin, mineral and amino acids products of the Opponent including products for general health or fitness purposes.
He goes on in Bablis 3 to refer to a range of exhibited material which he says show use in relation to “products incorporating protein, vitamin, mineral and amino acid powders”. These include copies of the “labels applied by the Opponent to packaging for its (i) protein products; (ii) vitamin products; (iii) mineral products; and (iv) amino acid products”, with Dr Bablis estimating that “over 35,000 of [these] labels were produced during [the three year non-use period].” I note this is the same number mentioned in Bablis 1 that were apparently produced during the non-use period for the “Opponent’s Products” generally.
I concur, in the main, with Mr Skelly’s principal criticisms of the Opponent’s evidence going to the reputation of the Opponent’s Mark. As he pointed out, there is no information before me of the amounts spent in connection with advertising and promoting the Opponent’s goods. Indeed, the only actual advertising and promotional activities mentioned by Dr Bablis was via brochures and via the Opponent’s website. However, when, how, to whom and in what quantities the brochures may have been distributed is not stated.[37] What is more, the brochures exhibited with Bablis 4, while bearing the Opponent’s Mark, appear to relate only to the Opponent’s chiropractic and other natural therapy services. One brochure that does at least allude to goods, although not in any specific manner, does so under the headings “Medical Herbalism” and “Naturopathy” and in the context of general explanations of what these terms mean. I do note in passing that one of the exhibited brochures contains a few paragraphs under the heading “Sports Medicine” which include the sentence, “Sports Medicine draws on many modalities including clinical medicine, orthopaedics, exercise physiology, biomechanics, kinesiology, physical therapy and sports nutrition, to ensure the best results in the diagnosis and management of problems related to sports and exercise.” However, it is certainly not apparent to me, on reading any of the brochures in question, that the Opponent is promoting, or offering for sale, any specific goods (whether goods in the nature of “sports and body building supplements” or at all) under the Opponent’s Mark.
[37] The same criticism can be made of a fridge magnet, business card, paper bag and items of stationery all bearing the Opponent’s Mark and included without specific comment in Exhibit PB 3 to Bablis 4.
As to the Opponent’s website, Dr Bablis does not say how long this may have operated, nor mention the amount of traffic it actually received. The website too appears to promote what are referred to as the “Universal Health Centres” (of which, as the Opponent’s evidence indicates, there are two, both in Sydney), and, again, it is not apparent to me from the website that the Opponent is promoting, or offering for sale, any specific goods under the Opponent’s Mark.
Moreover I think that Mr Skelly is right to highlight another deficiency apparent from the Opponent’s evidence, namely that what reputation the Opponent’s Mark might have is unlikely on the evidence to have spread significantly beyond the Sydney region in any event. As he put it in his written submissions:
…Dr Bablis also states that the Opponent distributes its products through[out] Australia, but there is no evidence to support this statement. Indeed, the purchase orders/invoices show sales to patients predominantly in the Sydney metropolitan area with isolated invoices to patients in the Gold Coast, Miami and Coorparoo in Queensland, St Kilda in Victoria, Sandy Bay in Tasmania and Swanbourne in Western Australia. Since the invoices to these interstate patients include charges for consultations, it can be inferred that such patients must have also presented to the Opponent’s business premises [in Sydney].
I would add that the exhibited purchase orders/invoices (being tax invoices), of which there are several hundred in evidence, all appear to post-date the Priority Date in any event. Be that as it may, they do indicate that it is not only patients outside NSW whose invoices include a consultation charge, as Mr Skelly highlights above, but that this is also the case for a large number of the Opponent’s Sydney based clientele. As a consequence, as Mr Skelly submitted:
The gross income figures [provided by Dr Bablis in Bablis 4] are expressed to relate to the products sold by the Opponent and commence from 2004. Given the invoices placed into evidence combine consultation services with products, it is unclear whether these figures also include amounts for the provision of services. The Opponent has not explained how these figures were calculated and how sales of products have been isolated from services.
I find I also agree with Mr Skelly’s concluding submissions on the extent of the reputation of the Opposed Mark established on the evidence before me:
There is a lack of any evidence which can be reliably used to infer that the reputation of the Opponent [sic][38] extends beyond its immediate patients which are predominantly from the Sydney region.
The Opponent’s business is directed to persons and treatments which are very different to those targeted by the Applicant.
The Opponent’s products are only made available through its business and invariably in addition to consultations [with] patients, whereas the Applicant’s supplements are sold through very different retail outlets and directed to a very different market.
[38] Presumably “Opponent’s Mark” was intended.
In summary, I am not satisfied that the Opponent’s Mark had sufficient reputation amongst actual or potential consumers of the Opposed Goods as at the Priority Date for the Opponent successfully to rely on s 60 of the Act. Even if I were so satisfied, I agree with Mr Skelly that any reputation the Opponent’s Mark might claim would be amongst a quite distinct segment of the market for relevant Class 5 goods than people likely to purchase sports and body building supplements per se. I thus could not be satisfied that deception or confusion was likely to ensue amongst a significant or substantial number of relevant consumers, particularly when the differences between the marks highlighted by Mr Skelly are also taken into account.

As I have already noted, the parties’ marks have coexisted in the marketplace since 2003 without any instances of confusion in fact claimed by the Opponent and this fact perhaps speaks most eloquently of all. To conclude, the Opponent has not established its ground of opposition under s 60.
Section 42(b)
I have left discussion of the s 42(b) ground until last since it largely reflects my above conclusion on the s 60 ground. The ground based on s 42(b) is indicated in the Notice as follows:
Use of the [Opposed Mark] would be contrary to law including but not limited to breaching provisions of the Copyright Act (1968).

100. Section 42(b) of the Act is reproduced below:
Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
(a) …
(b) its use would be contrary to law.

As Dr Bablis further explains at paragraphs 35 to 38 of Bablis 4:
35. As a consequence of the extent of use and exposure of the Opponent’s Mark by the Opponent, a substantial reputation has been acquired by the Opponent in the Opponent’s Marks [sic] throughout Australia. That reputation is evidenced by:
(i)        [sales of goods bearing the Opponent’s Mark]
(ii)       the extensive product range of the Opponent, all of which bears the        Opponent’s Mark…
(iii)      the extensive and prominent use of the Opponent’s Mark in labels           used on the products themselves…
(iv)     the manner in which the Opponent provides its products through its       health centres (which as at January 2012 had over 34,000 patients               on its database), which achieves a wide exposure to its target                market…
(v)      advertising material distributed to its customers and suppliers…
(vi)     use of the Opponent’s Mark on the Opponent’s website                I am informed by my solicitors and I believe that if any trader sought to use a mark very similar to the Opponent’s Mark for similar goods, as the Applicant has indicated by its application, that trader would be in breach of sections 18 and 29 of the Competition and Consumer Act 2010 (Cth) (“CCA”) and be liable for the tort of passing off.
37. As such, I believe that as a result of the Opponent’s reputation in the Opponent’s Mark, use of the [Opposed Mark] in Australia in connection with the goods claimed by the Applicant would be contrary to law.
38. On this basis I believe that registration of the [Opposed Mark] should be refused under Section 42(b) of the [Act].

102. I firstly note that the Trade Practices Act 1974 (“the TPA”), which was in force at the Priority Date, is on the face of it the relevant Federal law rather than the CCA. (Although containing essentially identical consumer protection provisions, the Competition and Consumer Act 2010, which replaced the TPA, only came into force as from 1 January 2011.) In this regard I note the words of Wilcox J in Time Warner Entertainment Co, LP v Stepsam Investments Pty Ltd:[39]
[39] (2004) 59 IPR 343 at [47].
I think that [Counsel] is correct to say that the application of s 42(b) of the Act should be considered as at the priority date, although looking forward to prospective conduct after registration was effected.

That said, ss 18 and 29 of the CCA mentioned by Dr Bablis essentially correspond to ss 52 and 53 of the TPA. Insofar as relevant to the present matter, accordingly, ss 52 and 53 of the TPA are reproduced below:
s 52 Misleading or deceptive conduct
(1) A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
s 53 False or misleading representations
A corporation shall not, in trade or commerce, in connexion with the supply or possible supply of goods or services or in connexion with the promotion by any means of the supply or use of goods or services:
(a) falsely represent that goods are of a particular standard, quality, grade, composition, style or model or have a particular history or particular previous use;
(c) represent that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have;
(d) represent that the corporation has a sponsorship, approval or affiliation it does not have.

104. I am not satisfied that use of the Opposed Mark for the Applicant’s Goods would amount to any of the offending conduct alleged by the Opponent, essentially for the same reasons discussed above in connection with s 60, that is in light of the actual nature and extent of the reputation of the Opponent’s marks, the differences between the parties’ marks themselves and the likely different cohort of relevant consumers.

I note too that, unlike s 60 of the Act, ss 52 and 53 of the TPA and the tort of passing off are not concerned with behavior that “would be likely to deceive or cause confusion”. The relevant provisions of the TPA require a likelihood that Australian consumers be misled or deceived as to the true origin of the Applicant’s Goods or their supposed connection to the Opponent, rather than mere confusion or simply being caused to wonder as is the case with s 60 of the Act. As for passing off, this has been described as “an action concerned with misrepresentation by which the goodwill of the plaintiff’s business is deflected to the use of the defendant with consequent damage (or a likelihood thereof) to that business.”[40]
[40] Shanahan’s Australian Law of Trade Marks and Passing Off, Lawbook Co., 4^th ed, 2008 at [95.1005].

106. There are several decided cases confirming that more is required to establish a likelihood of misleading or deceptive conduct (or, by extension, conduct amounting to the making of false representations or, indeed, passing off) than is the case with trade marks likely to deceive or cause confusion under s 60. In Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd,[41] by way of example, Gibbs CJ noted with respect to s 52 of the TPA:
[41] (1982) 1A IPR 684 at 688.
In McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd (1980) 33 ALR 394 it was rightly held by Smithers J and by Fisher J that to prove a breach of s 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; 1A IPR 465, a decision on the Trade Marks Act 1905 (Cth) as amended, is distinguishable.

107. I accordingly find that the Opponent has not established its ground under section 42(b) of the Act.
Decision
108. Section 55(1) of the Act relevantly provides that, unless the proceedings are discontinued or dismissed:
…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.

109. I have found the Opponent has not established any of the grounds listed in the Notice save for that under s 44(1) of the Act. However I have found that the Applicant has on the evidence made out a case for registration regardless pursuant to s 44(3)(a), with the parties’ respective marks having coexisted for some six years before the Priority Date without apparent difficulty. The trade mark application may accordingly proceed to registration one month from the date of this decision, with its currently recorded endorsement concerning s 44(3)(a) retained. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.
Costs
110. Both parties requested an award of costs in their favour. As the successful party, the Applicant is entitled to its costs and I accordingly award costs against the Opponent as per Schedule 8 of the Trade Marks Regulations 1995.
Michael Kirov
Hearing Officer
Trade Marks Hearings
15 July 2014

[2014] ATMO 64

15 July 2014

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