Unleash Health Pty Ltd

[2024] ATMO 21

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2359090 (9, 35, 41, 42) – unleash HEALTH (figurative) – in the name of Unleash Health Pty Ltd

Delegate:

Louise Tuohy

Representation:

Applicant: Andrew McRobert of Counsel instructed by Norton Rose Fulbright Australia

Decision:

2024 ATMO 21

Trade Marks Act 1995 (Cth) – s 33 proceedings - s 44 considered – trade mark deceptively similar to earlier registered trade marks – no evidence of use filed – applicant given opportunity to amend specification – specification amended – trade mark application accepted

Background

1.     This decision follows from an ex parte hearing at the request of Unleash Health Pty Ltd (‘Applicant’) pursuant to s 33 of the Trade Marks Act 1995 (Cth)[1] in relation to the following trade mark application:

[1]  Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).  

Application Number:  2359090               

Trade Mark:  (‘Trade Mark’)

Priority Date[2]:      24 May 2023

[2] Also known in this decision as the ‘Relevant Date’.

Specification:   Class 9:  Software; computer software; computer programs (downloadable); computer applications; software applications (apps); software applications for use with mobile devices; electronic publications (downloadable); video and audiovisual content provided via computer and communications networks; electronic and recorded multimedia publications; downloadable podcasts; downloadable video files; films bearing recorded educational material; audio recordings; electrical measuring apparatus; electronic control apparatus; electronic testing apparatus; electronic monitoring apparatus, other than for medical purposes; electronic communication apparatus; all the aforesaid goods relating to health, fitness, wellbeing, wellness, mindfulness, self-care and nutrition

Class 35:  Advertising and promotional services; marketing services; organisation and administration services in relation to the supply of benefits for customer loyalty and frequent buyer schemes; organisation and management of incentive programmes; consumer profiling for commercial or marketing purposes; sponsorship (promotion and marketing services); provision of information, advice and consultancy, including online, in relation to all the aforegoing services, all the aforesaid services relating to health, fitness, wellbeing, wellness, mindfulness, self-care and nutrition

Class 41:  Wellbeing services being health and fitness training; personal development training; health education; lifestyle counselling and consultancy (health and fitness training); dissemination of educational and entertainment material; electronic publication of information on a wide range of topics, including online and over a global computer network; online publication of electronic books and journals; publication of educational materials; provision of information, advice and consultancy, including online, in relation to all the aforegoing services, all the aforesaid services relating to health, fitness, wellbeing, wellness, mindfulness, self-care and nutrition

Class 42:  Software as a Service (SaaS); Platform as a Service (PaaS); online provision of web-based applications and software (non-downloadable); provision of information, advice and consultancy, including online, in relation to all the aforegoing services, all the aforesaid services relating to health, fitness, wellbeing, wellness, mindfulness, self-care and nutrition (‘Designated Goods and/or Services’)

2.     The application was examined as required by s 31 and a ground for rejection was raised under s 44. The first examination report issued on 27 July 2023 raised a classification formalities issue and cited the following trade marks as obstacles to acceptance of the Trade Mark[3]:

[3] See Annexure 1 for full details of these registrations.

Trade Mark Number	Cited Trade Mark	Class/es	Short Title
1267936	UNLEASHED	35, 38	936
1267937	UNLEASHED	9	937
1989894	9, 42	894
2266516	Unleashed	35, 41	516
2307924	9, 42	924
2355759	UNLEASHED	35	759

3.     In support of the application, the Applicant made submissions, arguing that: the cited trade marks were neither substantially identical or deceptively similar to the Trade Mark; the Applicant operates in a different industry to the owners of the earlier trade marks; and its goods and services were limited to health, fitness, wellbeing, wellness, mindfulness, self-care and nutrition. The examiner did not find the submissions persuasive and maintained the ground for rejection under s 44. On 1 September 2023 the Applicant responded to the classification formalities issue. On 5 September 2023 the examiner issued a third examination report maintaining the s 44 ground for rejection. The Applicant did not respond to the third examination report, however on 27 September 2023 the examiner issued a fourth examination report which informed the Applicant that cited trade mark 516 had lapsed from the Trade Marks Register (‘Register’) and was no longer a barrier to acceptance. The Applicant did not respond to the fourth examination report and instead exercised its right to be heard.

4.     The matter came before me, a delegate of the Registrar of Trade Marks on 7 December 2023 via video conference. Andrew McRobert of Counsel instructed by Norton Rose Fulbright Australia represented the Applicant, making verbal and written submissions on its behalf.  

5. The present matter is a hearing under s 33(4). As noted in MHFC Holdings Pty Ltd[4] the purpose of such a hearing is not a review of the examiner’s decision but rather a fresh consideration of the ground for rejection, in this case the ground for rejection under s 44. Any decision I shall make is not a review of the examiner’s approach and I am not bound in any way to follow it. Rather this proceeding will consider afresh the s 44 ground for rejection as it applies to the Trade Mark.

[4] [2016] ATMO 96, [9] (Hearing Officer Wilson).

Legislative Framework

6. Under s 33(1)(b), the Registrar must accept the application for registration of a trade mark unless satisfied there exists a ground under the Act for rejecting it. The Registrar must be satisfied on the balance of probabilities that a ground for rejection exists, otherwise a trade mark will be presumed registrable.[5] Regarding the present application, the only ground for rejection identified is under s 44. 

[5] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891, [16] (Sundberg J).

7.     Section 44 provides:

44  Identical etc. trade marks

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

(a)  the applicant’s trade mark is substantially identical with, or deceptively similar to:

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

(ii)  a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b)  the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

(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.

(4)  If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

(a)  beginning before the priority date for the registration of the other trade mark in respect of:

(i)  the similar goods or closely related services; or

(ii)  the similar services or closely related goods; and

(b)  ending on the priority date for the registration of the applicant’s trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Section 10 - Definition of deceptively similar

For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

8.     Subject to ss 44(3) and 44(4), an application for registration of a trade mark in respect of the Designated Goods and Services must be rejected if it is substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, in the name of a person other than the Applicant, and in respect of similar goods or services or closely related goods or services.

9.     Before proceeding I note that 936 was removed from the Register for non-use on 7 January 2024. As such the registrations forming the basis of the outstanding objections are 937, 894, 924 and 759.

10.   Each of 937, 894, 924 and 759 has a priority date earlier than the Relevant Date of the Application.

11.   The next consideration is whether the goods and/or services of 937, 894, 924 and 759 are similar, or closely related to the Designated Goods and Services.

Comparison of Goods and Services

12.   Section 14 provides:

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.

(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.

13.   The factors relevant to the consideration of whether goods are similar include the nature, purpose and use, respective trade channels and whether the ordinary consumer of the goods would regard the goods as being from a single source.[6]

[6] Re Jellenik’s Application [1946] RPC 59 (Romer J).

14.    In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd the Full Court set out the principles to be applied in determining the scope of the phrase ‘services of the same description’:

The starting point in determining the scope of the phrase “services of the same description as that of [the registered services]” in s 120(2)(c) is the statement of principle in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 606 by Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ (notwithstanding that the question involved consideration of whether goods were goods of the same description), in these terms:

There may be many matters to be considered apart from the inherent character of the goods [or services] in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J. in In re Jellinek’s Application.  Romer J. thought it necessary to look beyond the nature of the goods [or services] in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question where bought and sold.  Shortly after the decision in Jellinek’s Case the Assistant‑Comptroller elaborated on the observations Romer J. in the following manner:  “In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods [or services], their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade.  In the case of Jellinek’s Application, Romer J. classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold.  No single consideration is conclusive in itself, and it has further been emphasised that the classifications contained in the schedules to the Trade Mark Rules are not a decisive criterion as to whether or not two sets of goods are ‘of the same description’”.[7] 

[7] [2017] FCAFC 56, [333] (Greenwood, Besanko and Katzmann JJ) (‘Accor’).

15.   The Full Court went on to describe the principles in the following terms:

As to whether particular impugned services might properly be understood as services of the same description as services for which a trade mark is registered, the features to be considered are likely to include these considerations:

(1)        The inherent character of each of the services for which the trade mark is registered.  That may emerge as a function of language but it is likely to be the subject of evidence:  for example, what does “an hotelier” actually do?  What precisely is involved in providing “property management services”?

(2)        To whom are the services offered?

(3)        How are they provided?

(4)        How are they used?

(5)        What is their purpose?

(6)        Are they bundled together with other services?

(7)        Are they differentiated by the functional level at which they are provided:  wholesale or retail?

(8)         Where do they originate?

(9)         What is the method of their communication to the relevant target audience:  is it predominantly by electronic means, domain names, websites, Twitter, Facebook or other means such as other trade brochures and journals?

(10)        How closely contestable are the services in substance:  are they in the same market or trade?

(11)       How might consumers of the services perceive the services:  see, for example, E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2009) 175 FCR 386, per Moore, Edmonds and Gilmour JJ at [71]‑[73].[8]

[8] Accor ibid [339].

16.   Whether goods are closely related to services (or vice versa) involves different considerations. In the Registrar of Trade Marks v Woolworths French J made the following observations:

The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related”… it is a term of wider import than “similar”…[9]

[9] [1999] FCA 1020, [37].

17.   I will compare the Designated Goods and Services with the goods and services of 937, 894, 924 and 759 each in turn.

937

18.   The Designated Goods in class 9 for software; computer software; computer programs (downloadable); computer applications; software applications (apps); software applications for use with mobile devices; all the aforesaid goods relating to health, fitness, wellbeing, wellness, mindfulness, self-care and nutrition are similar to the goods computer software, none being or relating to video games, computer games or game programs of any kind covered by 937 in class 9. Even though the computer software covered by 937 is limited, it only excludes video games, computer games or game programs of any kind and is broad enough to include the Applicant’s claims.

19.   The Designated Goods in class 9 for electronic communication apparatus; the aforesaid goods relating to health, fitness, wellbeing, wellness, mindfulness, self-care and nutrition are similar to the goods telecommunications and communications equipment, apparatus and systems, none being or relating to video games, computer games or game programs of any kind, covered by 937 in class 9.

20.   The Designed Goods in class 9 for electrical measuring apparatus; electronic control apparatus; electronic testing apparatus; electronic monitoring apparatus, other than for medical purposes all the aforesaid goods relating to health, fitness, wellbeing, wellness, mindfulness, self-care and nutrition are similar to the goods apparatus which include integrated circuits, magnetic strips and memory chips, none being or relating to video games, computer games or game programs of any kind covered by 937 in class 9. The goods covered by 937 would include electronic apparatus having an integrated circuit which is basically anything with a microprocessor and many electronics include measuring, control, testing and monitoring functions.  

21.   The Designated Services in class 42 for software as a service (SaaS); platform as a Service (PaaS); online provision of web-based applications and software (non-downloadable); provision of information, advice and consultancy, including online, in relation to all the aforegoing services, all the aforesaid services relating to health, fitness, wellbeing, wellness, mindfulness, self-care and nutrition are closely related to computer software not being or relating to video games, computer games or game programs of any kind covered by 937 in class 9. The Designated Services are intrinsically related to software as a good.  

22.   None of the remaining Designated Goods and Services are similar or closely related to the 937 goods in class 9.

894

23.   With regard to the Designated Goods in class 9 for software; computer software; computer programs (downloadable); computer applications; software applications (apps); software applications for use with mobile devices; all the aforesaid goods relating to health, fitness, wellbeing, wellness, mindfulness, self-care and nutrition, I consider these goods to be closely related to the services providing cloud-based software as a service (SAAS) services featuring software for inventory management in class 42 covered by 894. The 894 services are intrinsically related to software as a good, and although these services feature software for inventory management, these services are not limited to inventory management and broad enough to include the Designated Goods for software. However, I do not consider the Designated Goods in class 9 for software are similar to the software goods in class 9 covered by 894. 894 covers pieces of software which are limited in scope to inventory management and developed for that distinct purpose and market.

24.   The Designated Services in class 42 for software as a service (SaaS); platform as a Service (PaaS); online provision of web-based applications and software (non-downloadable); provision of information, advice and consultancy, including online, in relation to all the aforegoing services, all the aforesaid services relating to health, fitness, wellbeing, wellness, mindfulness, self-care and nutrition are similar to the services providing cloud-based software as a service (SAAS) services featuring software for inventory management in class 42 covered by 894.

25.   None of the remaining Designated Goods and Services are similar or closely related to the 894 goods in class 9 or services in class 42.

924

26.   The Designated Goods in class 9 for software; computer software; computer programs (downloadable); computer applications; software applications (apps); software applications for use with mobile devices; all the aforesaid goods relating to health, fitness, wellbeing, wellness, mindfulness, self-care and nutrition are similar to the application software; computer software (programs) in class 9 covered by 924. The software goods covered by 924 are not limited and broad enough to include software/applications relating to health, fitness, wellbeing, wellness, mindfulness, self-care and nutrition.

27.   The Designated Goods in class 9 for software; computer software; computer programs (downloadable); computer applications; software applications (apps); software applications for use with mobile devices; all the aforesaid goods relating to health, fitness, wellbeing, wellness, mindfulness, self-care and nutrition are closely related to advisory services relating to computer software covered by 924 in class 42. The 924 services are intrinsically related to software as a good.

28.   With regard to the Designated Services in class 42 for the provision of information, advice and consultancy, including online, in relation to [Software as a Service (SaaS), Platform as a Service (PaaS), online provision of web-based applications and software (non-downloadable)], all the aforesaid relating to health, fitness, wellbeing, wellness, mindfulness, self-care and nutrition, these services are similar to 924’s advisory services relating to computer software.

29.   None of the remaining Designated Goods and Services are similar or closely related to the 924 goods in class 9 or services in class 42.

759

30.   The Designated Services in class 35 for organisation and management of incentive programmes; and the provision of consultancy, including online in relation to [organisation and management of inventive programs], the aforesaid service relating to health, fitness, wellbeing, wellness, mindfulness, self-care and nutrition are similar to consultancy services for business management services covered by 759. The Applicant’s services involve the business management of incentive programs and the 759 services are broad enough to include these business management consultancy services specifically in relation incentive programs in relation to health, fitness, wellbeing, wellness, mindfulness, self-care and nutrition.

31.   None of the remaining Designated Goods and Services are similar or closely related to the 759 services in class 35.

32.   I now turn to consider whether any of the trade marks are substantially identical or deceptively similar.

Substantially identical and/or deceptively similar

1. When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’) Windeyer J said:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[10]

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

   34.   For the purposes of comparison, I have set out the respective trade marks below:

Short Title	Cited Trade Marks	Trade Mark
937	UNLEASHED
894
924
759	UNLEASHED

35.   On a side-by-side comparison there are clear differences between the respective trade marks. The 937 and 759 trade marks consist of the plain word UNLEASHED solus, 894 consists of a box device beside the word UNLEASHED, and 924 contains the word UNLEASH in stylised script. In comparison the Trade Mark consists of the word UNLEASH with a vertical arrow extending from the letter U and the word HEALTH underneath. For these reasons I find that none of 937, 894, 924 and 759 are substantially identical with the Trade Mark. The total impression emerging from a side-by-side comparison is not one of similarity.

1. The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell:

   On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[11]

   [11] Shell (n 10) [13].

2. Justice Jacobson in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:

   Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

   First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths at [49]; Australian Woollen Mills at 658.

   Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

   Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

   Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

   Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating at 594 – 595.

   Sixth, a trade mark is likely to ‘cause confusion’ if the result of its use will be that a number of persons are ‘caused to wonder’ whether the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

   Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

   Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

   Ninth, 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 cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[12]

   [12] [2012] FCA 1022, [37] to [46] (citations omitted).

   38.   The Applicant submits that upon consideration of the whole of the Trade Mark against the cited trade marks it is clear that there are important visual, aural and conceptual differences between them such that there is no real danger of deception or confusion.

   39.   Turning the question of deceptive similarity, I will deal with each of 937, 894, 924 and 759 separately.

   937

   40.   I now compare the Trade Mark and 937. The essential feature of the Trade Mark is the word UNLEASH and the word HEALTH is descriptive in relation to the Designated Goods and Services. The essential feature of 937 is the word UNLEASHED solus. While the word UNLEASHED is the past particle of the imperative UNLEASH, and does not convey an identical concept, it does convey the word UNLEASH meaning to set free or release. Aurally the word UNLEASH has strong first and second syllables and the word UNLEASHED shares the strength of the first two syllables and a weak third syllable which may be lost when the items are requested by the purchaser.[13] The likelihood of aural and conceptual confusion is not negated by the visual differences between the trade marks. This is especially so when I consider the broad markets for software goods and services and electronic tracking equipment which are not particularly sophisticated. The similarities of the trade marks are such that consumers would be caused to wonder whether the goods or services come from a single trade source and there is a real and tangible danger of confusion. For these reasons, I find the trade marks are deceptively similar.

   [13] London Lubricants (1920) Ltd’s Appn (1925) 42 RPC 264, 279 (Sargant LJ).

   894

   41.   I now compare the Trade Mark and 894. The essential feature of the Trade Mark is the word UNLEASH and the word HEALTH is descriptive in relation to the Designated Services. The essential feature of 894 is the word UNLEASHED. While the word UNLEASHED is the past particle of the imperative UNLEASH, and does not convey an identical concept, it does convey the word UNLEASH meaning to set free or release. Aurally the word UNLEASH has strong first and second syllables and the word UNLEASHED shares the strength of the first two syllables and a weak third syllable which may be lost when the items are requested by the purchaser.[14] The likelihood of aural and conceptual confusion is not negated by the visual differences between the trade marks which includes device elements. This is especially so when I consider the broad market for software services and goods which is not particularly sophisticated.  The similarities of the trade marks are such that consumers would be caused to wonder whether the goods and services come from a single trade source and there is a real and tangible danger of confusion. For these reasons, I find that the trade marks are deceptively similar.

   [14] ibid.

   924

   42.   The essential feature of the Trade Mark and 924 is the word UNLEASH which is aurally and conceptually identical. The word element HEALTH in the Trade Mark is descriptive of the Designated Goods and Services, as such the meaning of UNLEASH is not altered in the Trade Mark unlike in other past decisions such as the comparison between INNER HEALTH PLUS verses HEALTHPLUS wherein the additional word created a different overall meaning.[15] In the context of the marketplace for 924’s broad and unlimited range of software goods and services it is likely that many users of the Designated Goods and Services will focus on the essential element UNLEASH which is shared between both trade marks. I also consider that the presence of the vertical arrow extending from the letter U in the Trade Mark, and the font style in 924 while visually prominent, do not sufficiently reduce the potential for confusion given the word UNLEASH is the most memorable essential feature of both trade marks. I consider it more likely than not that a number of consumers relying on imperfect recollection may be caused to wonder whether the trade source of the Applicant’s software goods and services and the trade source of 924’s software goods and services are one and the same. I find that the Trade Mark and 924 are deceptively similar.

   [15] Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100; (2008) 75 IPR 478 (Jacobson J).

   759

   43.   I now compare the Trade Mark and 759. The essential feature of the Trade Mark is the word UNLEASH and the additional word HEALTH is descriptive in relation to the Designated Goods and Services. The essential feature of 759 is the word UNLEASHED solus. While the word UNLEASHED is the past particle of the imperative UNLEASH and does not convey an identical concept, it does convey the word UNLEASH meaning to set free or release. Aurally the word UNLEASH has strong first and second syllables and the word UNLEASHED shares the strength of the first two syllables and a weak third syllable which may be lost when the items are requested by the purchaser.[16] The likelihood of aural and conceptual confusion is not negated by the visual between the trade marks. However, 759 covers consultancy services for business management and these services are provided for the purposes of assisting with the management of businesses and corporations, and while those business and corporations may operate in any field, consultancy in business management is a service purely for the purposes of business consultation which is different from claim in the Trade Mark for the management of incentive programs which are for marketing purposes. In addition, the services covered by 759 are not bought by members of the public. As such consumers would exercise a high degree of care and attention in making sure they are purchasing the service to suit their business. I find that, even allowing for imperfect recollection, after considering the surrounding circumstances, the Trade Mark and 759 are not deceptively similar.

   [16] London Lubricants (1920) Ltd’s Appn (1925) 42 RPC 264, 279 (Sargant LJ).

   44.   I have found that the Trade Mark is not deceptively similar to trade mark 759. However, I find that the Trade Mark is deceptively similar to trade marks 937, 894 and 924 in relation to the following Designated Goods and Services:

   Class 9: Software; computer software; computer programs (downloadable); computer applications; software applications (apps); software applications for use with mobile devices; electrical measuring apparatus; electronic control apparatus; electronic testing apparatus; electronic monitoring apparatus, other than for medical purposes; electronic communication apparatus; all the aforesaid services relating to health, fitness, wellbeing, wellness, mindfulness, self-care and nutrition

   Class 42: Software as a Service (SaaS); Platform as a Service (PaaS); online provision of web-based applications and software (non-downloadable); provision of information, advice and consultancy, including online, in relation to all the aforegoing services, all the aforesaid services relating to health, fitness, wellbeing, wellness, mindfulness, self-care and nutrition

   45.   For completeness, I note that no evidence has been filed that would enable a finding of prior use or honest concurrent use pursuant to s 44(3)(a) or s 44(4) nor am I aware of any other circumstances that would make it proper to accept the application pursuant to s 44(3)(b).  

   46.   Therefore, I am satisfied that a ground for rejection exists under s 44.

   Decision

   47. Section 33 provides:

   33Application accepted or rejected

   (1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:

   (a)the application has not been made in accordance with this Act; or

   (b)there are grounds under this Act for rejecting it.

   (2)The Registrar may accept the application subject to conditions or limitations.

   (3)If the Registrar is satisfied that:

   (a)the application has not been made in accordance with this Act; or

   (b)there are grounds under this Act for rejecting it;

   the Registrar must reject the application.

   48. Under s 33, I must accept the trade mark application unless there are grounds under the Act for rejecting it. I am satisfied that there is a ground under s 44 for rejecting trade mark application 2359090.

   49.   On 24 January 2024 I informed the Applicant that it was my intention to reject the Trade Mark unless the specification was amended to:

   Class 9:  Software; computer software; computer programs (downloadable); computer applications; software applications (apps); software applications for use with mobile devices; electronic publications (downloadable); video and audiovisual content provided via computer and communications networks; electronic and recorded multimedia publications; downloadable podcasts; downloadable video files; films bearing recorded educational material; audio recordings; electrical measuring apparatus; electronic control apparatus; electronic testing apparatus; electronic monitoring apparatus, other than for medical purposes; electronic communication apparatus; all the aforesaid goods relating to health, fitness, wellbeing, wellness, mindfulness, self-care and nutrition

   Class 35:  Advertising and promotional services; marketing services; organisation and administration services in relation to the supply of benefits for customer loyalty and frequent buyer schemes; organisation and management of incentive programmes; consumer profiling for commercial or marketing purposes; sponsorship (promotion and marketing services); provision of information, advice and consultancy, including online, in relation to all the aforegoing services, all the aforesaid services relating to health, fitness, wellbeing, wellness, mindfulness, self-care and nutrition

   Class 41:  Wellbeing services being health and fitness training; personal development training; health education; lifestyle counselling and consultancy (health and fitness training); dissemination of educational and entertainment material; electronic publication of information on a wide range of topics, including online and over a global computer network; online publication of electronic books and journals; publication of educational materials; provision of information, advice and consultancy, including online, in relation to all the aforegoing services, all the aforesaid services relating to health, fitness, wellbeing, wellness, mindfulness, self-care and nutrition

   Class 42:  Software as a Service (SaaS); Platform as a Service (PaaS); online provision of web-based applications and software (non-downloadable); provision of information, advice and consultancy, including online, in relation to all the aforegoing services, all the aforesaid services relating to health, fitness, wellbeing, wellness, mindfulness, self-care and nutrition

   50.   On 5 February 2024 the Applicant availed itself of the opportunity and the specification has been amended. Accordingly, I accept the Application.

   Louise Tuohy

   Hearing Officer

   Oppositions and Hearings

   Trade Marks and Designs

   6 February 2024

   Annexure 1

Trade Mark Number	Trade Mark	Classes
1267936 (‘936’) REMOVED FOR NON USE	UNLEASHED	Class 35: Business management; business administration including but not limited to IT and consultancy services relating to communication services and network and Internet services; office functions Class 38: Communications services including wireless communications; broadband network services including portable, wireless broadband services; telecommunications services including but not limited to voice over global computer network protocol (VoIP) telephony; telecommunication services relating to telephone, facsimile, voice mail, paging and data communication services including those involving the Internet; satellite communication services; Internet Service Provider (ISP) services; the hire or rental of apparatus, instruments or components for use in the provision of the aforesaid services; transmission of data, text, sound and images; providing access to a global computer network; fixed wireless access network services; consultancy services relating to communications and telecommunications
1267937 (‘937’)	UNLEASHED	Class 9: Telecommunications and communications equipment, apparatus and systems; satellite equipment, apparatus and systems including but not limited to satellite trackers, transmitting apparatus, aerials, dishes, transceivers, scramblers and descramblers; telephone equipment, apparatus and systems; telephone cards, debit and credit cards; machine readable apparatus, including cards related to the provision of communications, telecommunications or Internet services; apparatus which include integrated circuits, magnetic strips and memory chips; facsimile equipment, apparatus and systems; computer equipment, apparatus and systems, computer hardware, computer software and computer peripheral devices, none of the foregoing being or relating to video games, computer games or game programs of any kind; modems and equipment for facilitating network or Internet access including but not limited to splitters and routers; transmission, receiving and storage equipment, apparatus and systems; all associated parts, accessories and fittings in this class
1989894 (‘894’)	Class 9:  Downloadable software application for inventory management; computer software for inventory management, web-based inventory management and cloud-based inventory management. Class 42:  Providing cloud-based software as a service (SAAS) services featuring software for inventory management.
2266516 (‘516’) LAPSED: NOT ACCEPTED	UNLEASHED	Class 35:  Career information and advisory services (other than educational and training advice); Career planning services; Vocational guidance (employment advice and information); Career counselling (employment advice and information); Employment counselling services; Sales promotion through customer loyalty programmes (for others); Organisation, operation and supervision of customer loyalty schemes; Organisation, operation and supervision of an incentive scheme; Advertising; Advisory services relating to Class 41:  Arranging of courses of instruction; Arranging and conducting of conferences; Arranging and conducting of seminars; Arranging and conducting of workshops (training); Business training services; Coaching (training); Providing group coaching and in-person learning forums; Consultancy services relating to training; Business educational services; Career counselling (education or training advice); Career information and advisory services (educational and training advice); Conducting of educational co
2307924 (‘924’)	Class 9:  Application software; Computer software (programs); Computer software for business purposes Class 42:  Advisory services relating to computer software
2355759 (‘759’)	UNLEASHED	Class 35:  Consultancy services for business management.