WAG Petfoods Pty Ltd v Watch and Grow Food Co Pty Ltd

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by WAG Petfoods Pty Ltd to registration of trade mark application number 2303439 (31) – W & G (Figurative) - in the name of Watch and Grow Food Co Pty Ltd

Delegate:

Louise Tuohy

Representation:

Opponent: Martin Earley of Baxter IP

Applicant: Edward Heerey of Kings Counsel and Ryan Maguire of Counsel instructed by Thomson Geer

Decision:

2025 ATMO 51

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

Background

This matter concerns an opposition by WAG Petfoods Pty Ltd (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth)[1] to the registration of the following trade mark application (‘Application’) in the name of Watch and Grow Food Co Pty Ltd (‘Applicant’):
Trade mark number:              2303439
Trade mark:   (‘Trade Mark’)
Filing date:  27 September 2022
Specification:   Class 31: Pet food, pelleted pet food, food for dogs, edible products for dogs, edible chewing products for dogs, edible dog treats (‘Applicant’s Goods’)
[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’), respectively.
The Application was examined as required by s 31 and advertised for possible registration on 28 February 2023.
The Opponent filed its Notice of Intention to Oppose possible registration on 27 April 2023, followed by its Statement of Grounds and Particulars on 26 May 2023. The Opponent filed a Notice of Intention to Defend on 7 August 2023.
Thereafter the parties filed evidence in accordance with the Regulations.
The Opponent filed the following evidence in support:
·Declaration of Wayne Attard, Managing Director of the Opponent, made on 13 November 2023, with Annexures WA-1 to WA-27 (‘Attard’).
The Applicant filed the following evidence in answer:
·Declaration of Jeremy Goldman, Chief Executive Officer of the Applicant, made on 13 February 2024 (‘Goldman’).
The Opponent filed the following evidence in reply:
·Declaration of Wayne Attard, made on 19 April 2024, with Exhibits WA-1 to WA-8 (‘Attard 2’).
Once time for filing evidence had ended both parties were given the opportunity to either request an oral hearing or a hearing by way of written submissions. Both parties requested to be heard by way of videoconference. As a delegate of the Registrar of Trade Marks I heard the matter by videoconference on 21 February 2025. Martin Early of Baxter IP appeared on behalf of the Opponent. Edward Heerey of Kings Counsel and Ryan Maguire of Counsel instructed by Matthew Prescott and Oliver Byrnes Howe of Thomson Geer appeared on behalf of the Applicant. The parties’ oral submissions were supported by written submissions filed prior to the hearing.
Grounds of Opposition, Relevant Date and Onus
In the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 58, 58A and 60. The Opponent did not press the grounds of opposition under ss 42(b) and 58A and I consider these grounds abandoned.
The date at which the rights of the parties are to be determined is the filing date of 27 September 2022 (‘Relevant Date’) which is also the priority date for the purposes of ss 44 and 60.
The Opponent bears the onus of establishing at least one of the grounds of opposition.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3]
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
Preliminary issue
At the hearing the Opponent objected to the filing of an attachment to the Applicant’s written submissions. The attachment comprises of an unredacted version of the declaration of Jeremy Goldman made on 24 April 2023 (‘Goldman 2023’) which was submitted by the Applicant during the examination of its application for registration of trade mark number 2279166. The Applicant states that Annexure WA-21 to Attard contained a partially redacted version of Goldman 2023. The Applicant submits that the redacted parts of Goldman 2023 were originally marked confidential and it no longer claims confidentiality over those parts. The Applicant argues that the unredacted version of this material has been provided to the Opponent and the Registrar by way of the Applicant’s evidence in answer to the Opponent’s opposition to the Applicant’s trade mark number 2279166.
Regulation 21.19 affords the Registrar discretion to consider whether available information is relevant and whether it should be considered when making a decision. Regulation 21.15(4) provides that the Registrar ‘may be informed on any matter that is before the Registrar in a way that the Registrar reasonably believes to be appropriate’. Neither regulation is a substitute for the evidence stages of an opposition, and the party seeking admission of the evidence must make a compelling case for its inclusion.
The information in Goldman 2023 relates to trade mark 2279166 which is not the subject of this opposition. I am not persuaded that this material should be allowed into the hearing at this stage of proceedings. While the parties have knowledge of the contents of Goldman 2023, for reasons that will become apparent, this material is not determinative to the outcome of these proceedings. Accordingly, I have not had regard to the attachment.
Discussion
The Opponent
The Opponent is an Australian pet food company, incorporated in November 1993. The Opponent commenced its business in 1978 from a physical location in Blacktown, New South Wales, under the business name “Blacktown Petfoods”. As the business expanded the name of the business was changed to “WAG” which is the acronym for the ‘Wayne Attard Group”.
The Applicant
The Applicant is an Australian pet food company, incorporated in March 2010. The Applicant’s physical base is in Heatherton, Victoria and commenced promoting its business in November 2009. The Trade Mark was adopted by the Applicant to reflect the first letter of the words “Watch” and “Grow” from the Applicant’s company name.
Section 58
Section 58 provides:
58 Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
To establish this ground, the Opponent must establish the following requirements:
I. that the Trade Mark is identical, or substantially identical, to the trade marks relied upon by the Opponent;[4]
II.that the Applicant’s Goods are the ‘same kind of thing’ as the goods for which the trade marks relied upon by the Opponent were used;[5] and
III.that a person other than the Applicant has the earlier claim to ownership based on use in Australia of the trade marks relied upon by the Opponent prior to whichever is earlier of: (a) the application to register or (b) any actual use of the Trade Mark in Australia by the Applicant.[6]
[4] Carnival Cruise Lines Inc. v Sitmar Cruises Limited [1994] FCA 68, [62] (Gummow J).
[5] Re Hicks’ Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).
[6] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).
In regard to the first point, the test for whether trade marks are substantially identical requires that the trade marks are considered side-by-side while having regard to the essential features of the trade marks.[7] Where a total impression of resemblance emerges from the comparison, the trade marks will be considered substantially identical.
[7] The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407, 414 (Windeyer J).
In the SGP the Opponent relies on the following trade marks:
Trade mark number:           941130
Trade mark:       (‘130 Mark’)
Filing date:24 January 2003
Owner:WAG Petfoods Pty Ltd
Specification:  Class 29: Meat, fish, poultry and game; fresh and cooked
Class 31: Foodstuffs for animals
(‘130 Goods’)
and
Trade mark number:           1953938
Trade mark:  WAG   (‘938 Mark’)
Filing date:7 September 2018
Priority date:  19 April 2018
Owner:Amazon Technologies, Inc.
Specification:  Class 28: Games, toys and playthings for animals; parts and   fittings for the aforesaid goods
Class 35: Retail and on-line retail services connected with   the sale of goods for pets, pet care foods stuffs and pet care   products
(‘938 Goods and Services’)
and
Trade mark number:              2000413
Trade mark:         (‘413 Mark’)
Owner:  Phillip Stewart
Filing date:  12 April 2019
Specification:  Class 6: Cages for birds and animals, of metal (structures);   Cages of metal; Wire cages (structures) of metal
Class 11: Aquarium aerating apparatus; Aquarium filters; Aquarium filtration apparatus; Aquarium heaters; Aquarium lamps; Aquarium lights; Filters for aquariums; Filters for use in aquariums; Heating apparatus for aquariums; Lighting for aquariums; Protein skimmers being water purification apparatus for aquariums
Class 18: Collars for animals; Collars for cats; Collars for dogs; Dog collars; Head collars for animals; Non-electronic training aids for animals (collars, harnesses, leashes, muzzles); Harness for animals; Harness made from imitation leather; Harness made from leather; Harness straps; Lead reins; Leads for animals; Leads made of leather; Leather leads; Muzzles; Articles of clothing for animals; Clothing for pets; Faeces collection bags for dogs and horses (animal clothing)
Class 20: Decorative objects (ornaments) made of plastics material; Model aeroplanes (ornaments) made of synthetic resin; Model cars (ornaments) made of synthetic resin; Model figures (ornaments) made of synthetic resin; Model vehicles (ornaments) made of synthetic resin; Models (ornaments) made of synthetic resin; Beds for animals; Beds for birds; Beds for domestic pets; Dog houses (kennels); Dog kennels; Kennels; Kennels for household pets
Class 21: Bird baths; Bird feeders; Birdcages; Containers for domestic birds; Food containers for birds; Litter trays for birds; Perches for birds; Rings for birds; Animal bristles (brushware); Brushes; Brushes for grooming horses; Brushes for grooming pet animals; Horse brushes; Combs for animals; Eating bowls; Food bowls for pets; Goldfish bowls; Stainless steel bowls; Aquarium equipment being feeding or breeding traps; Aquarium hoods; Aquariums; Aquariums (indoor); Litter baskets; Litter bins; Litter boxes for pets; Litter scoops for use with pet animals; Litter trays for pets
Class 24: Fabrics for textile use; Textile covers (loose) for furniture; Textile fabrics for making into clothing; Textile fabrics for use in the manufacture of bedding; Textile fabrics for use in the manufacture of beds; Textile fabrics for use in the manufacture of sportswear; Textile fabrics for use in the manufacture of towels; Textile material; Textile piece goods for clothing; Textile piece goods for making bedding covers; Textile piece goods for making into clothing; Textiles made of cotton; Textiles made of flannel; Textiles made of linen; Textiles made of satin; Textiles made of silk; Textiles made of synthetic materials; Textiles made of velvet; Textiles made of wool; Textiles treated with a flame resistant finish; Waterproof textile fabrics
Class 28: Soft toys in the form of birds; Toys for birds; Ball catchers; Balls for games; Balls for play; Play balls; Tennis balls; Fluffy toys; Model animals (toys or playthings); Plush stuffed toys; Plush toys; Soft toys; Soft toys in the form of animals; Soft toys in the form of bears; Stuffed animals (toys); Stuffed plush toys; Stuffed toys; Toys for cats; Toys for dogs; Toys for pets; Whistling toys; Wooden toys (playthings); Imitation bones being playthings for dogs; Imitation bones being toys for dogs
Class 31: Bird food; Bird seed; Cuttle bone for birds; Edible bird treats; Food for birds; Aromatic sand (litter) for pets; Cat litter; Litter for animals; Straw litter; Woodshavings for use as animal litter; Bones for dogs; Chewing bones for dogs; Cuttlefish bones; Edible chews for animals; Fish food
(‘413 Goods’)
For the purposes of comparison, I have reproduced the respective trade marks below:

Trade marks relied upon by the Opponent

Trade Mark

130 Mark

938 Mark

WAG

413 Mark

On a side by side comparison there are clear differences between the respective trade marks. The Trade Mark starts with the letter W, then a tail extending from an ampersand symbol with two arcs above, followed by the letter G in uppercase font. In comparison the 130 Mark consists of the word WAG in fancy lower case font with the open tail letter G extended to underline the letters W and A, all inside an oval device. The 938 Mark is for plain word WAG and the 413 Mark consists of the word term MAKING TAILS WAG with two arcs above the letter G and two below. For these reasons, I find that the Trade Mark is not substantially identical to any of the 130, 938 and 413 Marks. The total impression emerging from a side by side comparison is not one of similarity.
Therefore, the s 58 ground of opposition has not been established.
Section 44
Section 44 relevantly 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.
[…]
(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.
To satisfy the s 44 ground of opposition the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark/s with an earlier priority date, in the name of a person other than the Applicant, and in respect of similar goods or closely related services.
At the hearing the Opponent’s oral and written submissions only relied on the 130 and 938 Marks. The 130 and 938 Marks are in the name of a person other than the Applicant and have a priority date that is earlier than the Relevant Date.
The next consideration is whether the 130 Goods, and the 938 Goods and Services, are similar or closely related to the Applicant’s Goods. Pursuant to s 14(1) ‘similar goods’ are goods that are the same, or of the same description. The determination of whether goods are similar involves the consideration of a number of factors including the nature, use and trade channels of the goods.[8]
[8] Jellinek’s Application (1946) 63 RPC 59 (Romer J);Beck, Koller & Company’s Application (1947) 64 RPC 76.
Whether the Applicant’s Goods are closely related to the 938 Services (or vice versa) involves different considerations. In the Registrar of Trade Marks v Woolworths (‘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]
130 Goods
[9] [1999] FCA 1020, [37].
The Applicant claims Pet food, pelleted pet food, food for dogs, edible products for dogs, edible chewing products for dogs, edible dog treats in class 31 which are the similar to the 130 Goods Foodstuffs for animals in class 31. However, the Applicant’s claims in class 31 are not similar to the 130 Goods Meat, fish, poultry and game; fresh and cooked in class 29. While the pet food products manufactured by the Applicant in class 31, may consists of these class 29 products, the Opponent’s products in class 29 are prepared for human consumption, and sold in different sections of stores.
938 Goods and Services
The 938 Goods are Games, toys and playthings for animals; parts and fittings for the aforesaid goods in class 28. I do not consider the 938 Goods are similar to the Applicant’s Goods claimed in class 31. The 938 Goods are generally made by different manufacturers and the nature and purpose of the goods are different.
The 938 Services are Retail and on-line retail services connected with the sale of goods for pets, pet care food stuffs and pet care products in class 35. The Applicant’s Goods are pet foods in class 31 and it is common for pet foods manufacturers to retail their products through their own online stores. Likewise, many pet food retailers and large supermarket chains such as Woolworths and Coles sell their own branded pet foods. Consumers have come to expect that in this case the goods themselves and their retail typically originate from the same source. As such I consider that the Applicant’s Goods in class 31 are closely related to the 938 Services.
I now turn to the question of whether the 130 and 938 Marks are deceptively similar to the Trade Mark. The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:
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].[10]
[10] (n 7), 416.
The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[11] (‘Self Care’) conveniently stated the relevant principles, which was summarised in The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd[12] as follows:
[11] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).
[12] [2023] FCA 482, [55] (Jackman J).
(a)the resemblance between the two marks must be the cause of the likely deception or confusion;[13]
[13] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69] (Yates, Abraham and Rofe JJ) (‘Swancom’).
(b)in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[14]
[14] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).
(c)the marks should not be compared side by side;[15]
(d)the effect of spoken description must be considered; if a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods (or services), then similarities both of sound and of meaning may play an important part;[16]
(e)the focus is upon the effect or impression produced on the mind of potential customers of the goods (or services) in relation to which the two marks are used and in the case of the registered mark, allowing for ‘imperfect recollection’;[17]
(f)the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the marks prior to filing, or any reputation associated with the registered mark;[18]
(g)the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods or services covered by the registration), with the impression that the notional buyer would have of notional and normal fair use of the opposed mark;[19]
(h)“deceived” implies the creation of an incorrect belief or mental impression; “causing confusion” may merely involve “perplexing or mixing up the minds” of potential customers; [20]
(i)the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected, having regard to the character of the customers who would be likely to buy the goods in issue;[21]
(j)it is not necessary to establish actual probability of deception or confusion, but a mere possibility of confusion is not enough. There must a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be “a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source”;[22]
(k)evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[23] and
(l)any intention to deceive or cause confusion may be a relevant consideration but is not required.[24]
[15] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).
[16] Ibid.
[17] Ibid.
[18] C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, 62 [43] (Ryan, Branson and Lehane JJ).
[19] Shell (n 7), 415.
[20] Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, 122 [39] (Black CJ, Sundberg and Finkelstein JJ) quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62 (Richardson J).
[21] Campomar Sociedad Limited v Nike International Limited (2000) 202 CLR 45, 79 [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).
[22] Woolworths (n.9), [50(ii)] restating principles from Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-595 (Kitto J) (‘Southern Cross’).
[23] Australian Woollen Mills Ltd (n 15).
[24] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc [2020] FCAFC 235; (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) (‘Hashtag Burgers’) citing Australian Woollen Mills (n 15), 657.

Furthermore, in the same case, the Court noted the following[25]:
In considering the likelihood of confusion or deception, "the court is not looking to the totality of the conduct of the defendant in the same way as in a passing off suit"[26]. In addition to the degree of similarity between the marks, the assessment takes account of the effect of that similarity considered in relation to the alleged infringer's actual use of the mark[27], as well as the circumstances of the goods, the character of the likely customers, and the market covered by the monopoly attached to the registered trade mark[28]. Consideration of the context of those surrounding circumstances does not "open the door" for examination of the actual use of the registered mark, or, as will be explained, any consideration of the reputation associated with the mark.[29]
[25] Self Care (n 11) [33].
[26] New South Wales Dairy Corporation v Murray-Goulburn Co‑operative Co Ltd [1989] FCA 124; (1989) 86 ALR 549, 589 (emphasis added) (Gummow J) (‘New South Wales Dairy’), approved in Henschke (n 18), 62 [44], Hashtag Burgers, (n 24) [64], Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel [2021] FCAFC 8, [27], PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (2021) 285 FCR 598, [97] (see also 626 [111]) and Swancom (n 13), [73].
[27] Act, s 68.
[28] New South Wales Dairy (n 26), 589.
[29] Swancom (n 13), 59 [89]. See also Henschke (n 18), 62 [44].
As stated above, for the purposes of considering deceptive similarity, actual use of the trade marks or the reputation of the trade marks are not relevant factors.[30]
[30] See Swancom (n 13) [93] and, albeit in the s120(1) context, Self Care (n 11), [49].
The Opponent argues that the Trade Mark replicates the dominant elements of the 130 and 938 Marks, with only minor variations that do not alter the overall impression of similarity. The Opponent relies on In-N-Out Burgers Inc v Hashtag Burgers Pty Ltd [31] where Katzmann J found that minor modifications in a trade mark do not eliminate deceptive similarity if the dominant elements remain visually, phonetically or conceptually alike.
[31] [2020] FCA 193, [76].
The Opponent submits that by the Applicant’s own admission the ampersand symbol “&” in the Trade Mark is intended to invoke a wagging tail, which for the Opponent confirms that the core components of the respective trade marks are nearly identical in appearance and commercial impression.
The Opponent states that the Court in Hashtag Burgers Pty Ltd v In-N-Out Burgers[32] (‘Hashtag Burgers’) observed that intent to deceive is not required to establish deceptive similarity, but if present, it strengthens the claim. The Opponent argues that the Applicant had knowledge of its trade marks and in the face of this knowledge, filed multiple trade mark applications[33] to acquire rights in a similar trade mark to the Opponent’s 130 Mark. The Opponent believes that there is a consistent modus operandi and flagrant use of similar trade marks by the Applicant to trade off the Opponent’s reputation and usurp its valuable trade mark rights.
[32] (n 24), [67].
[33] Trade mark numbers: 1686097, 1307195, 1970116, 2279165, 2363986, 2279166 and 2359683.
In terms of likely confusion, the Opponent submits that the Trade Mark is already causing confusion in the market and that Annexure WA-2 to Attard 2 comprises evidence of actual confusion. The example provided by the Opponent is from a page of a Google search for “W&G petfoods” performed on 19 April 2024. The search page shows results of a third party website which the Opponent submits has been indicating Watch and Grow as WAG. I have reproduced that search result below:
In response the Applicant states that the word WAG is an essential feature of the 130 and 938 Marks and argues that it is the idea which these trade marks will naturally suggest to the mind of one who sees them. In the 130 Mark the word WAG has a particular stylisation and is placed inside a solid filled, oval shaped outline, and these elements are also elements which strike the eye and fix themselves in the recollection. In relation to the 938 Mark the plain word WAG is the only element.
The Applicant states that the essential feature WAG of the 130 and 938 Marks is not present in the Trade Mark. The spoken description of the Trade Mark can only be “W and G”, and its perceived meaning is most likely to be of an acronym of three unapparent words. The Trade Mark is visually distinct from the word WAG. Even if the stylisation of the ampersand in the Trade Mark is perceived by some people as an abstract representation of a wagging tail, this does not alter the literal, aural or conceptual impression of the Trade Mark as a whole. The presence of the ampersand cannot somehow transform the unintelligible combination of the characters “W&G” into the English language word WAG.
The Applicant also dismisses the Opponent’s attempt to compare the present opposition to the facts of Hashtag Burgers.[34] The Applicant submits that there was no question in that case that the IN-N-OUT brand had a very substantial reputation in both the USA and Australia and that the respondents deliberately set out to imitate that brand. Further, the Applicant submits that the Opponent’s allegations about its intent[35] either have no evidentiary basis at all or they are contradicted by more reasonable inferences arising from the Opponent’s own evidence i.e. that the Trade Mark was adopted by the Applicant to reflect the first letter of the words WATCH and GROW from the Applicant’s company name, and the ampersand design is intended to evoke a dogs tail wagging.[36]
130 Mark
[34] (n 24) [67].
[35] See also Opponent’s written submission paragraphs [11], [16.8] and [17,4].
[36] Goldman [13].
In my view, both the 130 Mark and the Trade Mark are comprised of three characters rendered in fancy script. The 130 Mark is for the English word WAG and the Macquarie Dictionary online, defines the word WAG as “to move from side to side, forwards and backwards, or up and down, especially rapidly and repeatedly: the dog wagged its tail”.[37] In comparison the Trade Mark ‘W&G’ is likely to denote the shorthand form of the company name that is the origin of the goods, with the letter W being used as a substitute for the word WATCH, the ampersand as the symbol for the word AND, and the letter G as a substitute for the word GROW. The likely impression of the word WAG in relation to the 130 Goods would be of a tail wagging. This is in contrast to the Trade Mark which is more likely to be read by consumers as an association to a company name.
[37] < 28 February 2025.
Turning to the visual and aural aspects of the trade marks, despite both starting with the letter W and ending with the letter G, in my view, it is unlikely that consumers would discount the significance of the fancy ampersand in the Trade Mark. The differences in the trade marks are particularly discernible aurally as the 130 Mark would be pronounced as the common word WAG and the Trade Mark would be pronounced as W and G.
In determining whether there is a likelihood of deception or confusion, I must consider all the surrounding circumstances including the circumstances in which the goods are offered for sale and the probable acquirer of the goods. The goods in this matter are broadly animal foodstuffs, which are directed to animal owners. I consider that companies engaged in producing animal foodstuffs would need to be competitive with rivals and rely on packaging displaying their trade marks in a retail setting. On the other hand, retail consumers would be alert to different brands as they would be aware of which brand of food their animal will eat and/or the price point of the goods. In this regard, I find it more probable than not that consumer of these goods would not be contextually confused between the goods offered by the Opponent and the Applicant.
In regard to the likelihood of the Trade Mark causing confusion the Opponent submits that a third party website (see paragraph 41 above) has been indicating the Applicant’s name WATCH & GROW as WAG and that this confirms that W&G is similar to WAG. However, on the evidence before me the inclusion of the word WAG next to the words WATCH & GROW does not show that the Applicant’s name is similar to the word WAG. The Applicant is the owner of two trade mark registrations 2279165 and 2279166 for the word WAG covering edible treats for dogs in class 31, which are the goods advertised by the third party website.
For completeness I note that the Opponent claims that the filing of the Application was an intent to deceive by the Applicant. However, the Trade Mark was clearly adopted to denote the name of the Applicant, and there is a plethora of reasons why a brand would undergo a name change, and shortening a company name is a common strategy for brands, such that the filing of the Application is not evidence of an intent to deceive by the Applicant.
Assessing the trade marks in their entirety, and the likely impression on the mind of the relevant consumer, I find that the trade marks are visually, aurally and conceptually dissimilar. Therefore, I do not consider there is a real, tangible danger that a notional buyer of ordinary intelligence and memory with a recollection only of the 130 Mark would be caused to wonder or left in doubt about whether the Applicant’s Goods have the same trade source. I find that the Trade Mark is not deceptively similar to the 130 Mark. It follows that I also find that the Trade Mark is not deceptively similar to the 938 Mark, as this trade mark is also for the English word WAG.
The ground of opposition under s44 has not been established.
Section 60
Section 60 provides:
60 Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(c) 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.
In the SGP the Opponent particularised the s 60 ground of opposition as follows:
• The Opponent had acquired, before the priority date of the Opposed mark, a reputation for its trade mark.
• The Opponent offers services that are the same as or similar to those in relation to which registration of the Opposed mark is sought in class 31.
• The Opposed trade mark is deceptively similar to the Opponent’s trademark that has acquired a reputation in Australia since before 24 January 2003.
• The Opponent’s trade mark had acquired its reputation before the priority date of 27 September 2022 of the Opposed trade mark.
• There have been instances of consumers being confused between the trade mark of the Applicant and the trade mark of the Opponent.
• Because of the reputation of the Opponent’s trade mark, the use of the Opposed trade mark in relation to the services in relation to which registration is sought, would be likely to deceive users and/or cause confusion in the marketplace.
To satisfy s 60 the Opponent must establish that the trade mark upon which it relies had a reputation in Australia at the priority date of the Trade Mark. The Opponent must then establish that because of that reputation, use of the Trade Mark would be likely to deceive or cause confusion.
In McCormick & Co Inc v McCormick, Kenny J asked what is intended by the word ‘reputation’ in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.12F9F[38]
[38] [2000] FCA 1335, [81].
Justice Kenny also referred to the Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG, where the Registrar’s delegate observed:
[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sale or turnover of goods sold under the trade mark and contemplation of the advertising and promotional figures.
As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum sale, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorship, cross-promotions, ‘contra deals’ and so forth.
It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sale may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an association of the trade marks with the goods or services themselves.14F11F[39]
[39] (1999) 47 IPR 423, 436.
What constitutes a significant or substantial number of persons in the relevant market must be considered. Justice Heerey in Le Cordon Bleu BV v Cordon Bleu International Ltee provided some guidance:
What is “significant” or “substantial” will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.F12F[40]
[40] [2000] FCA 1587, [91], (albeit in relation to paragraph 28(a) of the now superseded Trade Marks Act 1955 (Cth)), (emphasis in original).
In considering the reputation of the Opponent’s 130 Mark, in Attard, Mr Attard states that the Opponent first used the 130 Mark just prior to January 2003 and has used it continuously since then in relation to all of the 130 Goods.
Mr Attard states that the Opponent orders its 130 Goods from two main manufacturer and packager companies being the Victorian Petfood Processors (VIC) Pty Ltd for its meat products[41] and World 4 Pets Pty Limited for its poultry products.[42] The Opponent also owns its own pet food processing plant in Blacktown that produces the 130 Goods.[43] The Opponent orders it packaging for most of the 130 Goods which feature the trade mark from Oji Fibre Solution (Aus) Pty Ltd and P & P Plastics Pty Ltd.[44] Annexure WA-10 to Attard comprises undated examples of how the Opponent displays the 130 Mark on its 130 Goods. I have reproduced an example below:
[41] Attard. Annexure WA-5
[42] Attard, Annexure WA-6.
[43] Attard, Annexure WA-7
[44] Attard, Annexure WA-9
Mr Attard states that the Opponent has advertised, marketed and promoted its 130 Mark and provides confidential (approximate) advertising expenditure from the date of first use to date.
Mr Attard states that the Opponent advertises its 130 Mark on billboards,[45] Yellow Pages directory,[46] printed brochures,[47] and through its sponsorship of Greyhound racing events.[48]
[45] Attard, Annexure WA-13.
[46] Attard, Annexure WA-17.
[47] Attard, Annexure WA-14
[48] Attard, Annexure WA-15.
Annexure WA-16 to Attard comprises invoices or emails from the publishers of Canine Journal, Wollondilly and Wollongong Advertisers, and The Greyhound Recorder dated from 2009 to 2012. The invoices are for the advertisements placed in these publications which feature the 130 Mark in relation to the 130 Goods.
Mr Attard claims that the 130 Mark is displayed in relation to all of the 130 goods on its website < (‘Website’). Annexure WA-3 to Attard 2 comprises a screenshot of the Website homepage dated April 2024 featuring the 130 Mark.
Mr Attard attests that the 130 Mark is accessed by customers via its Facebook account. Annexure WA-11 to Attard comprises screenshots of posts from the Opponent’s Facebook Account dated September 2018 featuring the 130 Mark in relation to pet meat.
Mr Attard provides confidential sales figures for the financial years July 2018 to June 2022 and states that the Opponent’s goods range in price from $1.40 to $4.00. Annexure WA-8 to Attard comprises copies of the Opponent’s price list and order form for its fresh pet food under the name WAG PETFOODS dated from 2020 to 2021, along with details of its customer base. Confidential Annexure WA-19 to Attard comprises a sample of invoices and a copy of the Opponent’s Australian customer database.
Annexure WA-3A to Attard 2, comprises a copy of a customer testimonial dated April 2024, from World4Pets. The testimonial states that it has been a customer of the Opponent for over 21 years, and that thanks to the quality of the Opponent’s products and pricing, World4Pets has grown significantly.
In response the Applicant submits that the Opponent’s evidence is insufficient to prove that the 130 Mark has acquired a sufficient reputation, both in quantity and quality, for the purposes of its ground of opposition under s 60. In particular, the Opponent’s financial information only shows modest sales and advertising expenditure.
In my assessment of the evidence, the Opponent’s sales figures are modest and only disclose four years of sales, although the figures do show consistent growth over that period. The Opponent’s approximate advertising expenditure is also modest, and its examples of advertising and promotional materials and activities are limited. However, these limited examples reflect the Opponent’s position within the industry as a manufacturer and wholesaler, rather than a retailer of the 130 Goods. The statement from one of the Opponent’s long time customers is persuasive, as the customer purchases the 130 Goods due to their quality and pricing. These statements are supported by the Opponent’s invoices issued to other customers for repeat purchases of the 130 Goods. Considering the market exposure of the 130 Mark, I find that the 130 Mark had a limited reputation in Australia in relation to the 130 Goods at the Relevant Date.
It is not sufficient that the Opponent merely establishes that its 130 Mark has a limited reputation. The Registrar must also be satisfied that because of that reputation, the use of the Trade Mark would be likely to device or cause confusion.
The concepts of ‘deceived’ and ‘confusion’ were considered in the New Zealand case of Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd wherein Richardson J observed:
“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.[49]
[49] [1979] RPC 410, 423 (citation omitted).
The likelihood of deception or confusion must be real and tangible.[50] The test for confusion under s 60 is not limited to whether consumers might think that the respective marks are the same. It is sufficient ‘if people would have cause to wonder’ whether the Applicant’s Goods appearing in relation to the Trade Mark were being provided by the Opponent.[51] To this end, it has been observed that ‘the threshold for confusion is not high’[52] and confusion can be established even if it ‘is unlikely to persist up to the point of, and contribute to, inducing sale’.[53]
[50] Southern Cross (n 22), 595.
[51] Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd (2016) 122 IPR 232, [76] (Davies J).
[52] Australian Postal Corporation v Digital Post Australia [2013] FCAFC 153, [70] (North, Middleton and Barker JJ).
[53] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, [105] (Dodds-Streeton J).

Here the relevant comparison is between the reputation of the 130 Mark and a notional normal and fair use of the Trade Mark in respect of each of the Applicant’s Goods.
There is no requirement to demonstrate that the trade marks in question are substantially identical or deceptively similar within the meaning of Act. Nevertheless, it has been observed that:
Confusion cannot arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.[54]
[54] Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd [2010] ATMO 5 (Hearing Officer Lyons), [39] (emphasis in original). See also Qantas Airways Limited v Edwards [2016] FCA 729, [142] (Yates J).
The assessment of the likelihood of deception or confusion is informed by the strength of the reputation of the 130 Mark and I have found that the 130 Mark only carries a limited reputation in relation to the 130 Goods. While there is a nexus between the 130 Goods and the Applicant’s Goods, I refer to my discussion of the differences in the trade marks under the s 44 ground. I consider that the differences between the Trade Mark and the 130 Mark are too notable and are not overcome by the limited reputation acquired by the 130 Mark. As such I do not find that deception or confusion is likely to occur in the marketplace even if the Trade Mark is used in relation to the same goods and directed to the same customers.
The Opponent has not established the ground of opposition under s 60 of the Act.
Decision
Section 55 provides:
55 Decision
(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
The Opponent has not established any grounds of opposition. Therefore, trade mark application number 2303439 may proceed to registration one month from the date of this decision. If the Registrar is served with a notice of appeal, I direct that the disposition of the Application should be in accordance with the Court’s order or direction.
Costs
It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Opponent under s 221 in line with Schedule 8 of the Regulations.
Louise Tuohy
Hearing Officer
Delegate of the Registrar of Trade Marks
6 March 2025

[2025] ATMO 51

6 March 2025

Key Legal Topics

Areas of Law

Intellectual Property

Administrative Law

Legal Concepts

Appeal

Costs

Statutory Construction

Standing

Trade marks relied upon by the Opponent	Trade Mark
130 Mark
938 Mark WAG
413 Mark