White International Pty Ltd v Whites Powersports Australia Pty Ltd

[2025] ATMO 157

TRADE MARKS ACT 1995

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

Re:Opposition by White International Pty Ltd to registration of trade mark application number 2185089 (classes 7, 8, 9, 11, 12, 22 and 35) - WHITES & W device - in the name of WHITES POWERSPORTS AUSTRALIA PTY LTD

Delegate:

Anne Makrigiorgos

Representation:

Opponent: Geoff Davidson of Halfords IP

Applicant: The Loft Legal Pty Ltd

Decision:

2025 ATMO 157

Trade Marks Act 1995 (Cth) – opposition under section 52 – s 44 established for a subset of goods and services – no honest concurrent use or other circumstances - amendment made deleting the goods and services for which the s 44 ground has been established - trade mark to proceed to registration

Background

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by White International Pty Ltd (‘Opponent’) to registration of the following trade mark:

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

Trade mark number	2185089 (‘Application’)
Trade mark	(‘Trade Mark’)
Applicant	WHITES POWERSPORTS AUSTRALIA PTY LTD (‘Applicant’)
Filing Date	9 June 2021 (‘Relevant Date’)
Specification	See Annexure A (‘Applicant’s Goods and/or Services’)
Endorsement	Provisions of paragraph 44(3)(a) and/or Reg 4.15A(3)(a) applied.

2.    The Trade Mark was examined and advertised as accepted for possible registration on 1 June 2023.

3.    On 1 August 2023, the Opponent filed a Notice of Intention to Oppose the Application. On 1 September 2023, the Opponent filed a Statement of Grounds and Particulars (‘SGP’). The Applicant filed a Notice of Intention to Defend the opposition on 12 September 2023.

4.    The Opponent did not file Evidence in Support or Evidence in Reply. The Applicant filed Evidence in Answer (‘EIA’) on 21 March 2024.

5.    The parties were given the opportunity to either request an oral hearing or to file written submissions. The Opponent elected to be heard by video conference and the Applicant by written submissions. Prior to the hearing, the Opponent filed its written summary of submissions and the Applicant its written submission drafted by Nico De Jong from The Loft Legal Pty Ltd. As a delegate of the Registrar of Trade Marks, I heard this matter via video conference on 20 June 2025. At the hearing, Geoff Davidson of Halfords IP appeared on behalf of the Opponent. I have decided this matter based on the particulars set out in the SGP, the EIA, the written and oral submissions of the Opponent and the written submissions of the Applicant.

Grounds and onus

6.    The SGP nominates grounds of opposition under ss 42(b), 44, 58, 59 and 60. In the Opponent’s written submissions, the Opponent indicated it was only pursuing the s 44 ground and only in respect of the Applicant’s Goods in classes 7, 8 and 9 and the Applicant’s Services (‘Subset Goods and Services’). At the hearing the Opponent confirmed it was not pursuing the 42(b), 58, 59 and 60 grounds of opposition, and I therefore treat these grounds as abandoned.

7.    The Opponent carries the burden of establishing at least one ground of opposition[2] on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is the Relevant Date.[4]

Summary of evidence

1. The Applicant filed a declaration of Kyne Larkin, director of the Applicant dated 20 March 2024 with Annexures KL-1 to KL-22 including Confidential Annexures KL-10, KL-11, KL-12 and KL-17 (‘Larkin’).

2. Larkin provides details of the Applicant’s Australian trade mark registrations (‘Applicant’s Registrations’), brief details of which follow and details of the goods and services of these registrations appear at Annexure B:

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelmann JJ).

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J) (‘Southern Cross’).

Number	Trade mark	Class
1844758[5]	WHITES MOTORCYCLE PARTS	12
1847910[6]	WHITES POWERSPORTS	35
1848107[7]	WHITES MOTO	35
1848108[8]	35
1850806[9]	WHITES MOTO	12
1865580	12
1967309[10]	WHITES MOTORCYCLE PARTS	12, 35
1967349	12, 35
2181018	12, 35
2181037	12, 35

[5] Endorsement: Evidence and/or other circumstances provided under subsection 41(4).

[6] Ibid.

[7] Ibid.

[8] Ibid.

[9] Ibid.

[10] Ibid.

10.    Mr Larkin provides a brief history of the Applicant. In 1952, William White (‘BW’) established a motorcycles and accessories importation and distribution business in New Zealand. In 1992 BW incorporated W White Wholesale Ltd (‘WWW’) and opened five retails outlets in New Zealand selling motorcycles and accessories. BW sold his business interests to Mr Larkin’s father Keith Larkin in 1994, who became a director of WWW. Mr Larkin began working for WWW in 2006 and became a director in 2010.

11.    In 2014, WWW entered the Australian market with the purchase of Birdman Motorcycle Accessories Pty Ltd, and in 2015 changed the name of this company to the Applicant. In 2015, the Applicant was using the trade marks WHITE POWERSPORTS and the logo  for its motorcycles parts wholesale/retail business. This logo was updated in 2021 to  and .

12.     In 2015, the Applicant began selling its own branded motorcycle accessories under WHITES MOTORCYCLE PARTS, WHITES POWERSPORTS and thelogo. The Applicant updated this logo to the Application in 2021.

13.    In 2017, the Applicant launched the division WHITESMOTO which facilitates the sale of the Applicant’s products to consumers in Australia through the website registered in 2017, advertised as being run by Whites Powersports. Through this website, the customer purchases products and elects a local dealer to complete the sale.

14.     Laskin annexes copies of a document entitled ‘An Intro To The Whites Powersports Group’ published in June 2017, 2018 and 2022. Larkin claims this document is updated every year. The Applicant in Australia is described as ‘Whites Australia is a leading distributor of Motorcycle and ATV hard parts and accessories’. I also note the statement ‘We have parts and accessories for every popular motorcycle bought into Australia and New Zealand since 1970…’. I also note use of the trade marks , Whites, , Whites Powersports and  in 2017 and 2018, and , , the Trade Mark, Whites Powersports, WHITES, , , ,  and Whites Motorcycle Parts in 2022. In addition, there is no information as to the distribution of this document to any third parties.

15.    Larkin claims the Applicant and its related companies in Australia and New Zealand are known as Whites.

16.    Larkin states that the Applicant or its related companies are owners of, inter alia, three ‘.com.au’ domain names and three ‘.com’ domain names. The domain name whitespowersports.com (‘Main Website’), registered in 2015, is the Applicant’s landing website and contains links to the Australian dealer website (registered in 2017) (‘Dealer Website’) and the Australian consumer retail website (‘Retail Website’). Larkin annexes:

·     printouts including Wayback Machine printouts from the Main Website from 2015 to 2022 together with visitor statistics of users, new users and sessions for the periods 1 April 2018 to 31 March 2019 and 1 April 2019 to 16 April 2023. I note that the Applicant is described in 2019 as ‘Australia’s fastest growing motorcycle parts and accessories distributor’ and use of the trade marks , WHITES ONLINE,  and WHITES POWERSPORTS and additionally in May 2022 and the Trade Mark.

·     printouts including Wayback Machine printouts from the Dealer Website from 2016 to 2023 together with visitor statistics of users, new users and sessions for the periods 1 April 2018 to 31 March 2019 and 1 April 2019 to 16 April 2023. I note use variously of the trade marks, WHITES POWERSPORTS,  and  and additionally in March 2022 ; and

·     printouts including Wayback Machine printouts from the Retail Website from 2018 to 2022 together with visitor statistics of users, new users and sessions for the periods 1 April 2018 to 31 March 2019 and 1 April 2019 to 16 April 2023. I note use variously of the trade marks , Whites, WhitesMoto and and additionally in 2022 and 2023, the use of the Trade Mark. I also note reference in January 2018 to tools and workshop goods, and in March 2020 and 2021 reference to, although the tools appear to be specifically for motorcycles and ATVs. The website states the following in 2020:

17.    Larkin attests that before 2023, traffic to the domain name (registered in 2015) was diverted to the Main Website. In 2023, this website was no longer a diverting website. Larkin annexes printouts from this website as at 17 April 2023. I note use of the Trade Mark and the trade mark WHITES and references to the categories ‘tools’, ‘accessories’ and ‘electrical’. Visitor statistics to this website from Australian based users are provided.

18.    Larkin provides annual sales revenue for the:

·     Dealers (Whites Powersports) arm of the Applicant’s business for the financial years 2015 to 2023 which is significant and steadily increasing every year;

·     Spare parts (Whites Motorcycle Parts) arm of the Applicant’s business for the financial years 2015 to 2023 which is reasonable and steadily increasing every year; and

·     Retail (Whites Moto) arm of the Applicant’s business for the financial years 2017 to 2023 which is low but steadily increasing every year.

19.    Larkin states that the Trade Mark is primarily used in respect of motorcycle products, which is the Applicant’s target market. Larkin further states that the Applicant’s Goods are either sold by the Applicant or are clear extensions of its current range of products intended to be sold by the Applicant. Larkin annexes an undated copy of a catalogue of the Applicant’s Goods currently sold in Australia under the Trade Mark. I note the majority of these goods are prefaced with the trade mark WHITES.

20.    Larkin claims advertising and promotion by the Applicant as follows:

·     publication of a monthly newsletter called Whitepages which is sent to all Australian dealers since 2015 annexing copies of Whitepages from 2015 to June 2021 and 2022 to 2023. I note use variously of the trade marks WHITES POWERSPORTS, , WHITES, , WHITESMOTO, and Whites Motorcycle Parts before August 2021 and after August 2021 use of the additional trade marks ,  and additionally in July 2021 and thereafter, use of the Trade Mark with or without the words ‘Motorcycle Parts’. I also note reference to hardware packs in 2019 which include bolts and flange bolts and a variety of other tools such as spanners, pliers and wrenches and lights such as spotlights and LED light bars.

·     Facebook pages:

owww.facebook.com/whitespowersports/ created in May 2017 annexing an undated extract from that page and providing follower numbers which are low. The ‘Intro’ on the home page states ‘Distributor of Motorcycle Parts and Accessories in New Zealand and Australia’.

owww.facebook.com/WhitesMoto.com.au/ created in February 2017 annexing a post showing the Trade Mark dated in 2023 and providing follower numbers which are low. The ‘Intro’ on the home page states ‘WhitesMoto.com.au lets you search for your bike and find everything that fits it’.

21.    Larkin provides the first two pages of undated Google search results claimed to be dated 5 April 2019 and 4 May 2023 for the terms ‘WHITES POWERSPORTS’, ‘WHITES MOTORCYCLE PARTS’ and ‘WHITES MOTO’. I note that all references on the first 2 pages of these search results are to the Applicant or a related company other than three eBay references from the ‘WHITES MOTO’ 2019 search.

Discussion and reasons

Section 44

22.    Section 44 relevantly provides (several notes omitted):

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.

Note 1:For deceptively similar see section 10.

Note 2:For similar goods see subsection 14(1).

(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.

Note 1:For deceptively similar see section 10.

Note 2:For similar services see subsection 14(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.

(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.

Note 1:An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2:For predecessor in title see section 6.

Note 3:For priority date see section 12.

.

23.     The SGP nominates the following three registrations in the name of the Opponent (‘Opponent’s Marks’) details of which appear below:

Number	Trade mark	Goods and services	Priority date
645455 (‘455 Mark’)	Class 6: Tool boxes, tool cabinets and tool chests	10 November 1994
1801423 (‘423 Mark’)	Class 3: Abrasives, including abrasive preparations, abrasive materials, abrasive boards, abrasive cloths and abrasive compounds; discs of abrasive materials and blocks of abrasive materials; compounds in this class, including abrasive compounds, grinding compounds and other compounds for use in grinding, abrading, sanding and/or polishing Class 6: metal tanks, storage chests and storage apparatus of metal; tool boxes and tool chests of metal (empty); parts, fittings and accessories in this class for all the aforesaid goods Class 7: Machines, including abrading machines, grinding machines, bench grinding machines, sanding machines, polishing machines, metal marking machines and auger machines; machine tools; sanding belts and sanding disks for use with machines; abrasive wheels and abrasive bits for machines; welding electrodes; compressors, including air compressors and compressors for fluids and gases; compressed air machines and tools; pneumatic tools; air powered tools, including for drilling, inflating and spraying; welding apparatus, machines and equipment, including electric and gas welding apparatus, machines and equipment; welding torches; vacuum cleaners, including wet and dry vacuum cleaners, high pressure washers and cleaners; pumps, including water pumps, fluid pumps, air pumps and pneumatic pumps; electric power supplies, uninterruptable power supplies and generators in this class; air hose reels; non-metallic hoses for use in hydraulic systems in machines; drill bits and auger bits for machines; parts, fittings and accessories in this class for all the aforesaid goods Class 8: bits, including drill bits and auger bits, for hand tools; bench vices; abrasive wheels and abrasive bits for hand tools; parts, fittings and accessories in this class for all the aforesaid goods Class 9: electric and electronic motor controls, electrical control apparatus for welding machines; welding apparatus, instruments and equipment in this class, including electric and electric arc welding apparatus, instruments and equipment; welding helmets and welding masks; eyewear including protective eyewear; power sources, power supplies, uninterruptable power supplies, batteries and chargers for batteries and other power sources and supplies, including for welding apparatus, instruments and equipment; protective and safety equipment and clothing, including helmets, masks, visors and shields for welding; parts, fittings and accessories in this class for all the aforesaid goods Class 20: Water storage tanks of plastic; tanks, not of metal or masonry; parts, fittings and accessories in this class for all the aforesaid goods	7 October 2016
2137936 (‘936 Mark’)	Class 35: Export-import agency services; Import-export agencies in the field of energy; Import-export agency services; Import agency services; Business consultancy services relating to manufacturing	23 November 2020

24.     As a starting point, to successfully oppose the Application pursuant to s 44, the Opponent must establish that:

·at least one of the Opponent’s Marks has a priority date which is earlier than the Relevant Date and is held in a name other than that of the Applicant (the ‘first requirement’);

·the Trade Mark is substantially identical with or deceptively similar to at least one of the Opponent’s Marks (the ‘second requirement’); and

·the Subset Goods and Services are similar to the Opponent’s goods or the Opponent’s services or are closely related to the Opponent’s goods or services (the ‘third requirement’).

25.     I am satisfied that the priority date of each of the Opponent’s Marks is earlier than the Relevant Date and that the Opponent’s Marks are in a name other than the Applicant. Therefore, the first requirement is satisfied for the Opponent’s Marks.

26.     I move then to consider whether the Trade Mark is substantially identical with or deceptively similar to the Opponent’s Marks. In this regard, the Opponent’s Marks are all identical save that the 423 and 936 Marks are in colour. As the 423 and 936 Marks have no colour limitation, these marks are taken to be registered for all colours.[11] I therefore consider the Opponent’s Marks to be identical for the purposes of determining substantial identity and deceptive similarity and for this purpose, I refer to the Opponent’s Marks collectively as the ‘Opponent’s Mark’.

[11] Section 70.

27.     The SGP claims that the Trade Mark is similar to the Opponent’s Mark. The Opponent’s submissions only refer to the Trade Mark being deceptively similar to the Opponent’s Mark and not substantially identical.[12] In the Opponent’s oral submissions, the Opponent did not press that the Trade Mark was substantially identical. For the sake of completeness, I do not consider the Trade Mark to be substantially identical to the Opponent’s Mark. Compared side by side as a whole,[13] the Trade Mark has obvious visual and aural differences to the Opponent’s Mark and as a consequence, there is a total impression of dissimilarity.[14]

[12] Although the Opponent’s submissions contain the heading Substantially Similarity, all consideration beneath this heading refers only to deceptive similarity.

[13] The Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [13] (Windeyer J) (‘Shell’).

[14] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [62] (Gummow J).

28.     Next, I will consider whether the Trade Mark is deceptively similar to the Opponent’s Mark.

29.     Section 10 provides a definition of deceptively providing 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’.

30.     Justice Windeyer outlined the following approach for the assessment of deceptive similarity 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 [mark].[15]

[15] Shell (n 13).

31.     The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[16] conveniently stated the relevant principles, which were summarised in The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd[17] (‘The Agency’) as follows:

[16] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

[17] [2023] FCA 482, [55] (Jackman J).

(a)the resemblance between the two marks must be the cause of the likely deception or confusion;[18]

[18] 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;[19]

[19] 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;[20]

(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;[21]

(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’;[22]

(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;[23]

(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;[24]

(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; [25]

(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;[26]

(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’;[27]

(k)evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[28] and

(l)any intention to deceive or cause confusion may be a relevant consideration but is not required.[29]

[20] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).

[21] Ibid.

[22] Ibid.

[23] Swancom (n 18), [70], [77]-[80].

[24] Shell (n 13), [5].

[25] 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).

[26] Campomar Sociedad Limitada v Nike International Limited (2000) 202 CLR 45, 79 [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).

[27] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020 [50(ii)] (‘Woolworths’) restating the principles from Southern Cross (n 4), 594-595.

[28] Australian Woollen Mills (n 20), 658.

[29] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) (‘Hastag Burgers’) citing Australian Woollen Mills (n 20), 657.

32.    Distinctiveness of the compared trade marks is a factor that can legitimately be taken into account when considering deceptive similarity.[30] It is also relevant to take into account whether elements of the rival marks have a descriptive character’.[31]

[30] Stone & Wood Group Pty Ltd v Intellectual Property Development Corporation Pty Ltd (2018) 129 IPR 238, [66] (Allsop CJ, Nicholas, Katzmann JJ).

[31] The Agency (n 17), [73].

33.     In the case of a composite mark, all the elements of the mark must be considered in their context including the size, prominence, and the stylisation of words and devices, and the relationship of all these elements to each other.[32]

[32] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [100] – [111] (Yates J); Australian Meat Group Pty Ltd v JBS Australia Pty Ltd [2018] FCAFC 207, [78] (Allsop CJ, Besanko and Yates JJ); and Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [100] (Moore, Sackville and Emmett JJ) (‘Crazy Ron’s’).

34.    Justice French expressed the view in Woolworths Ltd v Registrar of Trade Marks (‘Woolworths’)[33] that the determination of whether, and to what degree, an applicant’s goods or services are similar to, or closely related to, the relevant goods or services of the earlier trade mark owner is ‘logically antecedent to’ assessing the similarity of the parties’ trade marks. In particular, French J explicitly approved the observation in Wilcox J’s first instance decision in the Woolworths matter that, ‘[t]he closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive’.[34]

[33] Woolworths (n 27), [39].

[34] (1998) 42 IPR 615, 624.

35.    In light of the authorities, I must decide whether there is a real tangible risk that the result of the use of the Trade Mark will be that a reasonable person will be caused to wonder whether it might not be the case that the Applicant’s Subset Goods and Services bearing the Trade Mark are from the same source as goods and services bearing the Opponent’s Mark. I must compare the respective wholes with regard to their essential or distinguishing features, and consider them visually and aurally, in the context of the relevant surrounding circumstances. I should account for imperfect recollection of the reasonable person.

36.    The Opponent submits as follows:

·the dominant features of the Opponent’s Mark are the prominent word WHITE with a W device in white on a geometric block background. The word INTERNATIONAL is in relatively smaller font and is a less distinctive component of the mark. The main impression on the consumer is WHITE with a W device;

·the Trade Mark consists of the word WHITES with a W device in white on a block geometric background; and

·a consumer of ordinary intelligence and memory, would not necessarily notice the slight differences in the two W devices, nor recall the difference between WHITE and WHITES. Based on imperfect recollection, there is a real and tangible danger that an ordinary consumer would consider the marks to be the same or at least related.

37.     The Applicant submits as follows:

·that the word WHITE in the Opponent’s Mark is not inherently distinctive as it is a common surname in Australia and a search of the Australian Trade Mark Register reveals 233 pending and registered WHITE trade marks in Australia and 18 WHITES trade marks in the classes of the Subset Goods and Services.[35] Therefore the word WHITE in the Opponent’s Mark should be read down and not characterised as an essential feature in the Trade Mark merely because it is the only word in a composite mark. The Applicant refers to Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd[36] and Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd;[37] and

·As the word WHITE is a common surname, the word WHITES is appreciably different and distinguishable from WHITE and taking into account the other features of the respective marks, the marks as a whole are distinguishable from each other.

[35] The results of these searches are not in evidence.

[36] [1978] HCA 11 (Barwick C.J., Stephen, Jacobs, Murphy and Aickin JJ).

[37] Crazy Ron’s (n 32).

38.     In my view, the Trade Mark is deceptively similar to the Opponent’s Mark. The ideas and impressions formed by the two trade marks are very similar, visually, aurally and conceptually, even bearing in mind that the letter W and the well known surname/colour WHITE/WHITES of the respective marks have low distinctiveness. The key visual and aural features of the respective marks are more than just a letter/surname combination. Both marks contain a stylised letter W and the word WHITE or WHITES. While the Opponent’s Mark also contains the diminutive word INTERNATIONAL, and the word INTERNATIONAL cannot be ignored,[38] it is non distinctive so it can, to some extent, be discounted in comparing the respective marks.[39]

[38] Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel [2021] FCAFC 8, [78] (McKerracher, Gleeson and Burley JJ).

[39] Re Broadhead’s Application (1950) 67 RPC 209, 215 (Evershed MR); Mond Staffordshire Refinery Co Ltd v Harlem (1929) 41 CLR 475, 477-8 (Knox CJ, Isaacs, Gavan Duffy, Rich and Starke JJ).

39.     Both marks display the same letter W albeit in different stylisations on a geometric background, where the geometric background in the Opponent’s Mark is a circle and the geometric background in the Trade Mark is a rhombus. The key features W and the word WHITE or WHITES are displayed in very similar configurations, namely the W left of the word WHITE or WHITES. The likely impression and connotation that consumers would form and recall of the Opponent’s Mark is the word WHITES and the letter W in the same plane. The configuration of the word WHITES and the letter W are likely to fix in the consumer’s eye. Consumers are unlikely to recall the exact geometric shape upon which the W resides nor the word INTERNATIONAL as they do not diminish the prominence and the main identifying element of the word WHITES and the letter W.

40.     Considering the prominence and placement of the word WHITE and the letter W in the Trade Mark, and the similarities when compared to the Opponent’s Mark, allowing for the imperfect recollection of consumers of ordinary memory and intelligence, I consider there to be a real, tangible danger that the trade marks are likely to be mistaken one for the other or one is associated with the other. The difference between the word WHITE and WHITES, the stylisation of the letter W and the differing geometric shapes do not create a point of distinction sufficient to mitigate the significant risk of confusion.

41.     I am satisfied that there is ‘a real, tangible danger’ that a consumer ‘might be caused to wonder’ whether the Subset Goods and Services originate from the same source. I find that the two marks under comparison are deceptive similar. The second requirement is therefore satisfied.

42.     I now turn to the third requirement, whether the Subset Goods and Services are similar to the goods and services of at least one of the Opponent’s Marks or closely related to the goods and services of at least one of the Opponent’s Marks.

43.     Goods are ‘similar to other goods’ if they are the same or of the same description as the other goods.[40] The factors relevant to the consideration of whether goods are similar include their nature including their origin and characteristics, uses made of the goods including their intended purposes, source of manufacture, respective trade channels and whether the ordinary consumer of the goods would regard the goods as being from a single source.[41] These can be conveniently summarised as: whether the respective goods are of the same nature; whether they are used by the same people for the same purposes; and whether the trade channels are the same. No single consideration is conclusive in itself.[42]

[40] Section 14(1).

[41] Re Jellinek’s Application [1946] 63 RPC 59 (Romer J).

[42] Southern Cross (n 4), 606.

44.     A fuller explanation of trade channels as approved by the High Court in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd[43] considers whether the goods 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 classes of customers, and whether by those engaged in their manufacture or distribution they are regarded as belonging to the same trade.

[43] Ibid.

45.     The question is one of fact[44] and the phrase ‘goods of the same description’ ought not to be given too restrictive a construction so as to be limited to goods substantially analogous in kind, or commonly used as mere substitutes or alternatives, the one for the other.[45]

[44] ReJ Lyons & Co Ltd’s Application [1959] RPC 120, 128 and 132 (CA UK) (‘J Lyons’).

[45] Ibid.

46.     In Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd, Burchett J said:

[The object of s 23(2)][46] seems plainly to be the avoidance of confusion and deception in the market place, which would be likely to arise should a mark become available for use by two or more different companies, which are unrelated, upon goods of the same description. From that point of view, the expression “goods of the same description” is generally to be understood in such a sense that, if two different items are held not to fall within the expression, their sale under the same mark by different companies is not likely to lead to confusion or deception. That approach would seem to me to accord with the common sense business view recommended by Lord Evershed.[47]

[46] Trade Marks Act 1955 (Cth).

[47] [1993] FCA 265, 240 (‘Polo Textiles’).

47.     In Goodman Fielder Pte Ltd v Conga Foods Pty Ltd, Burley J referring to the words ‘goods of the same description’ in the context of a s 92 removal action said:

Accordingly, courts in recent times have consistently found it to be of significance that the policy underlying the expression “goods of the same description” is the need to avoid any confusion and deception in the market place which would be likely to arise should a mark become available for use by two or more different companies upon goods of the same description. That policy, when considered in the context of modern shopping practices in large stores where multiple products can be displayed near each other, such as in supermarkets, tends to expand the likelihood that products that at first blush are of quite different character and which are manufactured differently will nonetheless be goods of the same description because there is an increased likelihood that goods will be placed in close proximity to each other in the same store.[48]

[48] [2020] FCA 1808, [286].

48.     Services of the same description may be services that one might expect to be provided by one trader under the same trade mark or those whose providers consider that they belong to the same trade. Essentially the principles enunciated in Southern Cross[49] and J Lyons[50] regarding goods of the same description apply in relation to services.[51]

[49] Southern Cross (n 4), 604.

[50] J Lyons (n 44).

[51] MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236 (Burchett, Sackville and Lehane JJ).

49. The Act does not define the words ‘closely related’. In Registrar of Trade Marks v Woolworths, French J stated that the relationship between goods and services, ‘may, and perhaps in most cases will, be defined by the function of the service with respect to the goods’.[52] The nature, function and circumstances of the trade, such as trade channels, are also relevant. The likelihood of consumer association of the services with the goods, because they are generally offered by the same people also may be a relevant factor.[53] It can also be relevant as to whether the services are performed directly upon or by the means of the goods and whether the goods and services are generally regarded by the ordinary consumer as originating in, or as being part of, the one industry or trade, or, a closely related industry or trade.[54]

[52] Woolworths (n 27), [38].

[53] Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods [2023] FCA 487, [40] (Kennett J). See also Enagic Co Ltd v Horizons (Asia) Pty Ltd (No 3) [2021] FCA 1512, [33] (Charlesworth J).

[54] Re Aussat Pty Ltd [1993] ATMO 55 (Hearing Officer Thompson).

50.     In considering the Subset Goods and Services and the Opponent’s goods and services, I should look to the ordinary meaning of the words and the notional normal and fair use, not restricting myself to how or in what goods or services the Opponent or Applicant actually trade.[55] I should consider the context in deciding whether ordinary consumers of the goods and services would see the goods and services as having the same trade origin[56] and judge the goods and services on the basis of business realities and common sense - and not on the basis of abstract reasoning.[57] I should also be aware that the nomination of a class for particular goods is not decisive as to the scope of a given registration.[58]

[55] Woolworths (n 27), [88] (Branson J); Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43, [11] (Mason J).

[56] Southern Cross (n 4), 606; E & J Gallo Winery v Lion Nathan Australia Pty Limited [2009] FCAFC 27, [73] (Moore, Edmonds and Gilmour JJ).

[57] Polo Textiles (n 47).

[58] Energy Beverages LLC v Cantarella Bros Pty Ltd [2023] FCAFC 44, 132 (Yates, Stewart and Rofe JJ).

51.     The Opponent argues that the Subset Goods and Services are of the same description as the goods and services of the Opponent’s Marks.

52.     The Applicant submits that at most there is only a limited degree of crossover in the respective goods and services and the Applicant should be given an opportunity to refine the Subset Goods and Services should it be held that some of the Subset Goods and Services are similar or closely related to the goods and services of the Opponent’s Marks.

53.     The Subset Goods and Services are in classes 7, 8, 9 and 35 and cover a wide variety of goods and services. It is necessary to break down the Applicant’s Goods and Services and make a number of separate comparisons.

Similar goods

Class 7

Applicant’s goods

Opponent’s goods

Class 7: Brushes being parts of motors and engines for motor vehicles; gaskets for internal combustion engines for motor vehicles; fuel filters for motor vehicles; air filters for motor vehicles; fuel pumps for land vehicles; motor mufflers for motor vehicles; exhausts for motors and engines for motor vehicles; pressure regulators being parts of machines for motor vehicles; engine timing components, namely, cam sprockets and chains for motor vehicles; starter motors for motor vehicles; kick starters for motorcycles; taps being parts of engines for motor vehicles; radiators for motors and engines for motor vehicles; gaskets for internal combustion engines for motor vehicles; radiators for motors and engines for motor vehicles; mechanical lifts and jacks for motor vehicles; loading ramps for motor vehicles; sensors being parts of internal combustion engines for motor vehicles; parts, fittings and accessories for the aforesaid

Class 7: Machines, including abrading machines, grinding machines, bench grinding machines, sanding machines, polishing machines, metal marking machines and auger machines; machine tools; sanding belts and sanding disks for use with machines; abrasive wheels and abrasive bits for machines; welding electrodes; compressors, including air compressors and compressors for fluids and gases; compressed air machines and tools; pneumatic tools; air powered tools, including for drilling, inflating and spraying; welding apparatus, machines and equipment, including electric and gas welding apparatus, machines and equipment; welding torches; vacuum cleaners, including wet and dry vacuum cleaners, high pressure washers and cleaners; pumps, including water pumps, fluid pumps, air pumps and pneumatic pumps; electric power supplies, uninterruptable power supplies and generators in this class; air hose reels; non-metallic hoses for use in hydraulic systems in machines; drill bits and auger bits for machines; parts, fittings and accessories in this class for all the aforesaid goods

54.     Orally, the Opponent submitted that all the Applicant’s class 7 goods were similar to the Opponent’s goods in class 7.

55.     The Opponent’s goods in class 7 claim machines and parts and accessories for machines. A machine is defined in the Macquarie Dictionary Online as: ‘noun 1. an apparatus consisting of interrelated parts with separate functions, which is used in the performance of some kind of work e.g. sewing machine. 2. A mechanical apparatus or contrivance; a mechanism. 3. Something operated by a mechanical apparatus, as a motor vehicle, a bicycle, or an aeroplane. 4.Mechanics a. a device which transmits and modifies force or motion. b. simple machines, the six (sometimes more) elementary mechanisms, that is, the lever, wheel and axle, pulley, screw, wedge and inclined plane’.

56.     A machine is a device that can be operated mechanically, electrically, or electronically for performing a task. Therefore, a machine does not require the use of a cord, battery, compressed air or power source to be operational and some hand tools which are operated manually, for example, a hand drill can be considered a machine.

57.     Given the broad definition of the word machine, vehicles, motorcycles, motors and engines, including those used in vehicles and motorcycles, are machines. The Applicant’s goods cover a variety of parts and accessories for vehicles, motors and engines. Regardless of the Applicant’s limitation of motors and engines to land vehicles, motor vehicles or motorcycles, I am satisfied that the Applicant’s goods in class 7 are all parts and accessories for vehicles, motors and engines, and are therefore parts and accessories for machines, and they fall within the Opponent’s claim to parts and accessories of machines. The Applicant’s goods in class 7 are therefore similar to the goods of the Opponent’s 423 Mark.

Class 8

Applicant’s goods

Opponent’s goods

Class 8: hand tools and implements (hand-operated) for use with vehicles; hand tools for use with vehicles, namely, ball joint separators; hand-operated automotive repair tools, namely, brake cylinder hones; hand-operated automotive repair tools, namely, brake pad spreaders; hand-operated automotive repair tools, namely, brake spring removers; hand-operated automotive repair tools, namely, disc brake piston cubes; hand-operated automotive repair tools, namely, drum brake adjusting tools; hand-operated automotive repair tools, namely, engine cylinder hones; hand-operated automotive repair tools, namely, ring compressors; hand-operated automotive repair tools, namely, valve holders; hand-operated automotive repair tools, namely, valve spring compressors; hand-operated automotive repair tools, namely, valve spring depressors; hand-operated automotive repair tools, namely, magnetic pick-up tools; hand operated lifts and jacks for vehicles; chain breaker tools for use with motorcycle chains; chain rivet tools for use with motorcycle chains, hand operated motorcycle lifting jacks; parts, fittings and accessories for the aforesaid

Class 3: Abrasives, including abrasive preparations, abrasive materials, abrasive boards, abrasive cloths and abrasive compounds; discs of abrasive materials and blocks of abrasive materials; compounds in this class, including abrasive compounds, grinding compounds and other compounds for use in grinding, abrading, sanding and/or polishing

Class 6: Tool boxes, tool cabinets and tool chests; metal tanks, storage chests and storage apparatus of metal; tool boxes and tool chests of metal (empty); parts, fittings and accessories in this class for all the aforesaid goods

Class 7: Machines, including abrading machines, grinding machines, bench grinding machines, sanding machines, polishing machines, metal marking machines and auger machines; machine tools; sanding belts and sanding disks for use with machines; abrasive wheels and abrasive bits for machines; welding electrodes; compressors, including air compressors and compressors for fluids and gases; compressed air machines and tools; pneumatic tools; air powered tools, including for drilling, inflating and spraying; welding apparatus, machines and equipment, including electric and gas welding apparatus, machines and equipment; welding torches; vacuum cleaners, including wet and dry vacuum cleaners, high pressure washers and cleaners; pumps, including water pumps, fluid pumps, air pumps and pneumatic pumps; electric power supplies, uninterruptable power supplies and generators in this class; air hose reels; non-metallic hoses for use in hydraulic systems in machines; drill bits and auger bits for machines; parts, fittings and accessories in this class for all the aforesaid goods

Class 8: bits, including drill bits and auger bits, for hand tools; bench vices; abrasive wheels and abrasive bits for hand tools; parts, fittings and accessories in this class for all the aforesaid goods

58.     The Opponent submits that the Opponent’s ‘abrasives’ (class 3), ‘abrading, grinding and polishing machines and machine tools’ (class 7) and ‘abrasive wheels and bits’ (class 8) are of a similar nature and purpose to the Applicant’s ‘hand-operated automotive repair tools, namely, brake cylinder hones and hand-operated automotive repair tools, namely, engine cylinder hones’ (class 8).

59.     The Applicant submits that cylinder hones are specialised goods in the automotive industry. and do not necessarily fall within the Opponent’s general purpose ‘abrasives’, ‘abrading, grinding and polishing machines’ and ‘machine tools and abrasive wheels and bits’.

60.     I understand that a cylinder hone is a tool which uses abrasive particles to refine the surface finish of a cylinder bore by creating a crosshatch pattern on the cylinder walls and can be used for any internal combustion engine, not only in the automotive industry.

61.     An abrasive is defined on the Macquarie Dictionary Online as: ‘noun 1. Any material or substance used for griding, polishing, lapping etc., as emery or sand’. In essence a cylinder hone is a tool for abrading and not a material or substance. A cylinder hone itself is not an abrasive and neither is it an abrasive wheel or a bit. As such, I do not agree with the Opponent that the Applicant’s cylinder hones are similar to the Opponent’s abrasives (class 3) or abrasive wheels and bits (class 8). There is no nexus between these goods.

62.     The Opponent’s ‘abrading and grinding machines and machine tools’ (class 7) are not limited in their application nor their mode of operation. In essence a cylinder hone is an abrasive tool or a tool for abrading. As such, I agree with the Opponent that the Applicant’s cylinder hones (class 8) are similar to the Opponent’s abrading and grinding machines and machine tools (class 7). Therefore, I am satisfied that the Applicant’s ‘hand-operated automotive repair tools, namely, brake cylinder hones and hand-operated automotive repair tools, namely, engine cylinder hones’ are similar to the Opponent’s ‘abrading and grinding machines and machine tools’.

63.     I am also not satisfied that the Applicant’s cylinder hones are similar to the Opponent’s ‘polishing machines’ (class 7). The purpose of a cylinder hone is not to polish, even though this may be an effect achieved by honing. You would not purchase a polishing machine to hone a cylinder. There is no nexus between these goods.

64.     The Opponent submits that the Applicant’s automotive tools (class 8) and regular workshop tools and workshop supplies have a large degree of overlap and are of similar natures and trade channels. For example, spanners are both workshop tools and hand-operated hand tools and implements for use with vehicles, and can be stored in the Opponent’s tool boxes, tool cabinets and tool chests (class 6). Tools and tool boxes are hardware items sold via hardware trade channels.

65.     The Applicant submits that spanners have much more general application than for use with vehicles and would not necessarily fall within the description of ‘hand tools and implements (hand-operated) for use with vehicles’ and it is a stretch to imply that because ‘hand tools and implements (hand-operated) for use with vehicles’ may be stored in ‘tool boxes, tool cabinets and tool chests’, that this makes the goods similar.

66.     I am not persuaded by the Opponent’s argument that the Applicant’s ‘hand tools and implements (hand-operated) for use with vehicles’ are similar to ‘tool boxes, tool cabinets and tool chests’ merely because they can be stored in these products. The inherent nature and characteristics of the goods and the intended use of the goods differ.

67.     The Opponent submits that the Opponent’s ‘machines, compressed air machines and tools, pneumatic tools and air powered tools’ (class 7) include pneumatic lifts, which are similar in nature and purpose to the Applicant’s ‘hand-operated lifts and jacks for vehicles and motorcycle lifting jacks’ (class 8). In addition, the Applicant’s various ‘hand operated tools and implements (hand operated) for use with vehicles’ (class 8) are simply hand-operated versions of the Opponent’s ‘pneumatic tools and air powered tools’.

68.     The Applicant submits that pneumatic lifts are not necessarily covered by the Opponent’s ‘machines, compressed air machines and tools, pneumatic tools and air powered tools’ (class 7) and do not crossover with the Applicant’s ‘hand-operated lifts and jacks for vehicles and motorcycle lifting jacks’. The Applicant also submits that there is no supporting evidence that the Applicant’s class 8 goods are hand-operated versions of the Opponent’s air powered tools.

69.     As stated above at paragraphs [55]-[56], a machine is a device that can be operated mechanically, electrically, or electronically for performing a task and some hand tools which are operated manually can be considered a machine. In my view, based on the nature and use of ‘hand operated lifts and jacks for vehicles and hand operated motorcycle lifting jacks’, they would be considered machines. As such they fall within the Opponent’s claim to machines (class 7) and are similar goods.

70.     This leaves consideration of the broad claim to ‘hand tools and implements (hand-operated) for use with vehicles’ in class 8 which the Opponent submits are simply hand-operated versions of the Opponent’s claim to ‘compressed air tools, pneumatic tools and air powered tools (class 7) which is broad and not limited to use with vehicles. While air powered tools and their hand operated versions have inherent differences in their power source, their uses would appear to be similar. For example, a hand operated drill and a pneumatic drill are both used for drilling and a hand operated pump and a pneumatic pump are both used for pumping. However, the Opponent has not demonstrated that such products are usually produced by the same manufacturers nor provided evidence that the trade channels through which the Opponent’s and the Applicant’s products are offered, bought, and sold are the same or similar nor how consumers would perceive the market for these goods. As such, I am not inclined on the evidence before me, to infer in the Opponent’s favour.

Class 9

Applicant’s goods

Opponent’s goods

Class 9: fuses; fuses for land vehicles; electrical switches; safety-warning lights for vehicles, namely, strobes, rotating lights and bar lights; signalling lights; light switches; flashing safety lights; computer hardware and data processing computers in motorcycles; vehicle on-board computer hardware, software and monitors for automotive application for use in reading driver-relevant data, namely, traffic and weather conditions, travel destination information, distance driven, range, fuelling and charging locations and parking information, as well as in providing safety and convenience information, namely, information about route planning assistance, emergency roadside assistance, emergency call functions, stolen vehicle recovery assistance, remote door unlock assistance, operator-assisted calls and concierge services; vehicle on-board computer hardware, software and monitors for automotive application for use in operating and controlling entertainment systems, communication systems, Internet access and navigation systems; vehicle on-board computer hardware and software for connecting to mobile devices to allow vehicle data to appear on the mobile device; rectifiers; voltage regulators; electric relays for motor vehicles; solenoid valves for motor vehicles; electric coils for motor vehicles; batteries for motor vehicles; tire pressure gauges; motorcycle helmets; motorcycle goggles; articles of protective clothing for wear by motorcyclists for prevention against accident or injury; parts, fittings and accessories for the aforesaid

Class 9: electric and electronic motor controls, electrical control apparatus for welding machines; welding apparatus, instruments and equipment in this class, including electric and electric arc welding apparatus, instruments and equipment; welding helmets and welding masks; eyewear including protective eyewear; power sources, power supplies, uninterruptable power supplies, batteries and chargers for batteries and other power sources and supplies, including for welding apparatus, instruments and equipment; protective and safety equipment and clothing, including helmets, masks, visors and shields for welding; parts, fittings and accessories in this class for all the aforesaid goods

71.     The Opponent submits that the Applicant’s class 9 goods overlap substantially with the class 9 goods of the 423 Mark. In written submissions, the Applicant stated that any overlap between the Applicant’s class 9 goods and the Opponent’s class 9 goods is restricted to batteries and protective clothing. However, in oral submissions, the Applicant stated that all ‘electrical goods related to the control of vehicles or their motors’ were similar goods.

72.     I agree with the Opponent and the Applicant that there is an overlap in respect of batteries and protective clothing. The Applicant claims:

·‘batteries for motor vehicles’. A battery is a power source and a supply of power. Therefore, these goods are similar to the Opponent’s ‘power sources, power supplies, uninterruptable power supplies, batteries and chargers for batteries and other power sources and supplies’.

·‘motorcycle helmets; motorcycle goggles; articles of protective clothing for wear by motorcyclists for prevention against accident or injury’. These protective wear goods are similar to the Opponent’s claim to ‘protective and safety equipment and clothing’.

73.     Further, the Applicant also claims ‘electrical switches’. Electrical switches are electrical controls for many products including motors. Therefore, in my view these goods are similar to the Opponent’s claim to ‘electric and electronic motor controls, electrical control apparatus for welding machines’.

74.     As to the remaining goods claimed by the Applicant, the Opponent’s submissions and evidence do not assist in the determination of which, if any, of the Applicant’s electrical goods are related to the control of vehicles or their motors on the basis of business realities and common sense.

75.     I find the Opponent has failed to discharge the onus for the remaining goods in class 9 and in particular which of the remaining goods claimed by the Application are electrical goods related to the control of vehicles or their motors.

Similar Services

Class 35

Applicant’s services

Opponent’s services

Class 35: wholesale, retail and distribution of motorcycle and automotive parts, fittings and accessories; the bringing together, for the benefit of others, a variety of motorcycle and automotive parts, fittings and accessories, enabling customers to conveniently view and purchase the goods; presentation of motorcycle and automotive goods on communication media, for retail purposes; discount services (retail, wholesale, or sales promotion services), in connection with motorcycle and automotive goods; export-import agency services in connection with motorcycle and automotive goods; advertising in connection with motorcycle and automotive goods; design of advertising materials in connection with motorcycle and automotive goods; graphic advertising services in connection with motorcycle and automotive goods; dissemination of advertising matter in connection with motorcycle and automotive goods; production of advertising material in connection with motorcycle and automotive goods; promotional advertising services in connection with motorcycle and automotive goods; marketing in connection with motorcycle and automotive goods; product marketing in connection with motorcycle and automotive goods; promotional marketing in connection with motorcycle and automotive goods; business promotion services in connection with motorcycle and automotive goods; sales promotion (for others) in connection with motorcycle and automotive goods; sales promotion services in connection with motorcycle and automotive goods

Class 35: Export-import agency services; Import-export agencies in the field of energy; Import-export agency services; Import agency services; Business consultancy services relating to manufacturing