IP year in review: trade marks

This was an opposition against an application for LORD OF THE in classes 29 and 30, which was unsuccessful. 

Earlier marks: the opponent owns an earlier LORD OF THE RING registration in class 30. While it submits that the phrase LORD OF THE immediately brings to mind the opponent’s trade mark, under Australian law reputation of the opponent’s trade mark is not relevant when considering whether the marks are deceptively similar. The legal test is whether there is a real, tangible danger of deception or confusion, considered against the notional consumer's imperfect recollection of the earlier mark. The delegate found that the focus of the opponent’s trade mark is ‘the rings’, while the LORD OF THE mark’s focus is the abstract concept of power or dominance over a domain. The opponent’s trade mark conveys an overall conceptual meaning sufficiently different from the trade mark contained within it.

Reputation: the opponent has acquired a very significant reputation in Australia in its mark for books, movies and video games; however, such reputation does not extend to foodstuffs.

Bad faith: the LORD OF THE mark is a modification of the LORD OF THE FRIES mark that the applicant has traded under for over 15 years. The delegate rejects the opponent’s implicit submissions that consumer confusion will arise when a ‘lord of the’ formative mark is applied to any product that the applicant could merchandise.

Decision: opposition unsuccessful.

V

This was an opposition against an application for 1st Phorm International LLC in classes 5, 9, 25, 29, 30, 32, 41, which was partially successful for class 25, based on the opponent's earlier registration for  Peak Performance Production AB in class 25.

The delegate found that:

• both trade marks give the impression of the letter 'P', which is the lasting image consumers will retain. The differences are otherwise subtle and unlikely to be remembered. Given the noticeable differences, the marks are not substantially identical, but deceptively similar.
• while consumers exercise some care when purchasing clothing, these items are relatively inexpensive, and an imperfect recollection without careful consideration is likely to result in confusion or deception.
• the applicant has not demonstrated use of its mark before the priority date and can therefore not rely on the honest concurrent use defence.

Decision: Partially successful for class 25  

This was an opposition against an application for Oyster Shed for wine, which was successful.

The opponent was able to establish reputation in its mark OYSTER BAY for wine in Australia and that, because of the reputation, the use of the OYSTER SHED trade mark would be likely to deceive or cause confusion. The delegate considered the word OYSTER in the marks the prominent and distinctive component, and conversely found the terms BAY and SHED to be less disintictive since other wine brands are using these as well.

Decision: registration of OYSTER SHED was rejected. 

V

This was an opposition based on White International for abrasives, tool boxes, machines, bits, welding apparatus, tanks, import-export agency services (in classes 3, 6, 7, 8, 9, 20 and 35) against Whites for repair tools, vehicle safety and navigation apparatus, lights for vehicles, automotive parts and advertising and sales services in connection with vehicles and automotive parts (in classes 7, 8, 9, 11, 12, 22 and 35). The opposition was successful in relation to class 7, and partially in relation to classes 9 and 35. 

The test of deceptive similarity is not a side-by-side comparison, but a test of the impression that the marks would have on ordinary consumers. The delegate found the marks deceptively similar, and that a subset of goods and services overlapped or were closely related. The applicant argued that, despite the finding of deceptive similarity, its application should be allowed based on ‘honest concurrent use’, citing its use of the W WHITES mark since 2015 for motorcycle parts, and its natural expansion into tools and other goods. However, the delegate found that the applicant had done 'essentially nothing' to assess whether its expanded range of goods infringed third-party rights. The new application covered a significantly broader range of goods and services than previous registrations, and due diligence was required. As a result, the claim of honest concurrent use was rejected.

Decision: the opposition was successful in relation to class 7, and partially successful in relation to classes 9 and 35.     

V

This was an opposition against an application for TRADIES TRUST covering, among other things, chemicals, coatings, sealants and construction advice (classes 1, 2, 17, 37) which was not successful. 

Earlier marks: the delegate found that TRADIE has a low level of distinctiveness in respect of any goods or services that are directed to tradies (tradespeople) or to be used by tradies in the provision of their services. The test is whether there is a real, tangible danger of deception or confusion, considered against the notional consumer's imperfect recollection of the earlier mark. The mere presence of the word ‘TRADIE’ within each trade mark does not automatically render them deceptively similar. Both the words TRADIES and TRUST are equally dominant and memorable, and the TRADIES TRUST mark is alliterative.

Reputation: the delegate found that even if the opponent established a reputation in Australia in its TRADIE marks, they would not be satisfied that, by reason of this reputation, the use of the TRADIES TRUST mark would be likely to deceive or cause confusion. Any overlap is due to the shared use of the descriptive element TRADIE, and consumers would not likely be confused about the origin of the goods under the TRADIES TRUST mark.

Decision: opposition refused. The opponent was not able to establish grounds based on its TRADIE and TRADIE marks for overlapping goods and services.     

Is CALLKIT descriptive for software?

The application for CALLKIT for software had met with a distinctiveness objection. Following legal arguments and evidence filed, the applicant requested a hearing in which the delegate considered the case afresh and found that CALLKIT is inherently adapted to distinguish the applied-for goods from those of other traders.

The test for distinctiveness considers whether the mark is directly descriptive of the goods and, if so, the need of other persons, trading in goods of the relevant kind and being actuated only by proper motives to use the mark in connection with similar goods as a trade mark.

The applicant submitted that CALLKIT has no dictionary meaning and that it is not in common use in Australia or elsewhere—rather, it comprises an unusual juxtaposition of words with no ordinary meaning in the English language. In the context of software, CALLKIT does not have a sufficiently precise meaning for an ordinary signification to be established, noting that there are numerous different meanings for the terms ‘call’ and ‘kit’. The delegate accepted these submissions in the main.

Decision: the delegate overturned the examiner's decision and found that CALLKIT is inherently adapted to distinguish the applied-for goods from those of other traders.

This was an opposition by Sandoz AG against an application for ACC in class 5 in the name of name of Actor Pharmaceuticals Pty Ltd. No opposition ground was established, but the decision is on appeal. The parties are related, so the case deals with (i) who the owner of the ACC trade mark is and (ii) whether the applicant acted in bad faith.

Background

• The ACC trade mark was assigned from Florian Struengmann to the applicant, Actor Pharmaceuticals Pty Ltd. Mr Struengmann is the CEO and a director of the applicant.
• Florian Struengmann is the son of Andreas Struengmann, co-founder of Hexal.
• The Sandoz group of companies was previously owned by Novartis AG, which acquired Hexal in 2005 via a share purchase agreement (SPA). In 2023, Sandoz was spun off from Novartis, leading to the creation of Sandoz Group AG.

Ownership in ACC

• Hexal owned AU TM registration for nos. 780642 ACC and 803357 for ACC Hexal in class 5. The registrations were not renewed in 2008 / 2009. The ACC mark was never used in Australia.
• To establish ownership, the opponent needs to show that it used a substantially identical mark before the application filing date, for the same or similar goods. The expression ‘use’ is not limited to the use of a tangible object, and the phrase ‘in the course of trade' is wide enough to cover steps necessary for the production of goods as well as the actual placement of goods on the market.
• The delegate found that the opponent’s evidence only reflects a review of the business case, consultancy about health issues in Australian consumers and preliminary consulting on TGA approvals for a pharmaceutical product. This was not sufficient to show 'use' prior to the application filing date.  
• The delegate found that at the time of application no. 780642 was filed (in 1998), Hexal likely had an intention to use the trade mark, and was therefore the owner.    

Decision: no opposition ground was established but the matter is on appeal to the Federal Court of Australia  

Application to register GILLETTE as a defensive trade mark in classes 5, 7, 9, 10, 11, 14, 16, 18, 21, 24, 25, 28, 34, 35, 44.

Gillette was required to show that, because of its reputation, it is likely that the use of the term GILLETTE in relation to the applied for goods or services will be taken to indicate that there is a connection between those other goods or services and Gillette.

During examination, the examiner maintained the position that it was unlikely that the use of the trade mark in relation to all of the goods and services will be taken to indicate that there is a connection between those goods or services and the applicant.

Decision: the defensive application was accepted for a subset of the specification in classes 5, 7, 10, 11, 14, 18, 21, 24, 25, 28, 34, 44. Notably, most of the applied-for services were rejected as have no connection. Gillette has appealed the decision to the Federal Court of Australia.  

Why it matters: a major decision on deceptive similarity, dominant elements and the limits of honest concurrent use and own‑name defences.

The Full Federal Court on appeal overturned the primary judge's findings and held that Zip Co had infringed Firstmac's trade marks under s120 of the Trade Marks Act 1995 through its use of marks (including 'ZIPPAY' and 'ZIPMONEY') which were held to be deceptively similar to Firstmac's earlier 'ZIP' trade mark registrations, because 'ZIP' was the dominant and distinctive feature of Zip Co's marks. Additionally, the Full Court held that Zip Co did not have a defence to infringement based on honest concurrent use or good faith use of a corporate name, and that Firstmac's 'ZIP' registrations should not be cancelled or removed.

In September 2025, the High Court granted special leave to Zip Co to appeal the Full Federal Court's decision. Businesses should watch closely, as the outcome may clarify (or recalibrate) infringement principles heading into 2026 and beyond.

Why it matters: a significant case on scope of use, goods vs services, cancellation and limits of brand references, illustrating the importance of precise trade mark use and class‑based protection.

The Full Court cancelled Fanatics’ class 35 registrations and found infringement through the sale of FANATICS‑branded clothing under s120 of the Trade Marks Act 1995.

Specifically, the Full Court found that Fanatics' FANATICS and trade marks were in breach and had infringed FanFirm's FANATICS and trade marks through the sale of clothing goods branded with those marks.

However, it held that references to FANATICS on packaging and care labels did not constitute use as a trade mark. Similar references to FANATICS on Fanatics' website also did not constitute use as a trade mark in relation to certain goods, meaning Fanatics could continue operating its website in Australia, but only in relation to third-party-branded merchandise (as opposed to selling FANATICS-branded goods). The Court also found that towels and blankets were not goods of the same description as the class 24 items in FanFirm’s registration and hence did not infringe FanFirm's registrations.

Why it matters: a key decision on ownership and first use, reaffirming that early evidence of use, even decades old from a third party unrelated to proceedings, can determine trade mark ownership.

The Full Court dismissed Cantarella’s appeal, confirming that its ORO registrations in class 30 should be cancelled because Cantarella was not the first user of ORO for coffee in Australia. The Court accepted evidence showing Café Molinari SpA used ORO prominently and independently on packaging supplied to Australian distributors in 1995–1996. The Full Court was satisfied that Café Molinari SpA had used the word ORO on the coffee packaging (which included additional material, such as the words 'MISCELA DI CAFFÉ' and 'CAFFÉ Molinari') independently and prominently, such that it could be considered a trade mark in its own right.

Why it matters: an important decision on deceptive similarity and reputation under s60, especially for composite marks containing common words or personal names.

Justice Needham of the Federal Court dismissed Paige’s appeal from the Trade Marks Office’s rejection of its oppositions to the two applied‑for marks: and . Both opposition grounds—s44 (deceptive similarity) and s 60 (reputation)—were found not to be established.

In relation to the s44 ground, Justice Needham found that was not deceptively similar to PAIGE, notwithstanding that PAIGE was fully contained in . Justice Needham found that the inclusion of the word 'Sage' (also taking into account its placement and rhythm with 'Paige') contributed to the nuance and complexity of the impression of mark and gave it a 'distinct flavour' such that it had a sufficiently different overall impression.

In relation to the s60 ground, Justice Needham considered there to be limited evidence of the reputation of the PAIGE brand in Australia at Sage and Paige's priority date of 17 June 2020, and so it could not be said to have a 'strong presence' in Australia.

Why it matters: a significant ruling on ACL misleading conduct and passing off, especially in the context of online retail targeted at Australian consumers.

Justice Jackman of the Federal Court held that Jackson's Art Supplies had engaged in misleading or deceptive conduct under s18 of the Australian Consumer Law and the tort of passing off because ordinary Australian consumers would be likely to believe its business was affiliated with Jacksons Drawing Supplies. Notably, although Jackson's Art Supplies was a UK-based company with an Australian subsidiary, its website included Australian-specific features (such as an 'en-au' subdomain, prices in Australian dollars and an Australian warehouse address and contact information), and so was considered to be specifically directed at Australian consumers. However, Justice Jackman refused the injunctive relief sought by Jacksons Drawing Supplies due to its delay in commencing proceedings. Jacksons Drawing Supplies could not bring a trade mark infringement claim because it did not have any registered trade marks at the time of the proceedings.

Why it matters: a notable decision on deceptive similarity and the revocation mechanism under s84A, demonstrating the importance of conceptual and visual differences.

The National Cancer Foundation was successful in its appeal of an Australian Trade Marks Office decision to revoke its 'Brown Nose Day' trade mark registration in class 36 for charitable fundraising services. The Registrar of Trade Marks sought revocation of the registration under s84A of the Trade Marks Act 1995 on the basis that the trade mark should not have been registered because the examiner erred in failing to raise an objection under s44 based on similar prior 'Red Nose Day' trade marks during the examination process, and because it was reasonable to revoke the registration of the trade mark, taking into account all of the circumstances.

Justice McEvoy of the Federal Court held that the 'Brown Nose Day' trade mark was not deceptively similar to the 'Red Nose Day' marks, and so National Cancer Foundation was able to retain its trade mark registration. Justice McEvoy found that the word 'Brown' differentiated the trade mark visually, orally and conceptually, and that the phrase 'brown nose' has a colloquial meaning that would be commonly understood. Justice McEvoy also accepted evidence that consumers are likely to carefully consider the charitable donations they make, and therefore would be less likely to confuse the marks.