Class 35: Wholesale and distribution of specialist marine equipment including fish finders, depth sounders and GPS systems, rigging, steering (mechanical, electrical and hydraulic), marine safety equipment, electronic and electrical accessories for marine applications, pumps and plumbing from marine applications, anchoring and mooring equipment, winches and accessories, hatches, ports and ventilation, seats and accessories, fuel fitting and outboard accessories and other like marine equipment

Class 37: Repair and installation of specialist marine equipment including fish finders, depth sounders and GPS systems, rigging, steering (mechanical, electrical and hydraulic), marine safety equipment, electronic and electrical accessories for marine applications, pumps and plumbing from marine applications, anchoring and mooring equipment, winches and accessories, hatches, ports and ventilation, seats and accessories, fuel fitting and outboard accessories and other like marine equipment

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; photographs; stationary; adhesives for stationery; plastic materials for packaging (not included in other classes)

Class 24: Textiles and textile goods, cloth, materials and fabrics

Class 25: Clothing, footwear and headgear, outdoor wear and sporting clothing

Class 35: Wholesale and retail distribution of specialist marine equipment including fish finders, depth sounders and gps systems, rigging, steering (mechanical, electrical and hydraulic) marine safety equipment, electronic and electrical accessories for marine applications, pumps and plumbing from marine applications, anchoring and mooring equipment winches and accessories, hatches ports and ventilation, seats and accessories fuel fitting and outboard accessories and other like marine equipment

Class 37: Repair and installation of specialist marine equipment including fish finders, depth sounders and gps systems rigging steering (mechanical electrical and hydraulic) marine safety equipment electronic and electrical accessories for marine applications pumps and plumbing from marine applications anchoring and mooring equipment, winches and accessories, hatches, ports and ventilation, seats and accessories fuel fitting and outboard accessories and other like marine equipment

1. I refer to the above trade marks collectively as the 'Cited Marks'. Both of the Cited Marks are in the name of AUS Holdco Pty Ltd.
2. The Applicants responded with submissions and information pertaining to use of the Trade Mark (although not in declaratory form). Nonetheless, over the course of six examination reports the ground for rejection was maintained. The Applicants then requested a hearing on the ground for rejection, to be conducted by way of written submissions.
3. The matter has been allocated to me to decide, in my capacity as a delegate of the Registrar. I mention that the purpose here is not a review of the examiner's decision but rather a fresh consideration of the ground for rejection.

Section 44

1. The relevant provisions of s 44 are reproduced below (noted omitted):

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

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

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

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

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

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

(a) it is substantially identical with, or deceptively similar to:

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

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

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

(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.

1. For the purposes of s 44, the priority date of the Trade Mark is the same as its filing date, being 26 January 2024.
2. A presumption of registrability is embodied in s 33 which provides that the Registrar must accept an application for registration unless satisfied that there are grounds for rejecting it (thereby placing the onus for proving the ground upon the Registrar, rather than placing the onus to prove registrability upon the Applicants). Accordingly, I am not entitled to reject the Trade Mark unless satisfied that either or both of the Cited Marks:
   • is in the name of a person other than the Applicants;
   • has a priority date that is earlier than the priority date of the Trade Mark;
   • is in respect of similar goods or services, or closely related services and goods, to the Applicants' goods and services; and
   • is substantially identical with, or deceptively similar to, the Trade Mark.
3. If I am so satisfied, sub-ss (3) and (4) of 44 provide exceptions to sub-ss (1) and (2). Under those provisions I may accept the application because the Applicants have made honest concurrent use of the Trade Mark (s 44(3)(a)) or because other circumstances exist which would make acceptance proper (ss 44(3)(b)); or, if prior continuous use is established (s 44(4)), then I may not reject the application because of the Cited Mark(s).
4. It is straight-forward that the Cited Marks are in the name of a person other than the Applicants and that they each have a priority date which is earlier than the priority date of the Trade Mark. The two questions requiring greater consideration are whether the parties' goods and/or services are similar or closely related, and whether the Trade Mark is deceptively similar to either or both of the Cited Marks.

1. Section 14 defines 'similar goods' and 'similar services'. Goods are similar to other goods if they are the same or of the same description. The same applies to services. The expression 'of the same description' casts a wider net than 'the same': it is a term of art 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 deception or confusion'.[2] As to the comparison between goods on the one hand and services on the other, goods and services are different things and so cannot be 'similar' to each other. However, the courts have recognised that there can be a form of relationship between goods and services wherein deceptive similarity may arise. Such goods and services are said to be 'closely related'.[3]
2. Under ss 44(1) and 44(2) it is the notional scope of goods and services which is considered. That is, 'deceptive similarity must be considered in respect of all of the goods or services coming within the specification in the application and in respect of which registration is desired'.[4] The notional scope of a party's goods or services is therefore governed by the words used to describe said goods and services in the respective specifications, and not by what the party's trade mark has been applied to in the marketplace.
3. I consider it relatively straightforward that the Applicants' goods in class 16 are similar to the goods specified in class 16 of the Cited Marks. For convenience each party's goods in class 16 are shown below; the specifications in class 16 of the Cited Marks being identical and so shown only once.

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; photographs; stationary; adhesives for stationery; plastic materials for packaging (not included in other classes)

Class 16: Book covers; Book jackets; Book wrappings; Books; Books for celebrating important events; Books for use in the teaching of reading; Books pertaining to grammar; Books pertaining to language comprehension; Books relating to business; Business books; Covering materials for books; Covers for books; Exercise books; Files for exercise books; Instruction books; Jackets of paper for books; Jackets of plastic for books; Memo books (printed matter); Memo books with pens attached; Memorandum books; Non-fiction books; Note books; Paper for wrapping books; Printed books; Protective book covers; Protective covers for books; Protective jackets for books; Reference books; Technical books; Vocabulary note books (printed matter); Writing books; Instruction manuals relating to training seminars; Booklets for use in conducting training workshops; Manuals for business training courses; Printed training guides; Training booklets; Training guides in the form of printed matter; Training manuals in the form of printed matter; Training materials (other than apparatus)

1. The **'**Paper, cardboard and goods made from these materials, not included in other classes' of the Cited Marks are similar to the 'Book covers; Book jackets; Book wrappings; Covering materials for books; Covers for books; Jackets of paper for books; Paper for wrapping books; Protective book covers; Protective covers for books; Protective jackets for books' of the Applicants. Goods which cover books including covers, jackets and wrappings, are commonly made from paper, and protective covers for books are commonly made from cardboard - especially where they are packaged for transportation.
2. 'Printed matter' in the Cited Marks is similar to the remainder of the Applicant's goods in class 16, being 'Books; Books for celebrating important events; Books for use in the teaching of reading; Books pertaining to grammar; Books pertaining to language comprehension; Books relating to business; Business books; Exercise books; Files for exercise books; Instruction books; Memo books (printed matter); Memo books with pens attached; Memorandum books; Non-fiction books; Note books; Printed books; Reference books; Technical books; Vocabulary note books (printed matter); Writing books; Instruction manuals relating to training seminars; Booklets for use in conducting training workshops; Manuals for business training courses; Printed training guides; Training booklets; Training guides in the form of printed matter; Training manuals in the form of printed matter; Training materials (other than apparatus)'. Printed matter is a broad description encompassing matter containing information in print form or otherwise matter in print form used for organization or record keeping such as diaries, receipt books or calendars (or in the Applicants' case exercise books, files memo books or note books). I am satisfied that the Applicants' goods in class 16 are the same, or of the same description, as the class 16 goods of the Cited Marks.
3. Whilst the Cited Marks specify services in other classes which are specifically in relation to marine equipment, there is nothing in their descriptions in class 16 which limits their goods to this field. Notionally, the class 16 goods of the Cited Marks may well be in relation to the same subject matter or be used for the same purposes as those of the Applicant. There is therefore little purpose in amending the Applicants' class 16 goods to exclude such goods in relation to marine equipment or boating (as proposed by the Applicants), given they would still be encompassed within the unlimited claims of the Cited Marks.
4. There is a relationship between the Applicants' publishing services in class 41 and the class 16 goods of the Cited Marks, and such services and goods may be considered closely related. Printed matter is usually the product of a publishing service, and trade marks of those who provide publishing services are commonly displayed on printed matter. However, the assessment of whether confusion or deception is likely to arise from the relationship between goods and services is influenced also by other factors including the degree of similarity between trade marks. For reasons that will become clear I am not satisfied that confusion or deception is likely to arise in this case.
5. I do not consider that any of the Applicants' other services are similar to the services of the Cited Marks or closely related to the goods of the Cited Marks.

1. Section 44 applies to trade marks that are substantially identical or deceptively similar. In Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd ('Shell') Windeyer J articulated the test for determining substantial identity as follows:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[5]

2. The Trade Mark is reproduced side by side with each of the Cited Marks below.

1. It is immediately apparent that none of the trade marks are identical or substantially so. The Trade Mark is dominated by the image of two crumpled union jacks which are divided by the words BRITISH LAW ACADEMY (with the by-line LEARN LAW & LEGAL ENGLISH) and the letters BLA within a laurel wreath. On the other hand, the first cited mark contains the image of a bird superimposed upon the letters BLA, and the second cited mark contains an abstract image of a bird next to the letters BLA. These differences between the trade marks immediately strike the eye, such that in a side by side comparison a total impression of resemblance does not emerge. I am therefore not persuaded that the Trade Mark is substantially identical to either of the Cited Marks.
2. As to deceptive similarity, Windeyer J continued in Shell:

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [trade mark].[6]

3. As noted by the High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, the notional consumer's imperfect recollection of the prior mark is at the centre of the test for deceptive similarity. The principle is that allowance must be made for a consumer knowing only the prior trade mark and recalling it imperfectly, and it is that impression which is to be compared with the applied-for trade mark.[7]
4. Deceptive similarity may also arise by way of contextual confusion, wherein differences between marks may be readily apparent and appreciated by consumers, but they may nonetheless be confused as to whether the marks are associated because of some shared feature in them. Examples include JESTS and EASYJESTS; MONOPOLY and MUSICOPOLY; YELLOW PAGES and YELLOWNET; CAT and LANDCAT; POLO and POLO CLUB; and VIAGRA and HERBAGRA.[8]
5. I consider it unlikely that consumers would mistakenly believe or be confused as to whether the Trade Mark was either of the Cited Marks, even allowing for imperfect recollection. There are stark differences in the parties' marks. Any confusion that might arise could only be by the mutual presence of the acronym BLA.[9]
6. BLA itself does not appear to have a commonly understood meaning amongst the general public. The Applicants provide various definitions of BLA from the Oxford Online Dictionary and the online Collins dictionary including that it is a variant of the words 'blah',[10] 'Blae' (a type of colour) or 'blaa' (a type of bread roll);[11] or that it refers to 'Bachelor of Landscape Architecture', 'Bachelor of Liberal Arts', and formerly 'Black Liberation Army'.[12] None of these are relevant to either party's goods or services, and so the acronym is not discounted to any degree on account of it being descriptive or common to the trade.
7. At the same time, it is arguable whether the acronym BLA itself, absent the laurel wreath (or any other feature of the Trade Mark) constitutes one of its essential features. Whilst I acknowledge that a distinctive acronym in a trade mark would usually be considered an essential feature, here it is overwhelmed by the two crumpled union jacks and the words BRITISH LAW ACADEMY, as well as appearing to be a unified feature with the laurel wreath within which it appears. It is also in a somewhat subordinate position to the side of the Trade Mark. The Full Federal Court cautioned in Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd:

[A]lthough everything depends on the particular circumstances of the case, some caution needs to be exercised before characterising words in a complex composite registered trade mark as an 'essential feature' of that mark in assessing the question of deceptive similarity. If such a characterisation is made too readily, it effectively converts a composite mark into something quite different.[13]

1. Whilst the Court was making its caution in respect of the essential features of a prior mark (and therefore ones which may be imperfectly recalled), it is nonetheless relevant when determining the essential features of the present Trade Mark. I consider the Trade Mark to be a complex composite mark and the acronym, of itself, is relatively minor.
2. I bear in mind also that the letters in the Trade Mark are unambiguously a reference to BRITISH LAW ACADEMY. As noted by a different Full Federal Court, in similar circumstances in Australian Meat Group Pty Ltd v JBS Australia Pty Limited, even the most casual observer would see the letters as a direct reference to the name appearing in the middle of the Trade Mark.[14]
3. Unlike the Trade Mark, neither of the Cited Marks are complex composite marks. They are relatively uncluttered, containing only the acronym BLA and an image of a bird (albeit each one styles the bird differently and places it in different positions). The image of a soaring bird and the simplicity of each of the Cited Marks evokes a feeling of freedom or serenity. Whilst BLA is an essential feature of the Cited Marks, owing to its relative size and positioning, the Cited Marks leave a distinctly different impression to that of the Trade Mark.
4. Comparing the presence that BLA has in the Cited Marks to the presence it has in the Trade Mark, I am not satisfied that this shared feature is one that will lead to confusion or deception. Accordingly, I am not satisfied that the ground for rejection applies here.
5. I briefly comment upon two matters which appear to be misapprehensions on the Applicants' part. The Applicants make submissions that BLA in the Cited Marks refers to 'boating lifestyle adventure', based upon another registered trade mark owned by AUS Holdco Pty Ltd:

1. However, this registration has not been raised as a basis for the ground for rejection, likely on account of the differentiation that the words 'boating lifestyle adventure' provides. What is relevant here is the Cited Marks, as registered, which do not contain those words.
2. The Applicants also raise allegedly inconsistent treatment by the Trade Marks Office of its other registered trade marks containing the words PROUD & DEADLY with a device of two boomerangs arranged in manner reminiscent of the aboriginal flag. The Applicants submit they had expected there would be no objections to the Trade Mark given there were allegedly no objections to the State Government of Victoria's trade marks consisting of the words DEADLY & PROUD (which the Applicants submit contain a shared feature, albeit in reversed order). The parties' trade marks appear below.

1. It is correct that of these trade marks the Applicants are first in the order of priority with their registration 1553757, registered in respect of a range of clothing and accessories in class 25. Three applications then follow, all by the State Government of Victoria. The first two of them are in respect of goods and services unrelated to clothing, and so it is not surprising that they did not face any objections. The third application by the State Government of Victoria was in respect of the same goods as the Applicants, and this one was not accepted. Rather, the Applicants' prior registration was cited against it and it too faced grounds for rejection. The last trade mark in the order of priority is the Applicant's second registration shown above, which originally faced grounds for rejection based upon the State Government of Victoria's first two applications. This is the correct approach. At that time the Applicants did not have any monopoly in relation to the classes relevant to the State Government of Victoria's first two applications. It is only after those applications were filed that the Applicants filed their own application in similar classes. All three of the applications by the State Government of Victoria have since been withdrawn.

1. Section 33 provides:

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

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

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

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

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

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

(4) The Registrar may not reject an application without giving the applicant an opportunity of being heard.

1. I am not satisfied that there is a ground for rejecting the Application under s 44. Accordingly, I accept trade mark application 2423154 and the Applicants will receive notification of the acceptance shortly.

[1] Any references to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) or a regulation of the Trade Marks Regulations 1995 (Cth) respectively, unless otherwise indicated.

[2] Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd [1993] FCA 203, [27] (Burchett J), cited in Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808, discussing the 'term of art' at [275]-[286] (Burley J).

[3] Registrar of Trade Marks v Woolworths [1999] FCA 1020 [37] (French J).

[5] [1963] HCA 66, [12].

[7] [2023] HCA 8, [28]-[29] (Kiefel CJ, Gageler, Gordon, Edelman And Gleeson JJ) (citations omitted). The comments are made in the context of infringement under s 120 but are nonetheless relevant to the assessment under s 44.

[8] Vivo International Corporation Pty Ltd v Tivo Inc [2012] FCAFC 159, [145]-[146] (Keane CJ, Dowsett and Nicholas JJ) (citations omitted).

[9] It is unlikely that BLA would be taken to be a word in its own right given it is not a familiar one in the English language. Moreover, the letters are clearly a reference to the words BRITISH LAW ACADEMY in the Trade Mark.

[13] [2004] FCAFC 196, [100] (Moore, Sackville and Emmett JJ).

[14] [2018] FCAFC 207, [72] (Allsop CJ, Besanko and Yates JJ).