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.[16]

1. Thus, if a total impression of similarity emerges from a comparison between the two marks, the marks are substantially identical.
2. In Pham Global, the Full Court clarified the way in which a 'side by side comparison' of trade marks is to be carried out in order to determine whether the two marks are substantially identical. The Full Court identified that the proper approach for determining whether trade marks are substantially identical is an evaluative process which begins with a comparison of the essential elements of the marks, before considering the differences between them. This is explained in Pham Global at [52]:

The required exercise of side-by-side comparison is not carried out in a factual and legislative vacuum. The purpose of the exercise is to decide if two trade marks are substantially identical, where a trade mark is "a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person" (s 17). Given this context, it is unlikely that the essential elements of a mark or its dominant cognitive clues are to be found in mere descriptive elements, which are not apt to perform this distinguishing role in respect of the relevant goods or services. While this does not mean that differences, including descriptive differences, may be ignored, it does mean that the side-by-side comparison is to be carried out cognisant of the essential elements of the mark.[17]

1. Whether there is substantial identity is a question of fact.[18]
2. The table below sets out the Used Marks and the Trade Mark side by side:

1. In my view, the invented and distinctive word 'SUPAW' is the key element common to the Trade Mark and the SUPAW PET BAKERY and SUPAWPET marks. I do not consider the SUPAWPET mark to be substantially identical to the Trade Mark. On a side by side comparison, the inclusion of the word 'PET' creates a distinct composite term 'SUPAWPET', which produces an impression of dissimilarity. I take a different view in relation to the SUPAW PET BAKERY mark. While 'SUPAW' remains its essential distinguishing feature, the additional words 'PET BAKERY' are purely descriptive of the nature and characteristics of pet bakery goods and services and therefore do not materially affect the mark's essential character. I take note of the words of the Full Court in Pham Global that 'it is unlikely that the essential elements of a mark or its dominant cognitive clues are to be found in mere descriptive elements, which are not apt to perform this distinguishing role in respect of the relevant goods or services'.[19] I find that a total impression of similarity is what emerges on making the side by side comparison and I am therefore satisfied that SUPAW PET BAKERY is substantially identical to the Trade Mark.
2. I move to consider whether the Device Mark or the Sign Mark are substantially identical to the Trade Mark. There is a clear lack of similarity between the Trade Mark and both the Device Mark and the Sign Mark. Considered as a whole, the Device Mark and the Sign Mark incorporate additional wording and a prominent cupcake image, none of which appear in the Trade Mark. These differences are sufficient to alter the overall impression conveyed by each mark. Accordingly, I am not satisfied that the Device Mark or the Sign Mark is substantially identical to the Trade Mark.
3. In conclusion, I consider that any use of SUPAW PET BAKERY before the Relevant Date would be considered use of the Trade Mark.

Are the Goods & Services the 'same kind of thing'?

1. I now move to consider whether the Applicant's Goods and Services are the 'same kind of thing' as the Used Goods & Services being 'baked foodstuffs for pets such as animal cakes, cookies, donuts, supplements such as egg yolk powder and taurine and other animal foodstuffs such as chicken and fish floss, chicken wing tips, roo tendons and quails' ('Used Goods') and the provision and preparation of these goods ('Used Services')'.
2. The meaning of 'same kind of thing' was considered by Finkelstein J at first instance in Colorado Group Limited v Strandbags Group Pty Limited where he stated:

It follows that proprietorship by first use is proprietorship in relation to the goods or classes of goods on which the mark has been used. The proprietor is entitled to have his mark registered in respect of those goods. This entitlement is not confined to identical goods or classes of goods. Registration may also be obtained for goods or classes of goods which is or are "a thing [or things] of the same kind" (Jackson & Co v Napper (1886) 35 Ch D 160, 178) or "like articles of production" (Columbia Mill Company v Alcorn, [1893] USSC 246; 150 US 460, 464 (1893)) or "articles of merchandise of the same kind" (Colman v Crump, 70 NY 573, 578 (1877)) or "kindred articles" (The Collins Co v Oliver Ames & Sons Corporation, 18 F 561, 570 (1882)), if there be any difference between these expressions. See also Edwards v Dennis (1885) 30 Ch D 454.[20]

1. Justice Allsop repeated these authorities in Colorado Group Limited v Strandbags Group Pty Limited[21] and further stated:

The aim of the enquiry is not to find some broad genus in which some common functional or aesthetic purpose can be identified. Nor is it an enquiry about the type of trade in which concurrent use might cause confusion. Rather, it is identifying, in a practical, common sense way, the true equivalent kind of thing or article. For example, use of a mark on hatchets or small axes, created proprietorship in relation to axes ... This approach recognises ownership or proprietorship in a mark beyond the very goods on which the mark is used, to goods "though not identical... yet substantially the same" (Hemming H B, Sebastian's Law of Trade Marks, 4th Ed at p 91) or "goods essentially the same ... though they pass under a different name owing to slight variations in shape and size.[22]

Authoritative discussions show that this extension to goods of the same kind is confined to goods that are essentially the same, though they may differ in size, shape and name.[23]

1. In the context of services, the Full Federal Court in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd adopted the test of whether the two services are 'true equivalents'. The Court stated:

...Thus, the "aim of the enquiry" is to identify, "in a practical, common sense way", the true equivalent kind of thing or article: Colorado at [89]. The proper approach, conformable with s 27 and s 58 of the Act, recognises ownership or proprietorship in the mark beyond the very goods on which the mark is used "to goods though not identical ... yet substantially the same" or goods "essentially the same ... though they pass under a different name owing to slight variations in shape and size": Colorado at [89], Allsop J, adopting the observations of the learned text writers acknowledged at [89].[24]

1. The Applicant's Goods and Services are all limited in scope to being, or being in relation to, baked foodstuffs for pets. In summary they are baked foodstuffs for pets and the provision and preparation of food and drink in relation to baked foodstuffs for pets. All the Used Goods are animal foodstuffs of one description or another, the majority being baked animal foodstuffs, and all the Used Services are the provision and preparation of animal foodstuffs. In my view, the following subset of the Applicant's Goods and Services are essentially or substantially the same as, or a true equivalent to, or a like article of production to the Used Goods & Services:

Class 31: Animal foodstuffs; Cat food; Cereal based foodstuffs for animals; Dog biscuits; Dog food; Food for animals; Food products for animals; Food for cats; Food for dogs; Food substances for animals; Milk-based foodstuffs for animals; Oat-based food for animals; Pet food; all the aforementioned being baked foodstuffs for pets

Class 43: Arranging for the provision of food; Cake baking; Cake decorating; Food cooking services; Consultancy services relating to food preparation; Food preparation; Decorating of food; Food sculpting; Preparation of food; Consultancy, advisory and information services in relation to the provision of food; Hospitality services being the provision of food; Provision of food; Provision of food by bakeries; Provision of information relating to the preparation of food; Take away food services; all the aforementioned being in relation to baked foodstuffs for pets ('Subset Goods and Services')

1. However, the Applicant's Services which appear below are not the same kind of thing as the Used Services:

Preparation of drink; Consultancy, advisory and information services in relation to the provision of drink; Hospitality services being the provision of drink; Provision of drink; Provision of drink by bakeries; Provision of information relating to the preparation of drink; all the aforementioned being in relation to baked foodstuffs for pets ('Remaining Services')

1. The Used Services do not cover or hint at the provision and preparation of drink. Providing and preparing food and providing and preparing drink are not true equivalents. Therefore the Trade Mark has not been used in respect of the Remaining Services.
2. I also observe that the Remaining Services are conceptually unclear. Services for the provision or preparation of 'drink' do not sit comfortably with the qualification 'all the aforementioned being in relation to baked foodstuffs for pets'. It is difficult to understand what practical or commercial activity is captured by the provision of drink services that are said to be 'in relation to' baked pet food. I am unable to identify what services of this kind would, in practice, fall within the specification. On its face, the qualification constrains the services in a way that deprives them of any intelligible subject matter.

1. I agree with the Applicant that as a general proposition, a dual company structure with an operating company and a holding company that owns and controls IP assets is not uncommon in commercial practice. However, I cannot agree with the Applicant that the Applicant's ownership of the Trade Mark is established by continuous use of the Used Marks on the Used Goods and Services from 2015 to the present based on the rights in these trade marks being held through related entities operating under common control. The fact remains that an applicant must be the owner of the trade mark at the time it makes an application. Given that the Applicant was incorporated only in August 2023, I am satisfied that, based on Cai's use of SUPAW since 2015 on the Used Goods and Services and the Agreement vesting any rights of the Used Marks in SPBO, SPBO and not the Applicant holds the earlier claim to ownership of the SUPAW trade mark in respect of the Subset Goods and Services.
2. Whether or not there is a corporate relationship between the Applicant and SPBO is not relevant to the question of ownership. Even if the Applicant could demonstrate that the Applicant and SPBO had a 'unity of purpose' and a relationship of control, this does did not alter the fact that the initial use of the Trade Mark by Cai on the Used Goods and Services, coupled with the Agreement, did not give the Applicant entitlement to file the Application in respect of the Subset Goods and Services as it was not the owner of the Trade Mark. The s 58 ground is therefore successful for the Subset Goods and Services.
3. Having found the s 58 ground of opposition established for the Subset Goods and Services, I am required to consider the remaining grounds in respect of the Remaining Services.

1. Section 44 relevantly provides (several notes 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.

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).

1. The SGP nominates the Registration under this ground. As a starting point, to successfully oppose the Application pursuant to s 44, the Opponent must establish that:
   • the Registration 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 the Opponent's Mark (the 'Second Requirement');
   • the Remaining Services are closely related to the Registered Goods (the 'Third Requirement').
2. In the event that each of these requirements is satisfied by the Opponent it may still be possible for me to allow the Application to proceed to registration for the Remaining Services if I am satisfied, pursuant to ss 44(3) and 44(4), that there has been honest concurrent use of the Trade Mark, there are other circumstances which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent's Mark.
3. I am satisfied that the priority date of the Registration is earlier than the Relevant Date and is in a name other than the Applicant. I am also satisfied that the Trade Mark is identical to the Registration. Therefore, the First and Second Requirements are satisfied.
4. I now turn to the Third Requirement, whether the Remaining Services are closely related to the Registered Goods.
5. 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'.[25] 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.[26] 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.[27]
   1. In my view given the Remaining Services are conceptually unclear, I am not satisfied that the Remaining Services are closely related to the Registered Goods. I cannot perceive any necessary relationship in nature or trade channel between the Remaining Services and the Registered Goods being animal care products. The s 44 ground is therefore not established.

Trade mark similar to trade mark that has acquired a reputation in Australia

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a) another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b) because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

1. To establish this ground, the Opponent must demonstrate the existence of another trade mark(s) which had acquired a reputation in Australia before the Relevant Date. The Opponent must then establish that because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.
2. The SGP identifies the Opponent's 'trade marks for, and incorporating SUPAW' including the Registration but does not specifically identify the trade marks which incorporate SUPAW in the SGP. I will therefore consider whether the Opponent has a reputation in the Trade Mark in respect of the Products.

1. The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick ('McCormick') as referring to 'the recognition of the [trade mark] by the public generally'.[28]
2. Further, Kenny J stated in McCormick that:

In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product ... public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.[29]

1. The reputation in the other trade mark must be amongst a 'significant or substantial' number of Australian consumers but this is tempered by the nature of the relevant market.[30] Here the relevant market of the Products, being animal care products, includes a great many Australians. Meanwhile, the 'existence and extent of reputation' must be established as a matter of fact by the Opponent.[31]
2. In Rodney Jane Racing Pty Ltd v Monster Energy Company, it was observed that:

The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[32]

1. The first use of the Trade Mark was 14 April 2021 announcing the launch of the APO business. This is only 2.5 years before the Relevant Date. The Opponent only provides 2 years of approximate annual revenue and 2.5 years of approximate advertising and promotional expenditure before the Relevant Date. Given the relevant market is animal care products these figures are far from significant. Further, social media metrics are low. The Opponent's evidence is also lacking in respect of qualitative dimensions. There is little evidence which concerns the image and values projected by the Trade Mark, and therefore the esteem or favour in which the Trade Mark is held by the public generally.
2. I am not satisfied on the balance of probabilities that the Trade Mark had the necessary reputation at the Relevant Date. Therefore s 60(a) is not satisfied and it is not necessary to consider s 60(b).

1. Section 42(b) provides that a trade mark must be rejected if its use would be contrary to law.
2. In summary, the SGP states that the Opponents have established a substantial reputation and goodwill in the Trade Mark and consumers are likely to be misled or deceived that the Applicant's activities, or possible activities, under the Trade Mark are in some way connected with, endorsed by or affiliated with, the Opponents and/or the Trade Mark. Therefore, the use of the Trade Mark by the Applicant would constitute conduct in breach of ss 18 and 29(1) of the Australian Consumer Law ('ACL') contained in Schedule 2 to the Competition and Consumer Act 2010 (Cth), and would also be passing off.
3. Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading. These are stricter requirements than s 60 which can be established if the use is likely to cause confusion or wonderment.[33]
4. Where use of a trade mark does not contravene s 18 of the ACL neither will it amount to the tort of passing off.
5. The Opponent seeks to rely on the reputation which I have already discussed in relation to the s 60 ground of opposition. Where a ground of opposition under s 60 is unsuccessful, reputation-based claims under ss 18 and/or 29 of the ACL will also fail, as will proceedings for passing off.[34]
6. The Opponent has accordingly not established its ground of opposition under s 42(b).

1. In Apple Inc. v Registrar of Trade Marks Yates J stated that:

My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[35]

1. In circumstances where an opposition has been established in respect of some, but not all of an applicant's goods or services, the Registrar may proceed to reject the application in its entirety, under the principles outlined above, but also has a discretion to offer an amendment to an applicant, allowing it to amend the application to remove goods and services for which a ground of opposition has been established. I note that in in Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited, Murphy J stated:

I consider the Court has power under s 65(7) of the Act to cut down the breadth of the application but I do not take that course when no party argued that the Court should do so, or identified a principled basis upon which the Court could approach such a task.[36]

1. In these circumstances where the opposition has been established for a significant proportion of the Applicant's Goods and Services and what would remain in the Application namely the Subset Services is not only de minimus at best, but the qualification of these services constrains them in a way that deprives them of any intelligible subject matter, I find there is nothing to compel me to offer the Applicant the opportunity to limit the Applicant's Goods and Services to the Subset Services. As such, I do not consider it appropriate to exercise my discretion and offer an amendment in respect of the Trade Mark.

1. Section 55 relevantly provides:

(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

Note: For limitations see section 6.

1. I have found the Opponent has established the ground of opposition it raised pursuant to s 58. I accordingly refuse to register the Trade Mark. If the Registrar is served with a notice of appeal, the disposition of the Application should be in accordance with the Court's order or direction.

1. Both parties have sought costs. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Applicant under s 221 in the relevant amounts under Schedule 8 of the Regulations.

[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) ('Regulations').

[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] HCA 82, [4] (Kitto J).