1. The respective trade marks must be compared as wholes,[12] having regard to essential or distinguishing features,[13] and considering the marks visually and aurally, and in the context of the relevant surrounding circumstances.[14] What must be considered is the overall impression that the notional buyer, being a person of ordinary intelligence and memory, would likely have of the Word Mark and the Tuckerbox Word Mark, having regard to the look, sound, and ideas conveyed by the respective marks, and allowing for imperfect recollection.[15]
2. In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd, Kitto J noted the following regarding the risk of deception or confusion:

While a mere possibility of confusion is not enough - for there must be a real, tangible danger of its occurring - it is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough if the ordinary person entertains a reasonable doubt.[16]

1. 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.[17]
2. The presence of a common element is not conclusive to a finding of deceptive similarity.[18] In relation to the comparison of marks, the Full Court said in Starr Partners Pty Ltd v Dev Prem Pty Ltd:

The first step in the analysis is to identify the impression produced by the registered mark considered in its entirety. Similarity is not based on only part of the registered mark. On the other hand, when one decides upon the impression produced by that mark it is not improper to give more or less weight to particular features of it, provided the ultimate conclusion is based on a consideration of the mark in its entirety. This approach does no more than recognise that one word or feature of a mark can be more striking and memorable than another.[19]

1. The commonality of idea is part of the process of determining whether the marks look or sound alike. In Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd, the High Court observed:

[t]he fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them, although this fact could be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive.[20]

1. Justice French expressed the view in Registrar of Trade Marks v Woolworths[21] ('Woolworths') 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 Woolworths that, '[t]he closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive'.[22]
2. In light of the authorities, I must decide whether there is a real, tangible danger of deception or confusion by reason of the use of the Word Mark, having regard to the imperfect recollection of the notional consumer. That is not to be judged by a side by side comparison of the Word Mark and the Tuckerbox Word Mark. I must compare the marks as wholes, visually and aurally considering all their elements with regard to essential or distinguishing features, in the context of the relevant surrounding circumstances. Of importance is the effect and meaning of the trade marks, particularly their effect or impression produced on the mind of ordinary consumers.
3. The Opponent's written submission state that the Tuckerbox Word Mark covers 'wine, beer and cider' and has been used both locally and nationally in Australia. The Opponent submits that the Word Mark is deceptively similar to the Tuckerbox Word Mark particularly given that both brands reference the word Tuckerbox and the dog iconography. Consumers are likely to believe that goods marketed under the Word Mark originate from, are associated with, or are endorsed by the Opponent, creating a strong risk of marketplace confusion.
4. The Opponent also submits that the Tuckerbox Word Mark is strongly associated with the historic tourist site at Gundagai. The signage at the site itself references both the Word Mark and the Tuckerbox Word Mark and many visitors colloquially refer to the site as The Dog. Thus, the use of Word Mark for alcoholic beverages would be perceived as related to the Tuckerbox Word Mark.
5. The Applicant submits that the Opponent's use of its wider brands such as the word TUCKERBOX with dogs or dog iconography are irrelevant to the s 44 ground. The Tuckerbox Word Mark and the Tuckerbox Beer Mark, on their face, have nothing to do with dogs or dog iconography. The notional buyer, equipped with no knowledge of the Applicant's brand, would not draw an association between those marks and dogs and nor does the Applicant lead any evidence to suggest otherwise. Further, the Opponent relies on a purported association between the word Tuckerbox and the Dog on the Tuckerbox historic tourist site. The Opponent leads no evidence to support these contentions. The Applicant submits that there is nothing to suggest that the Tuckerbox Word Mark would cause the notional buyer to think of the Dog on the Tuckerbox memorial or Gundagai. Again, the Opponent's brand and any reputation residing in it are irrelevant to the s 44 ground.
6. The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[23] conveniently stated the relevant principles of deceptive similarity, which were summarised in The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd.[24] One such principle is that 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.[25] Thus I agree with the Applicant that the Opponent's submissions regarding the Opponent's use of the Tuckerbox Word Mark, the parties' brands referencing the word Tuckerbox and the dog iconography and the strong association of the Tuckerbox Word Mark with the historic tourist site at Gundagai are not relevant for the purposes of assessing deceptive similarity. These are matters extraneous to the Tuckerbox Word Mark. The correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the Tuckerbox Word Mark (as notionally used on Opponent's Goods), with the impression that the notional buyer would have of notional and normal fair use of the Word Mark anywhere in Australia.
7. The Opponent submits that the word Tuckerbox is the dominant and distinctive feature of the Trade Marks and the words 'Dog on the' 'do not do much'. In particular, these words do not mitigate risk, rather they enhance the risk because of the famous Dog on the Tuckerbox statue. The word Tuckerbox is wholly incorporated in the Trade Marks and is the core invented element likely to be remembered.
8. The Applicant submits that the word Tuckerbox is the essential feature and the only element of the Tuckerbox Word Mark: it is the idea which the mark will naturally suggest to the mind of one who sees it. Tuckerbox evokes an image of a box for carrying food. One cannot import a reference to a dog at all from the word Tuckerbox. By contrast, the phrase Dog on the Tuckerbox in the Trade Marks creates a distinct 'look, length and sound', unique to those marks. None of these essential features of the Trade Marks are present in the Tuckerbox Word Mark. Further, the words 'Dog on the', being the first and primary words in the Trade Marks totally change how the marks sound, and the meaning they convey, when spoken.
9. In my view, the Word Mark is not deceptively similar to the Tuckerbox Word Mark. Visually and aurally, I consider the respective marks compared as a whole are significantly different. The Word Mark consists of four words and the Tuckerbox Word Mark of one. The Word Mark contains, at the beginning of the mark, the three words - DOG, ON and THE. These three words at the beginning of the Word Mark cannot be ignored and neither would a notional consumer ignore these words and focus solely on the terminating word of the Word Mark.
10. The sole word in the Tuckerbox Word Mark is the word Tuckerbox. As the Applicant's submissions state, the word Tuckerbox is defined as 'any box used to hold food'.[26] The impression retained by a notional consumer is simply that solitary word with a well known meaning. When viewed as a whole, the ideas and impressions formed by the two trade marks differ, visually, aurally and conceptually. While there is a degree of visual and aural similarity in that both marks contain the word Tuckerbox, this alone is not enough to establish that the Word Mark is deceptively similar to the Tuckerbox Word Mark. The fact that one trade mark is incorporated in another is by itself not sufficient to make the trade marks deceptively similar. In some cases, such as this, a trade mark conveys an overall conceptual meaning sufficiently different from another trade mark which is contained within it, such that the trade marks are not deceptively similar. There are a number of factors that are relevant to this consideration, including most importantly, whether the additional element changes the idea and impression of the mark as a whole. Here the additional elements - 'Dog on the' clearly do.
    1. The question is whether there is a real tangible risk that the result of the use of the Word Mark will be that a reasonable person will be caused to wonder whether it might not be the case that goods and services bearing the Word Mark are from the same source as the Opponent's Goods bearing the Tuckerbox Word Mark. This consideration is not concerned with the mere possibility of deception or confusion between trade marks but a real, tangible danger of it occurring.
    2. After consideration of the differences in the respective marks, taken together, and even allowing for imperfect recollection, as a matter of impression and common sense they generate an overall visual, aural and conceptual impression of difference. A consumer would not confuse the Tuckerbox Word Mark with the Word Mark. I find that there does not exist a real, tangible danger of deception or confusion between the two and the s 44 ground is therefore not established.

Section 60

1. The provisions of s 60 are reproduced below:

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.

Note: For priority date see section 12.

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 Marks would be likely to deceive or cause confusion.
2. The SGPs repeat much of the evidence of use of the Opponent's trade marks stated in McMullen. In summary and relevantly, the SGPs state that the Tuckerbox Marks have acquired a substantial reputation in respect of the Opponent's Goods and based on this reputation, use of the Trade Marks, which are substantially identical with or deceptively similar to the Tuckerbox Marks, on the Opponent's Goods, would cause deception and confusion.

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'.[27]
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.[28]

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.[29] Here the relevant market for wine, beer and cider is very broad and as such, is likely to include most Australian households. Meanwhile, the 'existence and extent of reputation' must be established as a matter of fact by the Opponent.[30]
2. In Rodney Jane Racing Pty Ltd v Monster Energy Company ('Rodney'), 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.[31]

1. While the Opponent bases the s 60 ground on the Tuckerbox Marks, notably, each is considered a separate trade mark for the purposes of s 60.
2. The Opponent submits that the expression The Dog on the Tuckerbox is a cultural and regional symbol synonymous with Gundagai and its heritage. Granting a monopoly over this expression for wine, beer and cider risks restricting other local businesses from promoting their products and the Gundagai region through fair descriptive reference to this icon. Such an outcome would be contrary to the interests of local industry and the public, effectively privatising a community and cultural landmark for commercial advantage. These submissions, however, are not relevant to the s 60 ground. The confusion and deception contemplated by s 60 must arise as a consequence of the reputation in a trade mark. The submissions provided by the Opponent have nought to do with any reputation in any trade mark.
3. In the Opponent's oral submissions, the Opponent stated that the Opponent's reputation is strong and use of the Trade Marks will cause confusion as the Applicant's wine, beer and cider may be seen as a brand extension of the Opponent or associated with the Opponent.
4. The Applicant submits that its use of the Trade Marks is not likely to deceive or cause confusion as:
   • the Trade Marks are not deceptively similar to the Tuckerbox Marks;
   • the totality of evidence of the Opponent's use of the Tuckerbox Marks does not support a conclusion that any one of those marks has acquired a reputation in Australia such that the Applicant's use of its Trade Marks is likely to deceive or confuse because of that reputation; and
   • the Opponent's evidence is insufficient to prove that the Tuckerbox Marks have acquired the requisite reputation for the purposes of s 60. In particular, the evidence fails to distinguish between each of the Tuckerbox Marks.
5. There are many deficiencies in the Opponent's evidence and while my summary of McMullen highlights these deficiencies, the notable deficiencies are: undated photographs and evidence dated after the Relevant Date, which are both of limited value in establishing a reputation within Australia; unsupported claims that the Opponent's Goods are sold in over 3,000 Australian retail stores and restaurants Australia wide; unsupported claims that Yarraman used the Tuckerbox Word Mark; no social media or website metrics; no viewer numbers for TV segments; no readership numbers for newspaper articles (which are over seven years old); invoices which only refer to the Tuckerbox Word Mark and are mainly for beer and cider; no indication of cellar door numbers; and importantly, no domestic and international breakdown of sales, revenue and advertising costs.
6. I am aware from my own knowledge that the wine and beer markets in Australia, and to a lesser degree the cider markets in Australia, have many different producers and a very large number of products that are available for sale in the Australian market. The market for the Opponent's Goods is huge. With this in mind, even if the Opponent's sales, revenue and advertising costs related solely to Australia, in the massive Australian beer, wine and cider market, I find that these sales and revenue figures are minimal. Furthermore, the Opponent's advertising costs are also minimal.
7. In respect of the Tuckerbox Beer Mark, I also add that the Opponent's evidence only shows use of the words Tuckerbox Beer as part of the domain name www.tuckerboxbeer.com.au, which appears on the Opponent's cider label[32] and on proofs of the Opponent's beer and cider labels and banners.[33] Registration of a domain name, per se, is not use of a trade mark. In Sports Warehouse, Inc v Fry Consulting Pty Ltd, Kenny J stated:

It is not suggested that mere registration of a domain name can amount to use of the mark. More must be shown. Plainly enough, not all domain names will be used as a sign to distinguish the goods or services of one trader in the course of trade from the goods or services of another trader. Sports Warehouse is correct in its submission that that whether or not a domain name is used as a trade mark will depend on the context in which the domain name is used. In this case, the domain name is more than an address for a website, the domain name is also a sign for the applicant's online retaining service available at the website. In the context of online services, the public is likely to understand a domain name consisting of the trade mark (or something very like it) as a sign for the online services identified by the trade mark as available at the webpage to which it carries the internet user.[34]

1. The Opponent has not provided any evidence that there is an active website at the domain tuckerboxbeer.com.au. Therefore, for this additional reason, I do not find that the Tuckerbox Beer Mark had the necessary reputation at the Relevant Date.
2. As observed by O'Bryan J in Rodney,[35] the reputation of a trade mark has quantitative and qualitative dimensions. In my view, the Opponent's evidence of both quantitative and qualitative dimensions is lacking. There is insufficient evidence which concerns the image and values projected by each of the Tuckerbox Marks and therefore the esteem or favour in which each of the Tuckerbox Marks are held by the public generally. As a consequence, the evidence does not support a conclusion of any reputation in any of the Tuckerbox Marks, let alone a reputation sufficient to enliven s 60.
3. Given the market for the Opponent's Goods includes most, if not all, Australian households, having considered the totality of the Opponent's evidence, I am not satisfied there is a reputation in any of the Tuckerbox Marks in relation to the Opponent's Goods amongst a 'significant or substantial' number of Australian consumers. The Opponent has accordingly not established its ground of opposition under s 60.
4. I move then to consider the remaining grounds of opposition in the SGPs, namely ss 41, 42(b), 43, 58 and 62A. At the oral hearing, the Opponent did not abandon any of these grounds. However, the Opponent has also not provided any written or oral submissions for any of these grounds. On the basis that the Opponent has failed to provide any written or oral submissions, the Applicant submits that it is unnecessary for me, as the Registrar's delegate, to deal with these grounds in substance. Rather I should determine that because of the failure to make submissions the Opponent has failed to meet its onus of persuading the Registrar to uphold the ground. Further, the Applicant submits that the bases of the remaining grounds in the SGPs are unclear. In my view, even though the Opponent has failed to address these grounds in the written or oral submissions, I find there is sufficiently clear information in the particulars of the SGPs to have these grounds considered.

Section 42(b)

1. Section 42(b) provides that a trade mark must be rejected if its use would be contrary to law.
2. In its SGPs, the Opponent simply lists the 'Competition and Consumer Act 2010' ('CCA') and 'tort of passing off.' The Opponent has not indicated how the Applicant's use of the Trade Mark would contravene any section of the CCA or be considered passing off.
3. If the Opponent intended the s 42(b) ground to relate to misleading and deceptive conduct or representations under ss 18 and/or 29 of the Australian Consumer Law (contained in Schedule 2 of the CCA) ('ACL'), I consider that the s 42(b) ground would not be established. Sections 18 and 29 of the ACL have stricter requirements than s 60 which can be established if use is likely to cause confusion or wonderment. I have already held that the reputation in the Tuckerbox Marks was insufficient to trigger s 60. 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.
4. Further, where use of a trade mark does not contravene s 18 of the ACL neither will it amount to the tort of passing off.[36]
5. I am not satisfied that use of the Trade Marks by the Applicant would be contrary to law. Therefore, the Opponent has not established the ground of opposition under s 42(b).

The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note: For applicant see section 6.

1. The right to registration under the Act depends upon ownership of the trade mark and not ownership by registration[37] and this requirement must be satisfied at the filing date of the application.[38]. Ownership of a trade mark may be established 'either by reason of authorship and prior use or by reason of authorship, filing the application and an intention to use'.[39] Authorship in this context is not predicated on being the first to coin the trade mark, instead it refers to the first to adopt the trade mark with an intention of using it in Australia in respect of the claimed goods and/or services.[40]
2. The default position under the Act is that the Applicant is prima facie considered to be the owner of the Trade Marks. Consequently, it is the Opponent who bears the evidential onus of establishing otherwise. To succeed under this ground, the Opponent must establish:
   1. the trade mark(s) relied upon by the Opponent is at least substantially identical to the Trade Mark;[41]
   2. the Applicant's Goods and Services are the 'same kind of thing' as the Opponent's Goods for which the trade mark relied upon by the Opponent have been used;[42] and
   3. a person other than the Applicant has the earlier claim to ownership based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register or (b) any actual use of the Trade Marks.[43]
3. The SGPs provide:

1. In my view, regardless of which of the Tuckerbox Marks the Opponent claims to have used on the Opponent's Goods before any use or filing of the Trade Marks, given I have already found a lack of substantial identity of the Word Mark with the Tuckerbox Word Mark under the s 44 ground, I am satisfied that the Trade Marks are not substantially identical with any of the Tuckerbox Marks. Therefore, the Opponent has not established the ground of opposition under s 58.

Section 41

1. Section 41 relevantly provides (some notes omitted):

Trade mark not distinguishing applicant's goods or services

(1) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

(2) A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

(a) the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b) the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

(a) the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b) the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

(i) the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

(ii) the use, or intended use, of the trade mark by the applicant;

Note 1: Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services

1. The test to determine whether a trade mark is inherently adapted to distinguish was set out by Justice Kitto in Clark Equipment Co v Registrar of Trade Marks ('Clark Equipment'):

[The] ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner's goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others ... the question whether a mark is adapted to distinguish [is to] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[44]

1. In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd, the Full Court conveniently summarised the principles in respect of s 41 as follows:

(1) In deciding whether or not a trade mark is capable of distinguishing the designated services from the service of others, the first question is the extent to which the trade mark is inherently adapted to distinguish the designated services from those of others: s 41(2) and (3).

(2) In determining whether a trade mark is inherently adapted to distinguish the services of a trader, the answer largely depends upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their goods: Clark Equipment Co v Registrar of Trade Marks ("Clark Equipment") [1964] HCA 55; (1964) 111 CLR 511 per Kitto J at 514.

(3) The question of whether a trade mark is adapted to distinguish the services of the applicant is to be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives (in the exercise of the common right of the public to make honest use of words forming part of the common heritage for the sake of the signification which the words ordinarily possess) will think of the word and want to use it in connection with similar goods in any manner which would infringe the trade mark once registered: Clark Equipment at 514.

(4) Directly descriptive words, like geographical names, are not prima facie suitable for the grant of a monopoly conferred by registration of a trade mark because use of them, as trade marks, will "rarely eclipse" their "primary" (that is, their ordinary) signification. Such words (or a word) are unlikely to be inherently, that is to say, "in [their] own nature", adapted to distinguish the applicant's goods. Traders may legitimately want to use such words in connection with their goods or services "because of the reference they are 'inherently adapted to make' to those goods": Cantarella Bros Pty Limited v Modena Trading Pty Limited ("Cantarella") [2014] HCA 48; (2014) 254 CLR 337 at [57] per French CJ, Hayne, Crennan and Kiefel JJ.

(5) The principles derived from the observations of Kitto J in Clark Equipment apply with as much force to directly descriptive words as they do to words which are, according to their ordinary signification, geographical names: Cantarella at [57].

(6) In determining whether a word is (or words are) inherently adapted to distinguish the goods or services of an applicant, the question is to be examined from the point of view of the "possible impairment" of the rights of "honest traders" and from the "point of view of the public": Cantarella at [59].

(7) In determining whether a word contains (or words contain) a "direct reference" to the relevant goods or services (and thus prima facie not registrable as a trade mark) or whether the word (or words) makes a "covert and skilful allusion" to the relevant goods or services (and thus prima facie registrable as a trade mark), the "ordinary signification" of the word or words to persons who will purchase, consume or trade in the goods or services, must be considered: Cantarella at [59].

(8) Where the question is whether there are other traders who may legitimately want to use or apply a word or words in connection with their goods or services (other than a geographical name or a surname), the test refers to the "legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods": Cantarella at [59].

(9) Consistent with the proposition at (7), the test described at (8) does not encompass the desire of other traders to use a word or words which in relation to the goods or services are "allusive or metaphorical": Cantarella at [59].

(10) In determining whether a trade mark is inherently adapted to distinguish the designated goods or services for the purposes of s 41(3), the ordinary signification of the word or words are to be considered from the perspective of "any person in Australia concerned with the goods or services to which the trade mark is to be applied": Cantarella at [70].

(11) Consideration of the "ordinary signification" of any word or words said to constitute a trade mark is "crucial": Cantarella at [71]. That is so whether the word (or words) is said not to be registrable because: it is not an invented word and has direct reference to the character or quality of the goods or services; or, the word is laudatory; or, the word is a geographical name; or, the word has either lost its distinctiveness or it never had the requisite distinctiveness from the outset: Cantarella at [71].

(12) The process of reasoning in addressing s 41(3) of the Act involves first identifying the "ordinary signification" of the word in question and then undertaking an enquiry into whether other traders might legitimately need to use the word in respect of their goods: Cantarella at [71]. If a word contains an allusive reference to goods or services it is, prima facie, qualified for the grant of a monopoly as a trade mark under the Act. If, on the other hand, the word is understood, by the target audience, as having a directly descriptive meaning in relation to relevant goods or services then, prima facie, the proprietor is not entitled to a monopoly in respect of the word. As a general proposition, a word or words which are prima facie entitled to a monopoly secured by registration as a trade mark under the Act, according to this method, are inherently adapted to distinguish: Cantarella at [71].[45]

1. The Applicant submits that the SGPs are inadequate as they fail to specify whether the opposition is brought under ss 41(3) or (4), and therefore whether the Opponent alleges the Trade Marks are not 'to any extent inherently adapted to distinguish' or are 'to some extent, but not sufficiently, inherently adapted to distinguish'. Accordingly, the SGPs fall foul of reg 9.10[46] of the Regulations and the ground should be dismissed.
2. When the SGPs were filed by the Opponent they were assessed at that time by the Registrar and considered adequate under reg 5.8. Given there was no objection by the Applicant at the time of receiving the SGPs, at this stage of proceedings, I accept the adequacy of the SGPs. Further, in my view, I find there is sufficient information in the SGPs to consider the s 41 ground.
3. The Applicant submits that the Opponent has not led evidence to establish the signification of the Trade Marks to ordinary members of the public and has therefore failed to meet its evidential onus and I agree. There is no evidence before me to support the Opponent's claim that the Dog on the Tuckerbox is an extremely well known statue and tourist attraction or that the Trade Marks indicate the Opponent's Goods concern or relate to the statue. Further there is no evidence that the Trade Marks are descriptive of the Opponent's Goods nor descriptive of the place in which these goods could be provided (they would clearly not be provided on a statue) or that other traders would desire to use the Trade Marks in respect of the Opponent's Goods or similar goods. As the Opponent's evidence is insufficient to substantiate this ground, I am not satisfied that the s 41 ground has been established.

Section 43

1. Section 43 provides:

Trade mark likely to deceive or cause confusion

An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion

1. To establish this ground, the Opponent must show that there is a connotation within the Trade Marks and, because of this connotation, the use of the Trade Marks would be likely to deceive or cause confusion.
2. The SGPs state:

1. The particulars set out in the SGPs suggest that the Trade Marks connote the geographical origin of Gundagai. I do not agree. Firstly, Dog on a Tuckerbox is a statue and not a geographical placename. Secondly, the words Dog on the Tuckerbox, even to those who aware of the statue, do not connote Gundagai. According to the Opponent's own evidence, the statue is not in Gundagai, it is in Snake Gully.[47]
2. The evidence does not establish that the Trade Marks contain a connotation that is likely to deceive or cause confusion. Consequently, the s 43 ground of opposition is not established.

The registration of a trade mark may be opposed on the ground that the application was made in bad faith

1. The Federal Court has substantively considered the issue of bad faith in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2)[48] and DC Comics v Cheqout Pty Ltd.[49] The following propositions emerge from these decisions which are relevant to the present opposition:
   • Bad faith for the purposes of s 62A must be [as at the Relevant Date] and must relate to the making of the subject of that application.[50]

• Bad faith is a serious allegation that 'impugns the character of an individual or collective character of a business' and requires correspondingly cogent evidence. The standard of proof is the balance of probabilities, rather than that of beyond reasonable doubt.[51]

• Conduct that falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area is sufficient. Bad faith does not require dishonesty.[52] As stated by Dodds-Streeton J in Fry Consulting:

Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[53]

• The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading.[54]

• All the circumstances surrounding the application to register the mark are relevant.[55]

• A prior business connection with and knowledge of the opponent by the applicant such that a person standing in the shoes of the applicant should have known that he should not have applied for a trade mark deceptively similar to that used by the opponent is sufficient for a finding of bad faith.[56]

1. Awareness or mere knowledge before the Relevant Date of another person's trade mark, without more, does not in itself constitute a basis for a finding of bad faith'.[57]
2. The Opponent bears the onus of establishing that the filing of the Application was in bad faith and it will not be easily established given the serious nature of the allegation.[58]
3. In summary, the SGPs provide that at the Relevant Date, the Opponent was the owner of the Tuckerbox Marks which had acquired a substantial reputation. The Applicant knew or should have known it was not the owner of the Trade Marks. The Applicant is using or intends to use the Opponent's reputation in the Tuckerbox Marks to sell wine, beer and cider. This conduct falls short of acceptable commercial behaviour.
4. The Applicant submits that the Applicant has filed no evidence that suggests the Applications were made in bad faith. Further, there is no evidence to support the contentions in the SGPs that the Applicant knew it was not the owner of the Trade Marks or that the Applicant knew or ought to have known that it had no entitlement to the Trade Marks.
5. I agree with the Applicant that there is no evidence to suggest that the Applications were made in bad faith or evidence to support the Opponent's contentions in the SGPs. While the Applicant was aware of the Opponent's business and the Tuckerbox Marks at the Relevant Date,[59] this awareness alone, without more, does not provide a sufficient basis to conclude that the Applications were made in bad faith.
6. The Opponent has not shown that circumstances existed at the Relevant Date which were such that the decision to apply for the Trade Marks at the Relevant Date would be regarded as in bad faith by persons adopting the proper standards.[60] The s 62A ground of opposition fails.

1. I find that the Opponent has failed to establish any of the grounds of opposition it nominated in the SGPs. Accordingly, registration of the Applications may proceed not less than one month from the date of this decision.
2. If the Registrar is served with a notice of appeal, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the Applications should be in accordance with the Court's order or direction.

1. Both parties have sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. In respect of trade mark number 2385194, I award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations. In respect of trade mark number 2385250, I award reduced costs against the Opponent in the same manner as indicated in Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd.[61]

[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').