2026 ATMO 38

Trade Marks Act 1995 (Cth) - opposition under section 52 - ss 42(b), 44, 58A and 60 considered - no grounds established - trade mark to proceed to registration

1. This is a decision on the opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by Care IP Pty Ltd and Kerry Hyland ('Opponent') to registration of the trade mark detailed below in the name of Care Natural Pty Ltd ('Applicant'):

Trade Mark: ('Trade Mark')

Filing Date: 23 November 2023 ('Relevant Date')

Specification:[2] Class 5: including various meal replacements, supplements, dietary and vitamin products

Class 29: including various snack foods and meal replacement bars

Class 30: including various cereal based food products, chocolate, snack foods and meal replacement bars

Class 43: various services involving the provision of food and drink

1. Following the advertisement of acceptance of the Trade Mark for possible registration on 24 April 2024, the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark on 8 June 2024 and a Statement of Grounds and Particulars, which was subsequently rectified ('SGP') on 5 July 2024. The Applicant filed a Notice of Intention to Defend on 1 October 2024.
2. The parties then had an opportunity to file evidence in accordance with the Regulations. The only evidence filed in the proceedings was the Opponent's evidence in support ('EIS') lodged on 13 January 2025 being a declaration of Kerry Hyland, Director of the Opponent, made on 11 January 2025 with Attachment including Schedules 1 to 3 ('Hyland').
3. Once the evidence stage concluded, the parties had the opportunity to request a hearing. The Applicant requested a hearing by way of written submissions and the Opponent did not ask to be heard. The Applicant's written submissions were prepared by Daniel Wilson and Julia Caunt of Spruson & Ferguson and filed on 19 February 2026. I am a delegate of the Registrar of Trade Marks and this matter has been allocated to me to determine. I do so based on the aforementioned materials.

1. The Opponent's SGP nominates grounds of opposition under ss 42(b), 44, 58A and 60.
2. The Opponent bears the onus of proof in an opposition.[3] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[4] The date at which the rights of the parties are to be determined is the Relevant Date being both the filing date and priority date of the Application.[5]

1. Hyland attests that Care IP Pty Ltd is the owner of nine Australian trade marks which include the word CARE and have an earlier priority date than the Application ('Opponent's Marks'). Details of the Opponent's Marks are set out in Annexure B to this decision.
2. Hyland annexes company details for Care A2 Plus Pty Ltd from the records of the Australian Securities and Investments Commission, ICANN Lookup records for the domain names www.carea2plus.com and www.thecareclub.store ('Opponent's Websites'), undated extracts of the Opponent's Websites, the first page of the results of an internet search for 'care a2+', the results of a search for articles in the Australian Financial Review for 'care a2+', Carea2 Australian Investor Bulletin dated June 2022 and a list of the Applicant's goods which the Opponent says conflict with the Opponent's goods covered by its application 2045160 and registrations 2133090. Hyland claims that these documents demonstrate the Opponent's earlier use for the purposes of the ground of opposition under s 58A and establish a reputation in the Opponent's Marks in Australia for the s 60 ground.

Section 44

1. Section 44 relevantly provides:

(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.

1. The Opponent particularises this ground of opposition in its SGP by nominating the Opponent's Marks. Hence, to successfully oppose the Application pursuant to s 44, the Opponent must establish each of the following requirements:
   • one or more of the Opponent's Marks have a priority date which is earlier than the Relevant Date and are held in a name other than that of the Applicant ('First Requirement');
   • the Trade Mark is substantially identical with or deceptively similar to one of more of the Opponent's Marks ('Second Requirement'); and
   • the Applicant's Goods and Services are similar or closely related to the goods or services of one or more of the Opponent's Marks ('Third Requirement').
2. The Applicant concedes, and I confirm, that each of the Opponent's Marks satisfies the First Requirement.

1. In Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd ('Shell') Windeyer J states:

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.[6]

• Life Begins with Care
• Come Together with Care
• Care for Your Child
• Caring with Care
• Healthy with Care
• 
• 
• 
• 

1. On a side by side comparison of the Trade Mark with each of the Opponent's Marks, it is obvious that there is not a total impression of resemblance. The only element in common is the word CARE. Each of the marks otherwise contains other words and/or figurative elements. It is clear that the Trade Mark is distinct from each of the Opponent's Marks and that it is not substantially identical to any of the Opponent's Marks.
2. Turning to the question of deceptive similarity, the Trade Mark will be deceptively similar to one or more of the Opponent's Marks if it so nearly resembles the Opponent's Mark(s) that it is likely to deceive or cause confusion.[7] Determining this issue requires a different comparison in that:

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, one the other hand, the impressions that such persons would get from the defendant's [mark].[8]

1. The respective trade marks must be compared as wholes,[9] having regard to essential or distinguishing features,[10] and considering the marks visually and aurally, and in the context of the relevant surrounding circumstances.[11] 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 Trade Mark and each of the Opponent's Marks, having regard to the look, sound, and ideas conveyed by the respective marks, and allowing for imperfect recollection.[12]
2. The Applicant submits that the mere presence of the word CARE in both parties' marks is insufficient to establish deceptive similarity. Trade marks must be compared as wholes, not by isolating a shared element, particularly where that element has descriptive relevance to the goods in question. The Trade Mark is a composite, stylised mark comprising two equally prominent word elements, CARE and NATURAL, displayed in the same font, size and style, and presented on a flag-shaped background. None of the Opponent's Marks include the word NATURAL or a comparable visual presentation. The Applicant argues that consumers would recall the Trade Mark in its entirety, including both word elements and the distinctive background, rather than focusing solely on the word CARE.
3. Moreover, the Applicant says that the Trade Mark is conceptually different from each of the Opponent's Marks. In the Applicant's submission, CARE conveys ideas of health, welfare or looking after something, whereas NATURAL signals goods derived from natural ingredients. The Opponent's Marks convey different ideas through their additional words and phrases (such as Life Begins with, Care for Your Child, or Vitamin Milk), resulting in different overall impressions.
4. The Applicant further argues that the Opponent's rights are confined to its marks as registered and do not extend to a monopoly over the word CARE alone. The Applicant argues that CARE is a commonly used descriptive element in relation to dietary supplements, infant foods and milk products. Evidence is provided of 235 registered Australian trade marks in Classes 5 and 29 incorporating CARE and coexisting on the Register, both before and after the priority dates of the Opponent's Marks. The Applicant notes that the Opponent did not oppose any of these marks indicating that the Opponent accepts that consumers are accustomed to distinguishing between CARE‑formative marks based on their additional elements.
5. The Applicant also refers to its registration 2293948 for the word mark CARE NATURAL which coexists with the Opponent's Marks,[13] and notes that the Trade Mark was accepted for registration without any s 44 objection. The Examiner's acceptance of both marks is said to indicate that the Applicant's marks were not regarded as deceptively similar to the Opponent's Marks.
6. I agree with the Applicant that the Trade Mark is not deceptively similar to any of the Opponent's Marks. It is visually, aurally and conceptually distinct from the Opponent's Marks. While each of the respective marks contains the word CARE, that element must be considered in the context of the marks as wholes and in light of its descriptive connotation in relation to the relevant goods. The Trade Mark is a composite, stylised mark comprising the equally prominent word elements CARE and NATURAL on a flag‑shaped background, whereas the Opponent's Marks either consist of longer word phrases conveying different ideas or otherwise comprise other words and/or figurative elements that are quite different from those in the Trade Mark. The presence of a common element is not conclusive to a finding of deceptive similarity.[14] Distinctiveness of the compared trade marks is a factor that can legitimately be taken into account when considering deceptive similarity[15] and the determination of the question 'must necessarily involve some inquiry as to the inherent distinctiveness of the part which is common to both marks under consideration'.[16] Therefore it is relevant to take into account whether elements of the rival marks have a descriptive character'[17] and whether the element of a trade mark that is descriptive may call to mind the nature of the product or service, rather than its trade source.[18] The extensive coexistence of CARE‑formative marks on the Register, including in Classes 5 and 29, supports the conclusion that consumers are accustomed to distinguishing such marks by their additional elements rather than attributing trade source significance to the word CARE alone.
7. Also, in the case of a composite mark, all the elements of the mark must be considered in their context including the size, prominence, and the stylisation of words and devices, and the relationship of all these elements to each other.[19] In my view, the shared element CARE does not dominate the overall impression of the Trade Mark nor any of the Opponent's Marks. Allowing for imperfect recollection, a consumer of ordinary intelligence and memory would be likely to recall and distinguish the Trade Mark by its additional word element and visual presentation, which collectively create a different look, sound and idea from each of the Opponent's Marks. Accordingly, I find that the Trade Mark does not so nearly resemble any of the Opponent's Marks as to be likely to deceive or cause confusion. The s 44 ground of opposition is not established.

Section 58A

1. Section 58A is available where a trade mark is accepted because of s 44(4), or in the context of opposition proceedings, it would survive the s 44 ground of opposition on that basis.[20]
2. The Applicant was not accepted for possible registration under s 44(4) and I have not found it necessary to apply this provision in these proceedings. In any event, even if s 58A were enlivened, the Opponent has not adduced evidence capable of establishing earlier use of any mark substantially identical with the Trade Mark in respect of the relevant goods or services as at the Relevant Date
3. Accordingly, s 58A is not enlivened and so cannot be established in the present matter.

Section 60

1. To establish this ground, the Opponent must demonstrate a reputation in a trade mark existing in Australia at the Relevant Date. The Opponent must then prove that because of this reputation, use of the Trade Mark is likely to deceive or cause confusion.
2. The Opponent relies on reputation in the Opponent's Marks as the basis for this ground. The Opponent must establish a reputation and a likelihood of confusion exists amongst a substantial number of consumers.[21] Reputation can be demonstrated in several ways. For example, it can be established by demonstrating that a significant number of consumers are regularly exposed to a particular trade mark or that a mark is viewed with a certain level of esteem in the market. It may also be inferred from a high volume of sales combined with substantial advertising figures and other promotions. [22]
3. The Applicant notes that the Opponent's evidence shows only use of the mark CARE A2+ (in word and stylised form of application 2045160). I agree that there is no evidence of use of the other marks and find that a reputation is not established in those marks.
4. In relation to the mark Care A2+, the only dated evidence filed relating to use of this mark is the results of a search of the Australian Financial Review listing four articles about Care A2 from August and September 2023 and the investor bulletin of 3 June 2022 about Care A2Australia's listing on the Australian Stock Exchange. Firstly, there is no explanation of the relationship between the Opponent and Care A2 Australia. Secondly, there is no information about how many people or who received the investor bulletin. Schedule 3 of Hyland also refers to CareA2+ sponsorship of the Kooyong Classic in 2023, sponsorship of pbc Expo in 2021 and 2022 (relating to pregnancy, babies and children) and the first tour of the Spanish football club, FC Barcelona, to Sydney which had over 70,000 spectators. There is otherwise no detail about the nature and extent of the use of the Care A2+ mark nor any sales or advertising metrics. Critically, the evidence does not demonstrate the nature, extent or continuity of any reputation in Australia as at the Relevant Date.
5. The deficiencies in the Opponent's evidence are such that I am not satisfied that a reputation existed in any of the Opponent's Marks at the Relevant Date. Even if I were satisfied that a reputation existed in the mark CARE A2+, I would not be persuaded that use of the Trade Mark would be likely to deceive or cause confusion because of that reputation, for the same reasons given in my analysis under s 44, including the descriptive character of CARE and the distinct visual and conceptual impression of the Trade Mark as a whole. The s 60 ground of opposition fails.

1. Section 42(b) provides that a trade mark must be rejected if its use would be contrary to law.
2. The Opponent alleges under s 42(b) that use of the Trade Mark would constitute a breach of ss 41, 43 and 44.
3. A ground of opposition under s 42(b) requires the opponent to identify some other law, external to the opposition provisions themselves, that would be contravened by use of the applied-for trade mark. It is therefore not an appropriate pleading for allegations that the requirements of ss 41, 43 or 44 are not met. Those provisions establish discrete statutory grounds of rejection and opposition with their own tests, evidentiary burdens and procedural consequences, and must be pleaded and determined directly, not indirectly via s 42(b). In any event, the fact that a mark may be rejected for registration under ss 41, 43 and/or 44 does not mean that its use would be contrary to law. Accordingly, the s 42(b) ground of opposition is unsuccessful.

1. Section 55 relevantly provides (notes omitted):

(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.

1. I find that the Opponent has failed to establish any of the grounds of opposition nominated in the SGP. Accordingly, registration of the Trade Mark under application 2408042 may proceed not less than one month from the date of this decision. 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 Application should be in accordance with the Court's order or direction.
2. Both parties sought an award of costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

Class 5: Nutritional meal replacements; nutritional meal replacement bars; meal replacement shakes for weight loss purposes; nutritional supplement protein bars; dietary supplements; nutritional supplements; protein dietary supplements; vitamins; vitamin drinks; vitamin preparations; vitamin drinks; mineral dietary supplements; nutritional supplement energy bars; powdered whey protein being dietary supplements; powdered whey protein being nutritional supplements; protein supplements for humans; whey protein being dietary supplements; whey protein being nutritional supplements; whey protein concentrates being dietary supplements; whey protein concentrates being nutritional supplements; whey protein dietary supplements; whey protein isolates being dietary supplements; whey protein isolates being nutritional supplements; nutritional drinks for dietary purposes; protein bars being nutritional supplements; protein bars for weight loss; weight management supplements; protein balls being nutritional supplements

Class 29: Nut and dried fruit based snack bars; Fruit based snack food; Dried fruit based snack bars; Prepared snacks made from dried vegetables; Prepared snacks made from nuts; Seed-based snack bars; protein enriched milk based drinks; nut-based snack bars; nut bars; milk and milk based beverages; shakes being dairy based beverages and powders; whey powder; food products made from dried fruits; snack mixtures of nuts and dried fruits; protein enriched milk based drinks; plant-based dairy substitutes; yoghurt; nut based snacks enriched with protein; seed based snacks enriched with protein; fruit based snacks enriched with protein; vegetable based snacks enriched with protein; fruit based meal replacement bars; nut based meal replacement bars; seed based meal replacement bars; vegetable based meal replacement bars.

Class 30: Cereal based snack food; cereal bars; cereal based food bars; Chocolate snack bars containing fruit; Chocolate snack bars containing fruit and nuts; Chocolate snack bars containing nuts; Snack bars consisting of chocolate; Snack food products consisting predominantly of cereal products; Snack food products made from cereals; Snack foods consisting principally of grain; Snacks manufactured from cereals; Rice crackers; Crackers; Cookies; High-protein cereal bars; Snacks manufactured from muesli; Muesli bars; Muesli consisting predominantly of cereals; Muesli desserts; Muesli; chocolate based snacks enriched with protein; cereal based snacks enriched with protein; muesli based snacks enriched with protein; biscuits; muesli based snack bars; shortbread; shortbread biscuits; pastries; breakfast cereals; cereal based mixes for breakfast foods; chocolate based meal replacement bars; grain based meal replacement bars.

Class 43: Snack bars (provision of food and drink); Snack-bars; restaurant services; catering services; mobile catering services, takeaway food services; take away food and beverage services.

Class 5: Beverages for infants; Dietary supplements for infants; Dietetic foods adapted for infants; Dried milk being food for infants; Food for infants; Foodstuffs for infants; Infants' foods; Milk foods for infants; Powdered milk foods for infants; Infant formula; Powdered milk for babies; Dried milk powder being food for babies; Dried milk preparations being food for babies; Dried milk products being food for babies; Milk powder for babies; Milk powder for foodstuffs for babies; Milk powder for nutritional purposes for babies; Milk powders (foodstuff for babies); Babies' beverages

Class 29: Powdered milk (other than for babies); Dried milk; Dried milk powder; Dried milk products; Flavoured milk powder for making drinks; Milk powder (other than for babies); Skimmed milk powder; Beverages consisting principally of milk; Beverages made from milk; Beverages with a milk base; Dairy based beverages and powders; Milk based beverages (milk predominating); Milk beverages (milk predominating); By-products of milk; Cows' milk; Drinks made from dairy products; Drinks made wholly or principally with milk; Foods prepared from milk; Low fat milk products; Milk drinks; Protein milk; Whole milk; Dried whey products; Whey; Whey powder

Class 5: Beverages for infants; Dietary supplements for infants; Dried milk being food for infants; Food for infants; Foodstuffs for infants; Infants' foods; Milk foods for infants; Powdered milk foods for infants; Dried milk powder being food for babies; Dried milk preparations being food for babies; Dried milk products being food for babies; Infant formula; Milk powder for babies; Milk powder for foodstuffs for babies; Milk powder for nutritional purposes for babies; Milk powders (foodstuff for babies); Babies' beverages; Foodstuffs for babies; Powdered milk for babies; Powdered whey protein being nutritional supplements; Whey protein being nutritional supplements

Class 29: Dried milk; Dried milk powder; Dried milk products; Dried whey products; Flavoured milk powder for making drinks; Milk powder (other than for babies); Skimmed milk powder; Beverages consisting principally of milk; Beverages made from milk; Beverages with a milk base; Dairy based beverages and powders; Milk based beverages (milk predominating); Milk beverages (milk predominating); By-products of milk; Cows' milk; Whole milk; Drinks made from dairy products; Drinks made wholly or principally with milk; Milk based drinks (milk predominating); Milk drinks; Food made principally from milk; Food preparations consisting wholly or substantially wholly of milk; Food preparations having a base of milk; Foods prepared from milk; Half-fat milk products; Long life milk; Low fat milk products; Milk; Milk based products (milk predominating); Milk products; Semi skimmed milk; Skimmed milk; Skimmed milk preparations; Protein milk; Whey; Whey powder

Class 5: Dried milk being food for infants; Dried milk powder being food for babies; Dried milk preparations being food for babies; Dried milk products being food for babies; Milk foods for infants; Milk powder for babies; Milk powder for foodstuffs for babies; Milk powder for nutritional purposes for babies; Milk powders (foodstuff for babies); Powdered milk foods for infants; Powdered milk for babies; Beverages for infants; Dietary supplements for infants; Food for infants; Foodstuffs for infants; Infant formula; Infants' foods

Class 29: Beverages consisting principally of milk; Beverages made from milk; Beverages with a milk base; By-products of milk; Canned milk; Cows' milk; Dried milk; Dried milk powder; Dried milk products; Drinks based predominantly on milk; Drinks flavoured with chocolate and having a milk base; Drinks flavoured with fruit pastes and having a milk base; Drinks flavoured with herbs and having a base of milk; Drinks flavoured with spices and having a base of milk; Drinks made wholly or principally with milk; Flavoured milk; Food made principally from milk; Food preparations consisting wholly or substantially wholly of milk; Food preparations having a base of milk; Foods made from milk products; Foods prepared from milk; Half-fat milk products; Long life milk; Low fat milk products; Milk; Milk based beverages (milk predominating); Milk based drinks (milk predominating); Milk based products (milk predominating); Milk beverages (milk predominating); Milk powder (other than for babies); Milk products; Milk shakes; Milk-based beverages flavoured with chocolate; Milkshakes; Powdered milk (other than for babies); Preparations made from milk; Protein milk; Semi skimmed milk; Skimmed milk; Skimmed milk powder; Skimmed milk preparations; Whole milk; Dried whey products; Whey; Whey powder

Class 5: Dried milk being food for infants; Dried milk powder being food for babies; Dried milk preparations being food for babies; Dried milk products being food for babies; Milk foods for infants; Milk powder for babies; Milk powder for foodstuffs for babies; Milk powder for nutritional purposes for babies; Milk powders (foodstuff for babies); Powdered milk foods for infants; Powdered milk for babies; Babies' beverages; Beverages for infants; Foodstuffs for babies; Foodstuffs for infants

Class 29: Beverages consisting principally of milk; Beverages made from milk; Beverages with a milk base; By-products of milk; Canned milk; Cows' milk; Dried milk; Dried milk powder; Dried milk products; Drinks based predominantly on milk; Drinks flavoured with chocolate and having a milk base; Drinks flavoured with fruit pastes and having a milk base; Drinks flavoured with herbs and having a base of milk; Drinks flavoured with spices and having a base of milk; Drinks made wholly or principally with milk; Flavoured milk; Flavoured milk powder for making drinks; Food made principally from milk; Food preparations consisting wholly or substantially wholly of milk; Food preparations having a base of milk; Foods made from milk products; Long life milk; Milk; Milk based beverages (milk predominating); Milk based desserts (milk predominating); Milk based drinks (milk predominating); Milk based products (milk predominating); Milk beverages (milk predominating); Milk drinks; Milk powder (other than for babies); Milk products; Milk shakes; Milk-based beverages flavoured with chocolate; Milkshakes; Powdered milk (other than for babies); Preparations made from milk; Protein milk; Semi skimmed milk; Skimmed milk; Skimmed milk powder; Skimmed milk preparations; Whole milk; Dried whey products; Whey; Whey powder

Class 5: Dried milk being food for infants; Dried milk powder being food for babies; Dried milk preparations being food for babies; Dried milk products being food for babies; Milk foods for infants; Milk powder for babies; Milk powder for foodstuffs for babies; Milk powder for nutritional purposes for babies; Milk powders (foodstuff for babies); Powdered milk foods for infants; Powdered milk for babies; Babies' beverages; Beverages for infants; Dietary supplements for infants; Food for infants; Foodstuffs for infants; Infant formula; Infants' foods

Class 29: Beverages consisting principally of milk; Beverages made from milk; Beverages with a milk base; By-products of milk; Canned milk; Cows' milk; Dried milk; Dried milk powder; Dried milk products; Drinks based predominantly on milk; Drinks flavoured with chocolate and having a milk base; Drinks flavoured with fruit pastes and having a milk base; Drinks flavoured with herbs and having a base of milk; Drinks flavoured with spices and having a base of milk; Drinks made wholly or principally with milk; Flavoured milk; Flavoured milk powder for making drinks; Food made principally from milk; Food preparations consisting wholly or substantially wholly of milk; Food preparations having a base of milk; Foods made from milk products; Foods prepared from milk; Half-fat milk products; Long life milk; Low fat milk products; Milk; Milk based beverages (milk predominating); Milk based drinks (milk predominating); Milk based products (milk predominating); Milk beverages (milk predominating); Milk drinks; Milk powder (other than for babies); Milk products; Milk shakes; Milk-based beverages flavoured with chocolate; Milkshakes; Preparations made from milk; Protein milk; Semi skimmed milk; Skimmed milk; Skimmed milk powder; Skimmed milk preparations; Whole milk; Dried whey products; Whey; Whey powder

Class 5: Healthcare products (medicinal); Natural healthcare preparations (medicaments); Medicated hair lotions; Medicated hair products; Medicinal hair growth preparations; Dried milk being food for infants; Dried milk powder being food for babies; Dried milk preparations being food for babies; Dried milk products being food for babies; Milk foods for infants; Milk powder for babies; Milk powder for foodstuffs for babies; Milk powder for nutritional purposes for babies; Milk powders (foodstuff for babies); Powdered milk for babies; Beverages for infants; Dietary supplements for infants; Food for infants; Foodstuffs for infants; Infant formula; Infants' foods; Powdered milk foods for infants; Babies' beverages

Class 29: Beverages consisting principally of milk; Beverages made from milk; Beverages with a milk base; By-products of milk; Canned milk; Cows' milk; Dried milk; Dried milk powder; Dried milk products; Drinks based predominantly on milk; Drinks flavoured with chocolate and having a milk base; Drinks flavoured with fruit pastes and having a milk base; Drinks flavoured with herbs and having a base of milk; Drinks flavoured with spices and having a base of milk; Drinks made wholly or principally with milk; Flavoured milk; Flavoured milk powder for making drinks; Food made principally from milk; Food preparations consisting wholly or substantially wholly of milk; Food preparations having a base of milk; Foods made from milk products; Foods prepared from milk; Long life milk; Low fat milk products; Malted milk beverages (milk predominating); Milk; Milk based beverages (milk predominating); Milk based drinks (milk predominating); Milk based products (milk predominating); Milk beverages (milk predominating); Milk drinks; Milk powder (other than for babies); Milk products; Milk shakes; Milk-based beverages flavoured with chocolate; Milkshakes; Powdered milk (other than for babies); Preparations made from milk; Protein milk; Semi skimmed milk; Skimmed milk; Skimmed milk powder; Skimmed milk preparations; Whole milk; Dairy based beverages and powders; Dried whey products; Whey; Whey powder

Class 44: Health care; Healthcare; Personal care services (medical nursing, health, hygiene and beauty care)

Class 3: Conditioners for use on the hair; Hair balm; Hair care agents; Hair care preparations; Hair care products; Hair conditioner; Hair conditioners; Hair conditioning preparations; Hair grooming preparations; Hair moisturisers; Hair preparations; Hair products; Hair protection lotions (non-medicated); Hair shampoo; Hair strengthening treatment lotions; Hair thickeners; Preparations for conditioning the hair; Preparations for enriching the hair; Preparations for the hair; Preparations for use in adding body (volume) to the hair

Class 5: Beverages for infants; Dietary supplements for infants; Dried milk being food for infants; Food for infants; Foodstuffs for infants; Infants' foods; Milk foods for infants; Powdered milk foods for infants; Dried milk powder being food for babies; Dried milk preparations being food for babies; Dried milk products being food for babies; Milk powder for babies; Milk powder for foodstuffs for babies; Milk powder for nutritional purposes for babies; Milk powders (foodstuff for babies); Powdered milk for babies; Babies' beverages; Vitamin drinks

Class 29: Aerated beverages (predominantly of milk); Beverages consisting principally of milk; Beverages made from milk; Beverages with a milk base; By-products of milk; Canned milk; Cows' milk; Dried milk; Dried milk powder; Dried milk products; Drinks based predominantly on milk; Drinks flavoured with chocolate and having a milk base; Drinks flavoured with herbs and having a base of milk; Drinks flavoured with spices and having a base of milk; Drinks made wholly or principally with milk; Flavoured milk; Flavoured milk powder for making drinks; Food made principally from milk; Food preparations consisting wholly or substantially wholly of milk; Food preparations having a base of milk; Foods made from milk products; Foods prepared from milk; Half-fat milk products; Long life milk; Milk; Milk based beverages (milk predominating); Milk based drinks (milk predominating); Milk based products (milk predominating); Milk beverages (milk predominating); Milk drinks; Milk powder (other than for babies); Milk products; Milk substitutes; Milkshakes; Powdered milk (other than for babies); Preparations made from milk; Protein milk; Semi skimmed milk; Skimmed milk; Skimmed milk powder; Skimmed milk preparations; Whole milk; Drinks made from dairy products; Dried whey products; Whey; Whey powder

Class 44: Health care; Healthcare; Personal care services (medical nursing, health, hygiene and beauty care)

Class 1: Milk ferments for the food industry; Milk ferments (bacteria preparations) used in making foodstuffs

Class 5: Milk calcium concentrate (nutritional supplement); Milk foods for infants; Milk sugar (nutritional supplement); Beverages containing added vitamins (for medical purposes); Preparations of vitamins; Vitamin drinks; Vitamin preparations for human consumption; Vitamin preparations in the nature of food supplements; Vitamin preparations; Vitamins; Vitamin supplements for foodstuffs for human consumption; Vitamin supplements for use by pregnant women; Vitamin supplements for use by lactating women; Vitamin supplements

Class 29: Fermented milk; Food made principally from milk; Food preparations consisting wholly or substantially wholly of milk; Food preparations having a base of milk; Foods made from milk products; Foods prepared from milk; Aerated beverages (predominantly of milk); Aerated drinks (predominantly of milk); Beverages consisting principally of milk; Beverages with a milk base; By-products of milk; Canned milk; Cows' milk; Flavoured milk powder for making drinks; Drinks made from dairy products; Drinks made wholly or principally with milk; Drinks based predominantly on milk; Milk based drinks (milk predominating); Drinks flavoured with chocolate and having a milk base; Drinks flavoured with fruit pastes and having a milk base; Drinks flavoured with herbs and having a base of milk; Drinks flavoured with spices and having a base of milk; Flavoured milk; Low fat milk products; Half-fat milk products; Semi skimmed milk; Skimmed milk; Skimmed milk powder; Skimmed milk preparations; Malted milk beverages (milk predominating); Milk based products (milk predominating); Milk cream; Protein milk; Preparations for making beverages (milk based); Preparations for making milk beverages; Preparations made from milk; Milk shakes; Preparations for making milk shakes; Non-alcoholic milk beverages (milk predominating); Whole milk

Class 5: Infants' foods; Beverages for infants; Dried milk powder being food for babies; Milk powder for babies; Milk powder for foodstuffs for babies; Milk powder for nutritional purposes for babies; Milk powders (foodstuff for babies); Powdered milk for babies; Dried milk products being food for babies; Dried milk preparations being food for babies; Infant formula; Lactose free infant's formula; Dietary supplements for infants; Foodstuffs for infants; Milk foods for infants; Powdered milk foods for infants; Dried milk being food for infants; Food for infants

Class 29: Dried milk powder; Long life milk; Low fat milk products; Food made principally from milk; Food preparations consisting wholly or substantially wholly of milk; Food preparations having a base of milk; Foods prepared from milk; Milk; Milk based beverages (milk predominating); Milk beverages (milk predominating); Milk products; Flavoured milk powder for making drinks; Milk protein; Milk protein products; Preparations made from milk; Skimmed milk; Skimmed milk preparations; Whole milk; Dried whey products; Whey; Whey powder; Whey protein; Milk powder (other than for babies); Powdered milk (other than for babies); Skimmed milk powder; Cows' milk; Dairy based beverages and powders; Dried milk; Dried milk products; Foods made from milk products

[1] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) ('Act') or regulation of the Trade Marks Regulations 1995 (Cth) ('Regulations'), respectively.

[2] The full specification of the Application is set out in Annexure A to this decision.

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

[4] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelman JJ).

[5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2] (Kitto J) ('Southern Cross').

[6] [1963] HCA 66, [12].

[9] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020 [50] ('Woolworths'). See also, Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] FCA 901, [78] (Bennett J).

[10] Crazy Ron's Communications v Mobileworld Communications [2004] FCAFC 196, [77]-[88] (Moore, Sackville and Emmett JJ).

[11] New South Wales Dairy Corporation v Murray Goulburn Co-operative Co Ltd [1989] FCA 124; (1989) 86 ALR 549, 589 (Gummow J).

[12] Jockey International Inc v Darren Wilkinson [2010] ATMO 22 (Hearing Officer Spence).

[13] I note that the Opponent has filed a s92 application for removal of this registration.

[14] Conde Nast Publications Pty Ltd v Virginia Taylor [1998] FCA 864 (Burchett J); PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2021] FCAFC 128 (Jagot, Nicholas and Burley JJ).

[15] Stone & Wood Group Pty Ltd v Intellectual Property Development Corporation Pty Ltd [2018] FCAFC 29; (2018) 129 IPR 238, [66] (Allsop CJ, Nicholas, Katzmann JJ).

[16] Re Frigiking Trade Mark [1973] RPC 739, 752 (Ch D).

[17] The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd [2023] FCA 482, [73] (Jackman J).

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

[19] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [100] - [111]; Australian Meat Group Pty Ltd v JBS Australia Pty Ltd [2018] FCAFC 207; [78]; and Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [100].

[21] Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [74]-[75] (Moore, Tamberlin and Goldberg JJ).

[22] McCormick & Company Inc v McCormick [2000] FCA 1335, [86] (Kenny J).