CCMSM Commercial Pty Ltd as Trustee for the CCMSM Commercial Trust v Registrar of Trade Marks [2025] FCA 1615

Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; 58 CLR 641

CA Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539; 52 IPR 42

Caporaso Pty Ltd v Mercato Centrale Australia Pty Ltd [2024] FCAFC 156; 306 FCR 549

Cooper Engineering Pty Ltd v Sigmund Pumps Ltd [1952] HCA 15; 86 CLR 536

Energy Beverages LLC v Cantarella Bros Pty Ltd [2023] FCAFC 44; 407 ALR 473

Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; 185 FCR 9

Jafferjee v Scarlett [1937] HCA 36; (1937) 57 CLR 115

Jockey International, Inc v Darren Wilkinson [2010] ATMO 22

Johnson & Johnson v Kalnin [1993] FCA 210; (1993) 114 ALR 215; 26 IPR 435

Melbourne Bone and Joint Clinic Pty Ltd v Registrar of Trade Marks [2024] FCA 53; 182 IPR 346

Paige LLC v Sage and Paige Collective Pty Ltd [2025] FCA 750

Powell v Glow Zone Products Pty Ltd (1997) 150 ALR 411; 39 IPR 506

Puma Caterpillar Inc v Puma SE [2021] FCA 1014; 162 IPR 430

Puma SE v Caterpillar Inc [2022] FCAFC 153; 407 ALR 446

Re Honda Motor Co. [2021] ATMO 103; 169 IPR 283

Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; 93 FCR 365 Rowntree plc v Rollbits Pty Ltd (1988) 90 FLR 393; 10 IPR 539

Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8; 277 CLR 186

Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66; (1963) 109 CLR 407

The Agency Group Australia Ltd v HAS Real Estate Pty Ltd [2023] FCA 482; 174 IPR 153

Vivo International Corporation Pty Ltd v Tivo Inc [2012] FCAFC 159; 99 IPR 1

CCMSM COMMERCIAL PTY LTD AS TRUSTEE FOR THE CCMSM COMMERCIAL TRUST

1. The appeal be dismissed.
2. The Appellant is to file, by 19 January 2026, written submissions of no more than 5 pages together with any evidence upon which it wishes to rely on the issue of costs.
3. The Respondent is to file any written submissions in response of no more than 5 pages, and any evidence on which it wishes to rely on the issue of costs, by 29 January 2026 after receipt of the material referred to in order 2.
4. The issue of costs will be decided on the papers.
5. The time for filing any appeal be extended to 28 February 2026.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

1. This is an appeal from the decision of the Registrar of Trade Marks to refuse registration of two marks as identified below (the Applicant Marks):

Class 12: Caravans; Mobile homes (caravans); Vehicles in the nature of caravans; Camping trailers; Motor homes

Class 12: Caravans; Mobile homes (caravans); Vehicles in the nature of caravans; Camping trailers; Motor homes

1. A delegate of the Registrar of Trade Marks (the Delegate) decided on 24 September 2024, that the Applicant Marks should be rejected under s 44 of the Trade Marks Act 1995 (Cth) (the Act), on the basis that they were deceptively similar to an already registered trade mark (the Decision). The trade mark raised by the Delegate as being deceptively similar to the Applicant Marks (the CR-V Mark) was:

Class 12: Vehicles; apparatus for locomotion by land, air and water; automobiles and motorcycles; parts and accessories in this class for the above mentioned goods

1. This is an appeal from the Decision of the Delegate under s 35 of the Act. It is a hearing de novo under s 197 of the Act. While I give weight to the Delegate's decision as a skilled and experienced person, I am required to approach the matter afresh (Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; 93 FCR 365 (Woolworths) at [32] (French J), quoting Rowntree plc v Rollbits Pty Ltd (1988) 90 FLR 393; 10 IPR 539 at 403 (Needham J)), and to determine the merits of the application, not whether the Registrar lawfully discharged their duty (Jafferjee v Scarlett [1937] HCA 36; (1937) 57 CLR 115 at 126 (Dixon J)).
2. The core of this dispute is a relatively simple one: are the Applicant Marks deceptively similar to the CR-V Mark? For the reasons explained in detail below, I have concluded that, in the circumstances confronting the notional buyer of goods in class 12, the Applicant Marks are deceptively similar to the CR-V Mark under s 44 of the Act. It follows that the appeal will be dismissed.

(1) the affidavit of Serge Valentino dated 13 February 2025 together with Annexures SV-1 to SV-7 (the Valentino Affidavit); and

(2) the affidavit of Victor Wei-Cho Ng dated 14 February 2025 together with Annexure VWN-1 (the Ng Affidavit).

1. The Respondent filed no evidence.
2. Mr Valentino gave evidence that he is the Chief Executive Officer and managing director of the Appellant, CCMSM Commercial Pty Ltd, which is the trustee of the CCMSM Commercial Trust which trades as "Crusader Caravans" (Crusader). Mr Valentino has 25 years of experience in the Australian caravan and recreational vehicle industry. He established Crusader in 2002 and it is now the second largest Australian-owned manufacturer of caravans. It employs approximately 240 people at its headquarters and production facility in Epping, Victoria and has received awards including from the Caravan Industry of Victoria in 2019, 2021 and 2024.
3. Mr Valentino gives evidence that Crusader adopted "CRV" as the name for its range of compact caravans in around 2019. It is an abbreviation of "Crusader Recreational Vehicle", and coincidentally, for "compact recreational vehicle". There are a range of different Crusader models trading under what is described as the "CRV range", including:

(1) CRV Esperance;

(2) CRV Hurricane;

(3) CRV Storm;

(4) CRV Esperance Force; and

(5) CRV Esperance Familia.

1. These are in addition to the "CRV Gladiator Family" and the "CRV Familia". These are described as the "model" of caravan. Crusader does not generally sell "stock" caravans, so that almost all of the caravans produced are built to specification. The range set out above is marketed to first time caravan buyers, experienced caravan buyers, and camper trailer buyers, who can get a full featured caravan at a price-point that is comparable to a camper trailer. Its caravans are generally sold via a dealership network and directly at caravan shows and networks.
2. I accept that the purchase of a camper trailer is a relatively involved matter. Mr Valentino's evidence is that the cost of the CRV range sold by Crusader is between $58,000 to $111,000 and I accept the submission that this means that consumers may be more careful than would be the case with an impulse purchase of lesser financial value.
3. Mr Valentino gives evidence that in his experience, the term "RV" is used and understood in the industry as an abbreviation for "recreational vehicle", being a generic term that means vehicles that house people for sleeping and allow them to enjoy recreational activities such as camping. He has never seen the term "RV" hyphenated, for example, to "R-V", when used to refer to caravans and recreational vehicles. There is evidence that supports the use of the letters "RV" to mean "recreational vehicle", including the Australian industry accreditation scheme for caravan, campervan and motorhome manufacturers, known as RVMAP: Recreational Vehicle Manufacturer Accreditation Program. I also accept that the term "Caravan" is used to refer to vehicles of this kind.
4. There was also evidence of the use of "RV" referring to caravan manufacturers, including:

(1) Wonderland RV;

(2) iDEAL RV;

(3) Option RV; and

(4) My Dream RV.

1. There was also evidence of the use of "RV" to refer to recreational vehicles in various dealerships, such as "RV World", "Everything RV", "Destiny RV & Marine" and others. There was evidence that caravan parts and accessories often use "RV" as part of their business name and brand. Additionally, many caravan and RV repairers and service centres also use "RV" as part of their business name and brand. There is therefore reasonably strong evidence that the letters "RV" are used to refer to or indicate recreational vehicles in some circumstances. There is no direct evidence of consumer knowledge of the letters used in that way, although there is likely to be some cross over between industry and consumer knowledge.
2. Mr Valentino further deposed that he was not aware of any consumer being confused, misled or deceived as a result of "RV" being used as part of the business name or branding of a caravan manufacturer, dealership or supplier of caravan parts and accessories. Mr Valentino also provided evidence that he was not aware of customer confusion as to the use of "CRV" or "RV" in relation to its CRV range of caravans.
3. Mr Ng is a solicitor engaged by the Appellant, and his affidavit provides some support for the notion that "RV" is commonly used to refer to recreational vehicles. However, much of his evidence was not confined by reference to the filing date, and so is of limited utility to the question before me.
4. Mr Valentino was cross examined. That cross examination covered broadly Crusader's typical sale process, customer knowledge and the prevalence and use of "RV" as an acronym in the caravan industry. Mr Valentino gave evidence that:

(1) Crusader's sale process is "almost always" done face to face, and, during the sales process, staff would refer to brand names and range names orally;

(2) Crusader sells caravans under the parent brand Crusader which has a number of ranges and models within the CRV range;

(3) manufacturers of caravans and camper vans typically promote their vehicles under the manufacturer name, model name or range name;

(4) Crusader's customers do "a lot of research and knows exactly what [acronyms or initialisms] it is when they go into a sale";

(5) Crusader's customers come from a range of backgrounds; some are first-time caravan buyers, some may have owned caravans in the past and been caravanning for years. These buyers may or may not have dealt or engaged with websites of suppliers to caravan manufacturers, caravan repairers, part suppliers and suppliers of chassis and suspension. It was discussed that customers typically look at the website of other caravan manufacturers before making a sale; and

(6) the industry is known as the RV industry and caravan industry.

1. The Appellant argues that the evidence establishes that:

(1) There was common use of "RV" in the RV market to refer to recreational vehicles, and that in consequence, consumers would view them as descriptive.

(2) The recreational vehicles sold by Crusader are expensive items that customers can be expected to consider carefully prior to purchase.

(3) A notional buyer will particularly note the positioning of the hyphen in CR-V because they are used to observing "RV" used in a descriptive way. The unusual arrangement of the letters would therefore be differentiating.

1. The Respondent submitted that there was little evidence that people outside the caravan industry understood "RV" to mean "recreational vehicle". They submitted, in addition, that even if a consumer is aware that "RV" is perceived to be an acronym, there is no evidence beyond Mr Valentino's mere assertion that people outside the industry understand the acronym "RV" to mean recreational vehicle.

1. The Registrar is required to examine each application for registration, including by considering whether there are grounds to reject it. The Registrar undertakes that task in light of the presumption of registrability. The Registrar must accept the application unless satisfied, among other things, that there are grounds for rejecting it (s 33 of the Act; Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8; 277 CLR 186 (Self Care) at [10] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ)).
2. One of the grounds upon which an application must be rejected is if it would be likely to deceive or cause confusion in accordance with s 44 of the Act. Section 44 provides as follows:

44 Identical etc. trade marks

(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).

Note 3: For priority date see section 12.

Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

(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).

Note 3: For priority date see section 12.

Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

(3) If the Registrar in either case is satisfied:

(a) that there has been honest concurrent use of the 2 trade marks; or

(b) that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

Note: For limitations see section 6.

(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

(a) beginning before the priority date for the registration of the other trade mark in respect of:

(i) the similar goods or closely related services; or

(ii) the similar services or closely related goods; and

(b) ending on the priority date for the registration of the applicant's trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2: For predecessor in title see section 6.

Note 3: For priority date see section 12.

1. If the application is accepted, then it proceeds to the next step, which includes consideration of any objections by any third parties who may be affected by the registration of the Applicant Marks.
2. This case is about "deceptive similarity" alone. Under s 10 of the Act a trade mark is deceptively similar to another mark if it "so nearly resembles that other trade mark that it is likely to deceive or cause confusion". I consider this question by reference to the full scope of the monopoly granted (s 7 of the Act; see also Puma Caterpillar Inc v Puma SE [2021] FCA 1014; 162 IPR 430 (Puma) at [113] (O'Bryan J)). It involves no assessment of any alleged reputation in either of the Applicant Marks or the CR-V Mark.
3. The test for assessing deceptive similarity is one of imperfect recollection, explained in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66; (1963) 109 CLR 407 (Shell) at 415-416 (Windeyer J). That recollection is measured from the perspective of the notional buyer in the market. The High Court in Self Care explained it this way (at [32], footnotes omitted):

It is not necessary to establish actual probability of deception or confusion. But a mere possibility of confusion is not enough; there must be a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be "a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source".

1. Thus, the threshold of deception or confusion requires that there be a "real, tangible danger of deception or confusion occurring" (Self Care at [32]). The threshold for confusion is "not high" (Australian Postal Foundation Corporation v Digital Post Australia Pty Ltd [2013] FCAFC 153; 308 ALR 1 at [70] (North, Middleton and Barker JJ)). The issue is to be decided by reference to the ordinary consumer's impression or recollection (Self Care at [29]). In Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; 58 CLR 641, Dixon and McTiernan JJ described the test as follows at 658:

But, in the end, it becomes a question of fact for the court to decide whether in fact there is such a reasonable probability of deception or confusion that the use of the new mark and title should be restrained.

In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight.

1. The marks in question are to be considered holistically, without being broken into parts (Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; 185 FCR 9 (Food Channel) at [92] (Keane CJ, Stone and Jagot JJ)). The marks are furthermore not to be compared side by side (Shell at 415). They are considered both visually and aurally and in the context of the surrounding circumstances (Self Care at [68]; Paige LLC v Sage and Paige Collective Pty Ltd [2025] FCA 750 (Paige and Sage) at [44(c)] (Needham J)).
2. The hypothetical notional buyer is one who is likely to buy goods within the scope of registration. They are of "ordinary intelligence and memory" (Shell at 415 (Windeyer J)). While the High Court in Self Care was at pains to observe that the notional buyer is not credited with any "high perception or habitual caution" it is nonetheless a person of ordinary intelligence and "exceptional carelessness or stupidity may be disregarded" (at [31]). The Appellant argues that a purchaser for a high value item like a recreational vehicle will do research into the marketplace because of the substantial cost of the goods. Certainly, the value of the items is one of the "surrounding circumstances" that are taken into consideration, as well as the circumstances in which the marks will be used, and the goods or services will be sold, and the character of their probable acquirers (Self Care at [33]; Woolworths at [50]).
3. In Paige and Sage, Needham J helpfully summarised when a trade mark is deceptively similar in the following way at [44(e)]:

A trade mark is deceptively similar if it "so nearly resembles" the other trade mark that it is "likely to deceive" or "cause confusion". Deception "implies the creation of an incorrect belief or mental impression"; while causing confusion "may merely involve 'perplexing or mixing up the minds' of potential customers": Self Care at [30].

1. In Apple Inc v Registrar of Trade Marks [2014] FCA 1304; 227 FCR 511 at [18], Yates J made it clear that Apple would be able to use its trade mark of the word sought to be registered (in that case, APP STORE) in whatever font, capitalisation, or stylisation it chose.
2. The real, tangible danger of deception or confusion is concerned with a likelihood (not a probability) as to whether the buyer would be "caused to wonder" at the mark's origin (Self Care at [71]).
3. There is a difference between a trade mark registered in respect of a word, and a trade mark registered as a logo. One must not "too readily" characterise a logo mark as a word mark when assessing the question of deceptive similarity, as that "may effectively convert a composite mark into something quite different" (The Agency Group Australia Ltd v HAS Real Estate Pty Ltd [2023] FCA 482; 174 IPR 153 (Agency Group) at [62] (Jackman J)). Against that proposition the Respondent says that the normal and fair use of the CR-V Mark is to be considered in light of the comments of the Full Court in Puma SE v Caterpillar Inc [2022] FCAFC 153; 407 ALR 446 (Puma FC) (Nicholas, Rofe and McElwaine JJ) at [68]:

...That the applicant applied for a fancy form of mark did not limit the scope of the inquiry pursuant to s 44(1) of the Act to that precise form. The question of deceptive similarity is to be resolved notionally on the assumption that the PROCAT mark, if registered, will be used to the full extent of the statutory right of the owner. In answering that question it was clearly open to the primary judge to consider, as examples of normal and fair use, the manner in which the PROCAT mark had been used in the USA and Canada. The differences in shading and colouring, whether or not combined with capital lettering, did not step beyond normal and fair use of the applied for mark and in our view illustrated the likelihood of confusion that his Honour was required to assess having regard to all of the relevant circumstances.

1. The comparison takes into account the look and the sounds of the mark (Self Care at [26]). The notional use of the proposed marks and the cited mark occur across the full scope of the monopoly. The comparison is across the normal and fair use of the mark. This question is concerned with the monopoly granted by the trade mark act, which encompasses the "...full parameters of fair and normal use of the applied for mark" (Puma FC at [62] citing Puma at [113]).
2. It is relevant to consider whether one mark is contained in another. The Respondent pointed to a number of examples where one mark was contained within a subsequent mark, and the question arose whether the common elements had been absorbed, or if they had been found to be deceptively similar.

(1) In Energy Beverages LLC v Cantarella Bros Pty Ltd [2023] FCAFC 44; 407 ALR 473 (Cantarella) (Yates, Stewart and Rofe JJ), the Court considered whether MOTHER was deceptively similar to MOTHERSKY. The Court found at [168], when considering deceptive similarity, the fact that MOTHER was wholly incorporated into MOTHERSKY was important, and that MOTHER did not lose its identity simply by the addition of the suffix "sky". At [171], the Court was persuaded that MOTHERSKY was deceptively similar to MOTHER.

(2) In Puma, the CAT element was seen to be included in the portmanteau PROCAT and it was determined that use of the PROCAT mark would be likely to cause confusion, as there was a real and tangible risk that a significant number of consumers would be confused as to whether goods labelled PROCAT were connected in the course of trade with CAT branded goods (at [129]). An application for leave to appeal this decision was refused in Puma FC.

1. The Respondent submitted that the effect of these cases demonstrate that it is a relevant but not determinative consideration that one mark is contained in another and this assessment requires consideration of the impact of the similarities when considering the mark as a whole. It was also submitted that shared elements of a mark have been found to give rise to deceptive similarity when consumers might think the mark is a variant or sub-brand.
2. It is well accepted that words do not exist in a vacuum of perceived look and sound. In CA Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539; 52 IPR 42, Ryan, Branson and Lehane JJ observed that different ideas were conveyed by the words "Grace" and "Gold" as part of the analysis concluding that HILL OF GOLD was not deceptively similar to HILL OF GRACE in the context of wine (at [57]). That was largely because of consumer understanding of the constituent words in the context of wine sales.
3. It is in the context of these principles that I turn to consider this case.

1. The Appellant asserts that the Respondent bears the burden of establishing that the Applicant Marks are deceptively similar to the CR-V Mark. The Respondent argues that there is no burden, and that it is simply a question of whether I am satisfied on the balance of probabilities that the marks are deceptively similar or not. In Melbourne Bone and Joint Clinic Pty Ltd v Registrar of Trade Marks [2024] FCA 53; 182 IPR 346, the Registrar of Trade Marks opposed registration of a trade mark on the basis that it lacked capacity to distinguish under s 41. Justice Moshinsky said at [7]:

It is common ground that a presumption of registrability is embodied in s 33 of the Trade Marks Act. This section provides that the Registrar must accept an application for registration unless satisfied that there are grounds for rejecting it (thereby placing the onus for proving a ground of objection upon the Registrar).

1. I accept that this is the correct approach, and that it follows as a matter of substance that the Respondent bears the burden of establishing that each of the Applicant Marks are deceptively similar to the CR-V Mark.
2. The date of the assessment is the filing date for each of the Applicant Marks (see [1] above). There is no dispute that the registrations for the Applicant Marks and the CR-V Mark overlap, although the registration for the CR-V Mark is broader. Any reputation in the CR-V Mark is irrelevant to my analysis.

1. I commence with an overall analysis of each of the Applicant Marks, and the CR-V Mark, considering each in their entirety, taking into account their look and sound (Self Care at [26]). The goods in respect of which they are registered overlap. I have considered in this respect the way in which the opposed mark could be used within the normal and fair use granted by registration to determine whether it is likely to deceive or cause confusion (Puma FC at [72]).
2. The Appellant submits that after considering the marks holistically, the use of acronyms, hyphens and associated consumer knowledge of the acronym "RV" would be relevant alongside any use of the mark being deployed in sub-branding (as seen in Paige and Sage at [88] (Needham J)). The Appellant submitted that Cooper Engineering Pty Ltd v Sigmund Pumps Ltd [1952] HCA 15; 86 CLR 536 (Cooper Engineering) (Dixon, Williams and Kitto JJ) demonstrated this process at 538:

In the present case the prefix of the two words is the same word "Rain", but the suffix "master" differs from the suffix "King" in appearance and in sound. This makes the two marks as a whole quite distinct and the marks must be judged as a whole. "Rainmaster" does not look like "Rain King" and it does not sound like it.

1. The analysis takes place in the context of the notional buyer of recreational vehicles.
2. I accept that there is no general rule that the first part of a mark is more important than subsequent parts of the mark. In Caporaso Pty Ltd v Mercato Centrale Australia Pty Ltd [2024] FCAFC 156; 306 FCR 549 (Katzmann, Wheelahan and Hespe JJ), the Full Court said at [149] (emphasis original):

Those decisions establish no such principle. Both Burchett J and Lindgren J were concerned with emphasising, on the particular facts of those cases, the importance of the first syllable of particular words. Those observations were made in the course of comparing the whole of the relevant marks, and they were directed to the precise nature of the marks in question, taking into account features such as emphasis and accented syllables. In our view, the primary judge was correct not to reason by reference to factual findings made in previous cases. Nor do we accept Caporaso's submission on the appeal that these isolated sentences in Conde Nast and Frito-Lay amount to "authorities" for any "principle" - whether a principle of law, or of English usage.

1. The Respondent argued that in each of the Applicant Marks, there is "CRV". The letters "CRV" are an important part of the mark. The Respondent argues that it is important, but not determinative that one mark is contained in another (see Cantarella at [170]). This is in distinction to the mark THROTTLE JOCKEY in Jockey International, Inc v Darren Wilkinson [2010] ATMO 22, where the meaning ascribed to the word THROTTLE in combination with JOCKEY altered the meaning so that consumers would assume THROTTLE JOCKEY was something very different to a jockey and would recognise a THROTTLE JOCKEY as one who "rides" the accelerator (or throttle), denoting the user of a motorcycle or motor vehicle (at [38(vi)]). The Respondent submits that unlike THROTTLE JOCKEY, there is no qualifier or other material which changes the Applicant Marks' identity as to render them distinct from the CR-V Mark. Of course, a decision of the ATMO carries no precedential value, however it is an illustration of the converse position to that which was identified by the Full Court in Cantarella.
2. The Appellant relies upon several cases in which distinctive word elements of a prior registered mark were reproduced in a subsequent trade mark; when considered as a whole, the two marks have not been held to be deceptively similar. The decisions are both of this Court and the Registrar and while I have considered the cases relied upon, each case requires careful analysis of its own facts.
3. I accept the submission that the notional buyer of a recreational vehicle is likely to be more considered in their analysis of a potential purchase than, for example, a purchase of a minor or inconsequential kind. That is one of the contextual circumstances that is relevant to the analysis described in Self Care. Moreover, it is important to bear in mind that a consumer who is caused to wonder may, upon researching the matter further, stop wondering, and no longer be deceived.
4. However, the mark which caused the consumer to wonder would still have been deceptively similar. In this respect, I accept that the notional buyer of a caravan is a person who will do their research but I do not consider that this lessens the potential impact of the prominent features of the Applicant Marks. In this respect, while the evidence is strong in support of the notion that the letters "RV" carry a particular meaning within the industry, I am not satisfied that it does so among the community more broadly. Moreover, while the evidence is that the use of "RV" is the genesis of the acronym adopted, the evidence does not support the conclusion that it is recognised as operating in a descriptive manner.
5. The notional buyer is a person in the market for the goods sold by the Appellant, but is not necessarily in the caravan industry. They do not have an in-depth understanding of the landscape and terminology used in that industry - particularly at the start of their purchasing deliberations. I do not consider that they will pause upon seeing the letters "RV" in the acronym "CRV" and discount or reduce their importance as a badge of origin because they perceive a connection with a descriptive element of the product being purchased.
6. In addition, I accept that vehicles are commonly described by a combination of names which serve the purpose of distinguishing types of a particular manufacturer's offerings. While my analysis is not concerned with the particular use by the Appellant, those goods provide a typical example of the kind of branding, where CRV is used to indicate origin. This elevates the importance of CRV in the context of the overall marks.
7. I turn then to consider the circumstances of the notional buyer in the context of each of the marks in issue.

1. The CRV GLADIATOR FAMILY mark is longer than the CR-V Mark, and is rendered in words, not in a stylised form. It is part of this analysis the Appellant submits that the hyphen is significant because it conveys different ideas and notions as between the CR-V Mark on the one hand, and CRV GLADIATOR FAMILY on the other.
2. The aural impact of the words is likewise said to be important: CRV GLADIATOR FAMILY takes longer to say, and sounds quite different to the manner in which CRV would be pronounced when considered as a whole. The Appellant submitted that the notional buyer would perceive CRV GLADIATOR FAMILY as a shortened version of C- RECREATIONAL -VECHICLE-GLADIATOR-FAMILY.

1. The Appellant points to the Full Court case of Australian Meat Group Pty Ltd v JBS Australia Pty Limited [2018] FCAFC 207 (Allsop CJ, Besanko and Yates JJ) (Australian Meats), in which the acronym AMG was not deceptively similar to the acronym AMH in circumstances when they possessed similar elements such as the beginning letters "AM" alongside appearing within a map of Australia. The Full Court discussed at [81] that the "world of commerce is conditioned to the use of acronyms" and there is only so many acronyms available as "the pool of acronyms and initialisms is more limited than the reservoir of words from which they are sourced". The Appellant further relies on Australian Meats at [83] to submit that the "Australian public is quite used to acronyms in the market place and is used to relying on small differences to distinguish between them". It was submitted that as many traders of RVs use "RV" in their trademark, less weight should be placed on the fact that the Applicant Marks and CR-V Mark share a common element of "RV".
2. The Appellant also pointed to the ATMO decision of Re Honda Motor Co. [2021] ATMO 103; 169 IPR 283 (Re Honda) as an example of acronyms in the automotive industry. This decision involved two marks containing "HEV" that were not deceptively similar. The Appellant relies on this case to show that the automotive industry is part of the world of commerce and that "automotive acronyms are used extensively in the market place" (at [19]).
3. The Respondent argued that the evidence establishes no more than the common use of "RV" in the industry, but not among the public. This was said to be clear from a number of aspects of the evidence:

(1) The websites of the Appellant and other leading manufacturers of caravans (notably Jayco) do not use "RV" to refer to their goods in customer facing advertisements.

(2) Most of the websites using "RV" are for trade or repair - i.e. are directed toward those who are already involved in the market to some extent or another.

1. The Appellant submitted that when considering whether two trademarks are holistically similar, elements of the trade marks that are common in the course of trade are less likely to be striking to the consumer and should be given little weight. The case relied upon was Cooper Engineering where the Court was concerned with whether the mark "Rainmaster" was deceptively similar to "Rain King". At 539 the Court held:

A purchaser of spray nozzles and sprinklers would not be likely to be lacking in discernment. He would not be in a hurry to buy. He would not be likely to pay any attention to the presence of a common word like rain in the conbination. That prefix already appears in other trademarks for goods of the same description sold on the Australian market such as Rainwell, Rainmaker, Rain Queen, and Rainbow. The learned registrar was right in holding that the only similarity between the two marks is the common prefix "Rain" and that this similarity is not sufficient to create a reasonable likelihood of deception when the remaining portions of the marks are so different.

1. The Appellant further relied upon the case of Powell v Glow Zone Products Pty Ltd (1997) 150 ALR 411; 39 IPR 506 at 513 (Davis J) where the marks in question were "GLOCAPS" and "CAPS THE GAME", and where the evidence showed that the term "caps" was common use in trade, as used to describe the goods that were subject of the game.
2. However, I have concluded that the effect of the evidence is that while "RV" is commonly used within the industry, and the extent of knowledge and understanding of that abbreviation by the broader public is not established. The evidence certainly does not rise to the level of establishing that members of the public who are not otherwise associated with the caravan or recreational vehicle industry habitually use or are exposed to the "RV" initialism so that they would primarily associate it with "Recreational Vehicle."
3. More generally, I accept that the market is acculturated to the use of acronyms and three letter branding devices. However, that does not mean that similarity between marks, where the similarity is because of acronyms, can be ignored: it is simply another example of an element that is to be assessed in the overall, holistic analysis of each mark and the context within which it is used.
4. In Paige and Sage, a key surrounding circumstance in the proceeding centred around the extent to which consumers would understand that the use of the "+" symbol indicated a collaboration that could lead to the trade mark being misleading. In that case, evidence was required about the way in which the public understood "+" and "x" in the context of fashion branding and brand collaborations. This case is quite different: the Appellant seeks to establish a particular knowledge of, or significance attached to, the "RV" initials. The Respondent asserts that three letters which already comprise the main portion of the CR-V Mark (albeit a device mark) are capable of carrying out a branding function. I accept that they are capable of doing so, and that they do carry out that function. It would be difficult to see why they would have been accepted for registration had that not been possible.

1. This is not a case where "CRV" is being used as a trade mark, separate from the balance of the words that comprise the Applicant Marks.
2. The core of the CR-V Mark are the letters "CR-V" albeit that they are rendered in a stylised font and registered as a logo. This bears some resemblance to the situation considered in Cantarella (see [32(1)] above).
3. It is important in this case that words do not exist in a vacuum of perceived look and sound. The context impacts what the notional buyer will remember and cognitively retain as branding cues. The Respondent argues that consumers are well aware of the common practice of applying cascading branding, for example, a "house" brand, followed by a range name, followed by a model name. In the context of the Appellant's business that would be:

(1) House Brand / Manufacturer: Crusader

(2) Range Name: CRV

(3) Model Name: Gladiator Family.

1. It was Mr Valentino's evidence that sales of caravans were often face to face, and that in that process, sales staff often refer to brand names, range names and model names orally, and that customers also habitually referred to the model and grade names orally. When asked whether other manufacturers of caravans and camper vans also promote their vehicles under the names of a manufacturer name, a model name or range name, Mr Valentino replied: "It's typically that way. Yes."
2. When asked whether there were other ranges that also use acronyms in the names of the range, he said "I suppose they do. Yes". The cross examination went on:

Counsel: ...And those names include things like EVX. Are you aware of the EVX?

Mr Valentino: Yes. I've heard of it. Yes.

Counsel: And CRX?

Mr Valentino: Yes.

1. However, when asked whether members of the public would know what the acronyms stood for, Mr Valentino said that he believed that they would know because they researched the field before engaging in it.
2. The Appellant argues that because consumers are not used to seeing three letter acronyms as a house brand, they would not see "CRV" as a house brand, and that the Respondent would have to establish by evidence that its hypothesis as to the branding hierarchy set out above is well understood. However, the evidence of Mr Valentino is sufficient to establish that there is well understood branding conventions in automotive circles, by which vehicles are identified by house brand, range name and model name.
3. The Respondent argues that there are examples of three letter initials in the market (some of which were put to Mr Valentino in cross examination) and that in any event, there is no reason to put three letter initials into a category that excludes them from being a house brand or range name. I agree with this submission. There is no logical reason that a three letter acronym or initialism should be treated as being unable to serve the function of being a house brand or range name. Indeed, the evidence is that CRV serves as a range name for the Appellant. In the evidence filed by the Appellant there are other examples of three letter initials being used in a similar way. While there is evidence about the use of three letters in this kind of branding manner, I do not accept that such evidence was necessary to prove this point: that is because there is no basis to infer that the three letter initialism could not provide that function.
4. I am satisfied that, in the context of goods like those covered by the Appellant's proposed registration, the notional buyer would have understood that "CRV" in the Applicant Marks indicated the range or house brand of the manufacturer. The fact that the CR-V Mark features the same letters in the same order, albeit with a hyphen, would cause a notional buyer to wonder whether each vehicle had the same origin as those bearing the CR-V Mark.
5. This analysis is at risk of prioritising one element of each mark over the holistic analysis that the authorities call for. However, I am satisfied that the analysis remains a holistic one, albeit one which gives significance to the characteristics of the notional buyer in the marketplace who is habituated to the naming conventions common in the industry. Those naming conventions operate to give particular emphasis or meaning to the order in which branding words appear, and it is appropriate to give effect to that reality in the particular circumstances of this case.

1. The Appellant submits that this is a rare category of case where a hyphen is relevant because its position in the CR-V Mark indicates that the "CR" is one concept and the "V" is another, so that consumers would not consider Applicant Marks is related to a recreational vehicle and so would not confuse it with the CR-V Mark. This argument has two difficulties:

(1) First: as noted above, the evidence does not establish such a clear understanding on the part of the public in relation to the initialism "RV";

(2) Second: it is not clear that consumers would consider that the hyphen between the "CR" on the one hand and the "V" on the other has any real meaning. No intrinsic meaning suggests itself.

1. The hyphen has no effect on the aural and oral impact of the marks. The letters CRV and CR-V are pronounced in precisely the same way. This has a more significant relevance because the evidence establishes that the notional buyer in this arena is likely to engage face to face with the vendor, and, on Mr Valentino's evidence, discuss the purchase of a caravan orally, and use the model, range and grade names orally. The evidence is therefore to the effect that there will be oral and aural engagement with the CR-V Mark and the Applicant Marks in a way that does not allow for visual differentiation. This minimises the impact of the hyphen and any other stylistic differences between the two marks. This case can be distinguished from Agency Group, which involved a stylised version of the word "Agency" in which the cross bar on the "A" was dropped to the base of the letter to resemble a house. In the context of a mark that was generally deployed visually, and where the device was differentiated in a way that related to its sphere of operation being within the real estate industry, the marks were not found to be deceptively similar.

1. The Appellant argues that the CR-V Mark is a device, and that must contribute to the extent of its differentiation from the word marks that are the Applicant Marks. There is force in this argument. The registration of a device (or fancy mark) is different from the registration of words, and it grants narrower rights. I accept that a device registration cannot convey rights that are as broad as the rights conveyed by a word mark.
2. However, each case turns on its own facts. The device in this case is a stylised rendering of three letters with a hyphen. It has a single way of being read and pronounced. While the scope of the protection afforded by the scope of its monopoly (having regard to the terms of s 7 of the Act) is not as broad as it would be if it were a word mark, I accept that the protection afforded it encompasses its use without the hyphen. Moreover, as made clear by Gummow J in Johnson & Johnson v Kalnin [1993] FCA 210; (1993) 114 ALR 215; 26 IPR 435 at 441:

...common experience would affirm, that fine details such as different type faces are likely to be overlooked by those to whom these marks will be addressed in trade.

1. Those comments remain apposite even in the context of a buyer with heightened awareness, as in this case.
2. The CR-V Mark also encompasses the spoken words. It is very close in most respects to the first three letters of each of the Applicant Marks, and there is little relevant distinction created by the fact that it is registered as a device.

1. The Appellant argues that the point of purchase is the most relevant to the question of deceptive similarity. In this case, that is said to be after careful engagement by the notional purchaser, due to their concern at entering into a significant transaction. In a competitive industry, where there are long lead times and a value in the ongoing relationship necessary to conclude a sale (often after months of engagement) there is a value in engagement at all stages of the relationship between the potential vendor and the notional purchaser. So much was recognised by Jackman J in Agency Group (at [75]):

While I accept that the question of confusion is not to be approached solely by reference to the ultimate point of entering into the transaction, and also extends to anterior stages of inducing interest in goods or services, I regard the heightened awareness and concentration of consumers as applying also at the early stages of a real estate transaction.

1. In Vivo International Corporation Pty Ltd v Tivo Inc [2012] FCAFC 159; 99 IPR 1 at [115], Nicholas J observed that:

Thirdly, a mark may be deceptively similar to another mark even if its use might not result in any deception or confusion that induces a sale or persists until the moment of sale. Fourthly, allowance must be made for the "imperfect recollection" of a trade mark by people of ordinary memory and intelligence especially those who know one mark but do not know the other.

1. It seems reasonably clear that the question of whether a trade mark is deceptively similar to another is assessed by reference to the entire monopoly, and by reference to the entire course of marketing, and can encompass the early stages of engagement. I therefore do not accept that the time for the assessment is confined in the manner submitted by the Appellant. The engagement will be at all points of the process.

1. It was submitted that the GLADIATOR FAMILY element of CRV GLADIATOR FAMILY conveys a vague notion of "an ancient warrior or fighter, combined with the notion of a large or family-sized RV".
2. The words GLADIATOR FAMILY are not referenced in the CR-V Mark. The words GLADIATOR FAMILY are considerably longer, and different visually and aurally to the CR-V Mark.
3. In this respect, CRV GLADIATOR FAMILY wholly contains the CR-V Mark, albeit without the hyphen, and not necessarily in the same font. The characteristics of the notional buyer in the relevant class would understand the incorporation of the CR-V Mark into CRV GLADIATOR FAMILY as having a particular relevance in the context of the caravan industry. For this analysis, it does not matter whether the CR-V Mark has a reputation in relation to vehicles - the issue is determined by reference to the characteristics of the notional buyer in the market for goods of a kind covered by the registration.
4. The impact of the automotive naming convention to which I have referred to above at [62] is significant in this case. In effect, this is a case where the notional buyer might think (or be caused to wonder) whether the Applicant Marks represent a variant or sub-brand in common with the CR-V Mark (similar to the way in which CAT and PROCAT operated in Puma). The subsequent words GLADIATOR FAMILY are consistent with this naming convention, operating as a model name. It is for that reason that the addition of those words does not operate to undo the overall impression of CRV GLADIATOR FAMILY as being deceptively similar to the CR-V Mark.
5. Accordingly, while keeping steadily in mind the need to carry out a holistic analysis, the risk of confusion can arise where a shared element causes a consumer to think that the brand is a "sub-brand". In reaching this conclusion, I have found that:

(1) The Appellant's goods overlap directly with the goods for which the CR-V Mark are registered.

(2) The notional buyer is an ordinary member of the community and not involved in a specialised caravan industry. They do not ascribe a particular meaning of significance to the letters "RV" as part of a three letter initialism or acronym. Nonetheless, they are aware of the usual conventions for naming vehicles, being the application of a house brand, range name and a model name, and are aware that vehicles like caravans are subject to those naming conventions.

(3) The goods sold by the Appellant are often referred to orally, so that differences arising from the presence of a hyphen and the stylised font are minimised. The letters "CRV" would be pronounced the same in both CRV GLADIATOR FAMILY and the CR-V Mark. The letters would be pronounced as "C - R - V".

(4) The fact that there is simple stylisation of the CR-V Mark is not likely to be recalled as part of a consumer's imperfect recollection, given the capital font and simple bolding. The fair and normal use of the CR-V Mark would therefore be relatively broad for a logo mark.

1. The initials "CRV" are used by the Appellant as a brand under the parent brand "Crusader", and consumers would understand it as such. The additional elements in CRV GLADIATOR FAMILY (being the words GLADIATOR FAMILY) would therefore be perceived as being a model name. Therefore, considered as a whole, and in the context in which the ordinary consumer would encounter them, there is a real, tangible danger of deception or confusion occurring, including that a number of persons will be caused to wonder whether it might not be the case that the two vehicles come from the same source.

1. The CRV FAMILIA mark is a shorter mark, with fewer syllables with which to distinguish itself from the CR-V Mark, both visually and aurally. The Appellant submitted that the CRV FAMILIA mark alludes to ideas of "exotic or foreign or holiday culture" and a concept of "family" by using the Spanish word for family. Overall, the analysis applied to the CRV GLADIATOR FAMILY mark applies with equal force to the CRV FAMILIA mark.
2. I am satisfied for the same reasons as the CRV GLADIATOR mark, that the CRV FAMILIA mark is deceptively similar to the CR-V Mark.

1. This case is about whether the notional buyer of a caravan who had an imperfect recollection of a caravan branded with the CR-V Mark would be caused to wonder whether it had an association with caravans branded with the Applicant Marks. This case was skilfully and carefully argued. I have considered the evidence and principles before me and have concluded, for the reasons I have set out above, that the CR-V Mark and the Applicant Marks are deceptively similar. No other exceptions to rejection in s 44(3) or (4) of the Act were pressed. It follows that the appeal must be dismissed. I will hear the parties on the question of costs.

I certify that the preceding eighty-seven (87) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Bennett.