2026 ATMO 48

Trade Marks Act 1995 (Cth) - opposition under section 52 - ss 42(b), 44 and 60 pursued - ground of opposition established under s 60 - registration refused

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by DoorDash, Inc ('Opponent') to registration of the following trade mark:

Class 42: Software as a service (SaaS); Information services relating to information technology; Information technology (IT) services (computer hardware, software and peripherals design and technical consultancy); Scientific and technological services; Technological consultancy services for digital transformation ('Applicant's Services')

1. The Trade Mark was examined and advertised as accepted for possible registration on 20 August 2024.
2. On 18 October 2024, the Opponent filed a Notice of Intention to Oppose the Application. On 7 November 2024, the Opponent filed a Statement of Grounds and Particulars ('SGP'). The Applicant filed a Notice of Intention to Defend the opposition on 10 December 2024.
3. The Opponent filed Evidence in Support ('EIS') on 13 March 2025. The Applicant filed Evidence in Answer ('EIA') on 13 June 2025. The Opponent filed Evidence in Reply ('EIR') on 25 August 2025.
4. The parties were given the opportunity to either request an oral hearing or to file written submissions. The Opponent requested an oral hearing by video conference. The Opponent filed written submissions on 25 February 2026 prepared by By George Legal. The Applicant did not request to be heard. As the Applicant neither appeared at the scheduled hearing nor filed written submissions, on the day of the scheduled hearing, I advised the Opponent's representatives that a video hearing was unnecessary. With the Opponent's agreement, no formal hearing was conducted. I have therefore determined this matter on the basis of the SGP, the evidence filed by both parties, and the Opponent's written submissions.

1. The SGP nominates grounds of opposition under ss. 42(b), 44 and 60. The Opponent carries the burden of establishing at least one ground of opposition[2] on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is the Relevant Date.[4]

1. The parties filed the following evidence in this matter:

Declaration of Sanjay Pathiyal, Lead Intellectual Property Counsel of the Opponent, ('Pathiyal')

SP-1 to SP-52 including confidential SP-48 and SP-49

Declaration of Rami Smair, Chief Executive Officer of the Applicant ('Smair')

Declaration of Madison Westall, Senior Manager, Head of Brand Marketing of DoorDash Australia ('Westall')

1. Pathiyal is 662 pages and therefore, only a brief summary is set out below.
2. Pathiyal provides a history of the Opponent, a technology company founded in 2013 in Silicon Valley listed on NASDAQ in December 2020 with a listed value of $72 billion. The Opponent operates one of the largest on-demand logistics platforms for facilitating door-to-door delivery in the United States of America ('USA') and is the category leader in the USA for both meal and convenience store deliveries. Its DoorDash branded platform ('Platform') was launched in the USA in June 2013 and is described as a three-sided market connecting (i) consumers, (ii) merchants, and, in some instances, (iii) Dashers.[5] The Platform facilitates online ordering, order tracking, and delivery or pickup logistics, as well as associated marketing and fulfilment services for merchants such as restaurants and retail stores. In 2015, the Opponent commenced its international expansion, launching in Canada in 2015, Australia in 2019, Japan and Germany in 2021 and New Zealand in 2022. In 2023, the Opponent was named as one of Fortune's Future 50 Companies. Pathiyal annexes a number of third party and the Opponent's newsroom articles referring to the success and expansion of the Opponent.
3. According to Pathiyal, the Opponent launched:
   • 2018 - a subscription service under the trade mark DashPass where consumers pay a monthly subscription fee with no delivery fees and reduced service fees for eligible orders. By the end of 2023, there were over 400,000 active DashPass consumers in Australia;
   • 2018 - Project DASH which has powered 6 million deliveries on behalf of food banks and pantries, community action agencies and other social impact organisations to help people get the food and other essential items they need;
   • August 2020 - its own direct to consumer grocery and convenience store delivery service under the trade mark DashMart; and
   • 2021 - DoubleDash, a feature of the Platform whereby customers in a single order, order from multiple nearby stores.

1. Pathiyal states that the Platform can be accessed from the Opponent's website at 'www.doordash.com' ('Opponent's Website') launched around 10 October 2013 and through various apps such as:

(i) the DoorDash Consumer App launched around 10 October 2013 (iOS) and 17 April 2015 (android) which enables consumers to:

• browse, select and purchase a wide selection of foods and other items from partners in any given city to be delivered to the customer's location within that local area at a time specified by the consumer;
• access a list of merchants offering pickup for items ordered via the Platform;
• order and pay for food or other items using credit card payment or Apple Pay;
• track the status and location of an order in real-time as it is ordered, prepared and delivered;
• provide feedback and reviews about both food quality and their experience with their Dasher; and
• contact the Opponent's customer support lines to resolve any issue.

(ii) the DoorDash Dasher App used by Dashers to review and accept orders for delivery and fulfilment;

(iii) the DoorDash Business Manager App for use by merchants to track orders in progress, contact consumers or Dashers, obtain support from the Opponent, get daily business data with respect to performance and insights into the merchants' businesses and address order issues. Merchants can also use the Platform which itself includes multiple products, to grow, run, and operate their businesses on their own channels both in-store and online. Merchants pay a percentage of an order subtotal, known as a 'commission rate', for each order processed through the Platform.

1. According to Pathiyal, in addition to the Opponent's Website, the Opponent has operated an ecommerce store from the website doordashstore.com since January 2018. The Opponent also owns a further two websites in Australia at doordashaustraliastore.com and doordashfootycash.com.
2. Pathiyal claims that apart from DashPass, Project DASH, Double Dash and Dasher, the Opponent uses further DASH-formative names in Australia including:
   • Dash to refer to both the period within which a Dasher elects to be available for delivery opportunities and the act of a Dasher fulfilling a delivery opportunity;
   • DashRoots, a grassroots community program launched in Australia in February 2024 that brings together local Australian voices to advocate for issues that affect them;
   • Dash Along the Way, a feature that allows Dashers to deliver orders on their way to a specified destination; and
   • SafeDash, a feature that detects if a delivery is taking longer than expected and then automatically checks in on the Dasher.
3. Pathiyal provides details of eleven[6] of the Opponent's Australian trade mark applications and registrations for a range of goods and services, including in classes 9 and 42 which appear at Annexure A and B. The trade marks include Doordash, DOORDASH, DASHPASS, DOORDASH DRIVE, DOORDASH STOREFRONT, SAFEDASH, DASHPASS and DASHERDIRECT.

1. Pathiyal claims that the Opponent began accepting applications for prospective Dashers in Australia in June 2019 and officially launched on 4 September 2019. As of June 2022, the Opponent covered about 80% of the Australian population through Australian restaurant chain partners such as Nando's, Grill'd, and Oporto and supermarkets and pharmacies such as Coles, IGA and Chemist Warehouse.
2. The Opponent's DOORDASH trade mark is advertised and promoted in many different ways since September 2019 including:
   • by the Opponent's merchants who display promotional material bearing the DOORDASH trade mark at their premises and on their websites;
   • on branded merchandise worn and equipment used by Dashers and merchants;
   • by partnerships with food providers such as Sydney Night Noodle Market in October 2020;
   • on the Opponent's Website and various apps;
   • billboards and bus shelters;
   • television advertisements;
   • radio advertisements;
   • media mentions in many publications including major Australian newspapers;
   • promotional events and giveaways partnering with Touch Football Australia ('TFA') since 2022, G Adventures in 2023, 7 Eleven in 2023, and the National Rugby League ('NRL') in 2022 and 2023;
   • sponsorship and endorsement arrangements. The Opponent has a range of overseas sponsorships and partnerships with, e.g., NASCAR, Mastercard, Miami HEAT basketball team, McDonalds, major league soccer and Max, Warner Bros and Australian sponsorships and partnerships with, e.g., National Basketball League naming rights sponsor for all Throwdown games between teams Melbourne United and South East Melbourne Phoenix in 2021 and 2022, Melbourne United in 2022 and 2023, NRL and TFA since 2021, Legends Circuit Oceania in 2021, Married at First Sight in 2022, Afterpay and BioPak; and
   • on social media namely Facebook and including Australia specific sites, X and TikTok (and YouTube after the Relevant Date). Follower numbers are provided.

Pathiyal annexes examples of this advertising and promotion.

1. Pathiyal states that the 2022 Australian Online Grocery Report found that of 2,500 Australian consumers, 48% buy at least some of their groceries online. Additionally, 75% of those surveyed recognised DoorDash. Pathiyal annexes a press release from Spryker outlining the report.
2. Pathiyal confidentially provides approximate figures, as at February 2025, for the number of consumers in Australia who made a purchase, merchants who fulfilled an order, and Dashers who completed an order, as well as the value of marketplace orders. Each of these numbers is considerable. Pathiyal also provides substantial Australian sales revenue for 2022 and 2023 and significant Australian advertising and marketing expenditure. In addition, a global summary of sales and marketing expenses from 2021 to 2024, as reported to the U.S. Securities and Exchange Commission, is provided which are considerable.

1. As a preliminary matter, Samir states that the declaration is confidential to the Applicant. Samir includes material which is in the public domain and cannot properly be considered confidential such as Google search results.
2. The Defence to Opposition ('Defence') annexed to Smair consists primarily of comments and opinions on the grounds of opposition and the EIS which do not constitute evidence nor have documentary support and as such have no probative value. Its repetitive structure, absence of substantive analysis, reliance on generalised assertions and excessive formatting suggest that it may have been generated using AI. The Defence also asserts the coexistence of three 'DASH' marks on the Register, two of which do not exist, and cites a Trade Mark Office decision which does not exist. Such inaccuracies indicate that the Defence was not subject to adequate verification by the Applicant.
3. Although the Trade Marks Office is not bound by the rules of evidence,[7] parties or their legal representatives who elect to use AI tools to prepare legal submissions must do so responsibly. Material produced through AI must be rigorously verified, particularly where case law is cited or statements are made regarding the contents of IP Australia's (or any other government body's) registers.

1. Westall claims that the Opponent has consistently positioned itself as more than merely a restaurant delivery service and its long-term vision has always been to establish the Opponent as a comprehensive on-demand delivery logistics platform, encompassing a wide range of goods and services beyond food. Since 2020, Australian consumers have been able to access a wide array of non-food items via the Platform including groceries, retail products, convenience store items, pet supplies, cosmetics, gifts, alcohol, fresh flowers, household essentials, personal care products, electronics accessories, and stationery. Westall provides a list of the Opponent's partnerships beyond food. Those partnerships, before the Relevant Date, include PETstock, The Reject Shop, Chemist Warehouse, Coles Supermarkets, 7-Eleven, BP (Couchfood), Ampol, Reddy Express (formerly Coles Express), ALM (Thirsty Camel, Porters, Cellarbrations, etc), ILG (Bottlers, Super Cellars, etc), Liquorland, Vintage Cellars, First Choice Liquor Market, IGA and BWS, and after the Relevant Date include Dan Murphy's, LUSH, Costco, Terry White Chemmart and Drakes Supermarkets. Westfall annexes copies of online articles from Australian Dog Lover referring to the Opponent's partnership with PETstock, Smart Company referring to the Opponent's partnership with The Reject Shop and The Australian newspaper referring to both partnerships.
2. Westall declares that the Opponent has partnered with multi-carrier shipping platform Shippit to provide Australian consumers with access to instant, same-day delivery from major retailers. Through this partnership, retailers are able to offer a same-day delivery option at checkout for customers within eligible areas.

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

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

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

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

1. To establish this ground, the Opponent must demonstrate the existence of another trade mark(s) which had acquired a reputation in Australia before the Relevant Date. The Opponent must then establish that because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.
2. The SGP identifies the following trade marks supporting this ground of opposition: DOORDASH ('DOORDASH Mark') and DASHER, DASHPASS, DOORDASH DRIVE, DOORDASH STOREFRONT, SAFEDASH, DASHERDIRECT, DASHROOTS, DASH ALONG THE WAY, DOUBLEDASH, DASHCORPS and DASHMART ('DASH-formative marks'). The Opponent claims a substantial reputation in each of these trade marks both in isolation and as part of a family of marks. As a preliminary observation, each trade mark must be considered and assessed separately for the purposes of s 60.[8]

1. The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick ('McCormick') as referring to 'the recognition of the [trade mark] by the public generally' and includes the credit, image and values projected by the trade mark.[9]
2. Further, Kenny J stated in McCormick that:

In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product ... public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.[10]

1. In Rodney Jane Racing Pty Ltd v Monster Energy Company, it was observed that:

The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[11]

1. Recent cases have also included website analytics and social media engagement as quantitative dimensions.[12]
2. The reputation in the other trade mark must be amongst a 'significant or substantial' number of Australian consumers. What is a 'significant' or 'substantial' number, however, will depend upon the nature of the goods or services in question and thus the nature of the relevant market.[13] In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd, the Full Federal Court stated:

When sufficiency is in issue, the nature of the class is always relevant. As noted in Conagra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 346, for there to be a "a sufficient reputation in the forum requires something more than a reputation among a small number of persons, although the size and extent of the class may vary according to the circumstances of the case". The nature of the good or service in question which the mark is to distinguish necessarily informs the identification of the relevant class of persons who may be deceived or confused. It also informs an understanding of the characteristics of that class which will be relevant to the potential for deception and confusion. As a result it necessarily informs an evaluation of the sufficiency of the number of persons within the relevant class who are likely to be deceived or confused.[14]

1. It is unnecessary for the prior mark to have acquired a reputation in respect of the same goods or services in respect of which the opposed mark is proposed to be registered, although whether it has done so will be relevant to the likelihood of deception or confusion.[15]
2. Here the nature of the Opponent's goods and services comprise an on‑demand delivery logistics platform encompassing a wide range of goods and services and related software, which fall within the broad category of technological services. ('Opponent's Goods and Services'). The Opponent's Goods and Services are provided and used by a wide variety of consumers, merchants of a wide range of goods and services and Dashers and as such the market is likely to be significant. Meanwhile, the 'existence and extent of reputation' must be established as a matter of fact by the Opponent.[16]
3. The Opponent submits that the evidence demonstrates a very substantial reputation in the DOORDASH Mark and the DASH-formative marks in Australia which is evidenced by:
   • geographic coverage of approximately 85% of the Australian population;

• brand recognition of the DOORDASH Mark of over 75% in 2022;
• significant advertising and marketing campaigns and expenditure;
• media mentions of the DOORDASH Mark;
• partnerships and sponsorships;
• significant numbers of consumers, merchants and Dashers;
• significant numbers of orders processed resulting in annual revenue which is impressive and growing annually; and
• significant numbers of DashPass subscribers.

1. The Opponent also submits that the evidence demonstrates that the Opponent has acquired a reputation in Australia as a provider of technology services to merchants. In particular:
   • Software-as-a-Service: the DoorDash Business Manager App available for download through the App Store and Google Play store. This App allows merchants to track orders in progress, contact consumers or Dashers, contact DoorDash Support and get daily business data with respect to performance and insights into their businesses;
   • Merchant Portal: Australian merchants can access the DoorDash Merchant Portal which provides business insights, analytics, and operational tools;
   • White-label delivery technology (DoorDash Drive): DoorDash Drive (rebranded to Drive On-Demand after the Priority Date) gives retailers the ability to offer on-demand delivery to the customers using their own websites;
   • Data and analytics services: the Opponent provides merchants with data-driven insights and real-time analytics; and
   • Partnership with Shippit: the Opponent partnered with Australian multi-carrier shipping platform Shippit to provide 'an instant delivery solution for consumers', enabling Australian retailers to offer instant delivery. This partnership demonstrates the Opponent's provision of technology solutions to major Australian retailers.
2. I agree that the Opponent has adduced a very substantial amount of evidence demonstrating quantitative and qualitive dimensions of reputation in the DOORDASH Mark in Australia in respect of the Opponent's Goods and Services. I am satisfied that the levels of the Opponent's sales, advertising and promotion, indicate that a significant proportion of the Australian public would likely have been exposed to the DOORDASH Mark in respect of the Opponent's Goods and Services.
3. As to the DASH-formative marks, there is no evidence of use of the DASH-formative marks DOORDASH DRIVE, DOORDASH STOREFRONT, SAFEDASH, DASHERDIRECT, DASH ALONG THE WAY, DASHCORPS and DASHMART and minimal evidence of use of the DASH-formative marks DOUBLEDASH, DASHROOTS, DASHER and DASHPASS in relation to the Opponent's Goods and Services. This evidence is limited to:
   • single articles published in magazines such as Convenience World Magazine for DoubleDash and the Opponent's newsroom for DashRoots with no indication of readership numbers;
   • the Dasher App used by Dashers; and
   • a confidential number of subscribers to DashPass.
4. Absent separate indications of quantitative and qualitative dimensions for the DASH-formative marks, I am not satisfied that the Opponent has a sufficient reputation in each of the DASH-formative marks in Australia.
5. As s 60 requires I consider one earlier mark (or at least, one mark at a time), for present purposes, it is sufficient that I focus the enquiry on the DOORDASH Mark. Accordingly, as I am satisfied that the DOORDASH Mark has a significant reputation in relation to the Opponent's Goods and Services in Australia before the Relevant Date, pursuant to s 60(b), consideration must now be given to whether, because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.

1. The concepts of 'deceived' and 'confusion' were considered in Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd wherein Richardson J observed:

"Deceived" implies the creation of an incorrect belief or mental impression and causing "confusion" may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.[17]

1. The likelihood of deception or confusion must be real and tangible.[18] The test for confusion under s 60 is not limited to whether consumers might think that the respective marks are the same. It is sufficient 'if people would have cause to wonder' whether the Applicant's Services appearing in relation to the Trade Mark were being provided by the Opponent.[19] To this end, it has been observed that 'the threshold for confusion is not high'[20] and confusion can be established even if it 'is unlikely to persist up to the point of, and contribute to, inducing sale'.[21] There is no limit to the nature of the confusion, and it is sufficient to cause confusion if the minds of the public are merely perplexed or mixed up as to the relationship between the two.[22]
2. In Registrar of Trade Marks v Woolworths Ltd, French J highlighted the following further matters concerning confusion:

(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.[23]

1. There is no requirement to demonstrate that the trade marks in question are substantially identical or deceptively similar within the meaning of the Act. Nevertheless, it has been observed that:

Confusion cannot arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent's trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.[24]

1. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi,[25] the Registrar's delegate observed that:

... it is possible that a trade mark's reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.

1. In summary, here the assessment of the likelihood of deception or confusion is informed by the strength of the reputation of the DOORDASH Mark in relation to the Opponent's Goods and Services, the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and services of the parties. Further, the relevant comparison is between the reputation of the DOORDASH Mark derived from actual use, and a notional normal and fair use of the Trade Mark in respect of the Applicant's Services.
2. In my view, the DOORDASH Mark has a high level of distinctiveness and I have already held that the Opponent's reputation in the DOORDASH Mark is significant in respect of the Opponent's Goods and Services. As to the similarity of the trade marks, I consider there is sufficient similarity between the marks. The Trade Mark is visually, aurally and phonetically similar to the DOORDASH Mark. Each trade mark comprises two words, each of two syllables, four letters and starting with the letter D. The identical suffix DASH in the marks is distinctive, having no meaning in relation to technological goods and services. The marks also share a degree of aural resemblance and alliteration. While there is a degree of conceptual difference between the two marks on a close analysis, such dissimilarity is overcome by the overall similarity of the marks.
3. The Opponent submits that all of the Applicant's Services should be refused because use of the Trade Mark in relation to any of them would be likely to cause confusion given the Opponent is effectively a technology company. There is a real likelihood that Australian consumers encountering the Trade Mark used in relation to software would believe that one or more of the following is true:
   • the Trade Mark is a variant or extension of the DOORDASH brand. The use of a mark so structurally and conceptually similar to the DOORDASH Mark would cause consumers to wonder whether the Trade Mark is an off shoot, variant or extension of the DoorDash brand;
   • the Trade Mark is a product or service offered by the Opponent. The conceptual connection between 'DISH' and food service reinforces the perception that the Trade Mark might be a food-related or hospitality-focused offering from the Opponent; and
   • the Trade Mark is endorsed by, licensed by, or otherwise connected with the Opponent.
4. On my assessment of the parties' evidence, there is a significant overlap between the Opponent's Goods and Services in which the Opponent has a reputation in the DOORDASH Mark, and the Applicant's Services. The Opponent's online logistics platform would typically provide temporary use of non downloadable online software, programming interfaces, information technology services and technological consulting. In my view, the Opponent's Goods and Services overlap with Applicant's Services, and the potential consumers are also likely to overlap.
5. In conclusion, considering all of the above, I am satisfied on the balance of probabilities there is a real danger that use of the Trade Mark would be likely to deceive or cause confusion amongst a significant or substantial number of relevant consumers. including by causing them to wonder, or be left in doubt, that the Trade Mark is a variant, extension of, or otherwise associated with the DOORDASH Mark or with the Opponent in respect of the Applicant's Services. Accordingly, the s 60 ground of opposition has been established.
6. Having found the s 60 ground of opposition established, it is unnecessary that the remaining grounds be considered.

(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 have found the Opponent has established the ground of opposition it raised pursuant to s 60. I accordingly refuse to register the Trade Mark. If the Registrar is served with a notice of appeal, the disposition of the Application should be in accordance with the Court's order or direction.

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

Class 9: Application software; Computer programs (downloadable software); Computer software; Computer software (programs); Computer software for business purposes; Computer software programs; Computer programs relating to food

Class 35: Compilation and provision of online directories; Online advertising on a computer network; Online data processing services; Online promotion on a computer network; Providing information, including online, about advertising, business management and administration and office functions

Class 39: Delivery of food and drink prepared for consumption; Delivery of goods; Delivery of meals and prepared foods; Food delivery services; Parcel delivery; Food storage services; Food transportation services; Transportation of food

Class 43: Arranging for the provision of food; Food and drink catering; Food cooking services; Food preparation; Internet cafe services (provision of food and drink prepared for consumption); Providing information, including online, about services for providing food and drink, and temporary accommodation; Rental of food service apparatus; Take away food services; Takeaway food and drink services

Class 9: Computer software for use in ordering, paying for and tracking food delivery; Computer software for use in receiving, managing, tracking orders for delivery of food

Class 35: On-line ordering services in the field of restaurant take-out and delivery

Class 42: Providing temporary use of on-line non-downloadable software for use in ordering, paying for, and tracking food delivery; Providing temporary use of on-line non-downloadable software for use in receiving, managing, tracking orders for delivery of food

Class 39: Delivery of perishable food and beverages prepared for consumption upon delivery through a customer loyalty program providing discounted or free delivery services

Class 9: Computer software for use in ordering, paying for, and tracking delivery of food and goods; computer software for use in receiving, managing, tracking orders for delivery of food and goods; computer software for tracking and online order logistics; application programming interface (API) for computer software which facilitates the delivery of food and goods

Class 35: On-line ordering services in the field of restaurant take-out and delivery; online ordering services in the field of goods; online order logistics services

Class 42: Providing temporary use of on-line non-downloadable software for use in ordering, paying for, and tracking delivery of food and goods; providing temporary use of on-line non-downloadable software for use in receiving, managing, tracking orders for delivery of food and goods; providing temporary use of online non-downloadable software for tracking and online order logistics; providing application programming interface (API) platform for facilitating the delivery of food and goods

Class 9: Downloadable computer software for processing orders and tracking orders for delivery of food and goods

Class 35: On-line ordering services in the field of restaurant take-out and delivery; online ordering services in the field of goods; online order logistics services

Class 42: Providing temporary use of on-line non-downloadable software for processing orders and tracking orders for delivery of food or goods; providing temporary use of on-line non-downloadable software for use in receiving, managing, tracking orders for delivery of food or goods; providing temporary use of online non-downloadable software tracking and online order logistics; providing application programming interface (API) platform for facilitating the delivery of food or goods; hosting website for others for online non-downloadable software tracking and online order logistics

Class 9: Emergency response system consisting of a mobile app feature that connects users with safety assistance; downloadable communications software for connecting users with safety assistance; downloadable software for the redirection of electronic messages to emergency services

Class 45: Provision of emergency response notification services, namely, connecting users with safety assistance and providing emergency notification to third parties

Class 35: Customer loyalty program services featuring benefits and rewards in the form of discounted or free on-demand delivery of perishable food and beverages prepared for consumption upon delivery (excluding such services involving the exchange of physical coupons or tokens); administration of a discount program for enabling participants to obtain discounts on on-demand delivery of perishable food and beverages prepared for consumption upon delivery, through use of a membership program (excluding such services involving the exchange of physical coupons or tokens)

Class 9: Downloadable mobile application for use in electronically managing prepaid debit card transactions; downloadable mobile application for use in electronically managing independent contractor payouts; downloadable mobile application for use in electronically managing debit card transactions

Class 36: Prepaid debit card services, namely, issuing prepaid debit cards; prepaid debit card services, namely, payment processing and transaction processing; prepaid debit card services, namely, independent contractor payout and transaction processing services; facilitating payments between local businesses and independent contractors via a prepaid debit card; providing electronic processing of debit card payments

Class 9: Computer software for use in ordering, paying for and tracking the pickup and delivery of goods; computer software for use in receiving, managing, tracking orders for the pickup and delivery of goods; software for accessing and providing restaurant and food ordering, catering, pickup and delivery services.

Class 35: Administration of a discount program for enabling participants to obtain discounts on delivery and pickup services through use of a membership program; administration of a membership program for enabling participants to obtain exclusive deals through use of membership; organisation and management of customer loyalty programs featuring benefits and rewards in the form of discounted delivery services; organisation and management of customer loyalty programs to obtain benefits and rewards in the form of discounted delivery services; online ordering services in the field of consumer goods; online ordering services in the field of restaurant take-out and delivery; promoting goods by means of a subscription-based customer loyalty program; all the foregoing excluding such services involving the exchange of physical coupons or tokens

Class 39: Delivery of consumer goods using discounted delivery services; delivery of food by courier; delivery of food by restaurants using discounted delivery services; pickup and delivery of goods; pickup and delivery of perishable food and beverages prepared for consumption upon delivery through a customer loyalty program providing discounted delivery services; food delivery using discounted delivery services; food delivery and pickup services; on-demand delivery of food and consumer goods; on-demand delivery of perishable items, namely, food, beverages and flowers.

Class 42: Providing temporary use of on-line non-downloadable software for offering and managing customer loyalty program services.

Class 35: Promoting the interests of merchants, restaurants, entrepreneurs, small businesses, small business owners, and independent contractors by means of public advocacy; providing information regarding public advocacy to promote the interests of merchants, restaurants, entrepreneurs, small businesses, small business owners, and independent contractors; providing information regarding public advocacy to promote public awareness of food security, food waste, environmental sustainability, sustainable food sourcing, and safety initiatives; none of the foregoing information services relating to public advocacy to promote public awareness of the sustainable sourcing of lobsters

Class 9: Computer software for tracking and online order logistics application programming interface (API) for computer software which facilitates the delivery of food and goods; computer software for use in ordering, paying for, and tracking the pickup and delivery of food and goods; computer software for use in receiving, managing, tracking orders for pickup and delivery of food and goods; downloadable computer software for managing on-line commerce, processing orders, and tracking orders for pickup and delivery of food and consumer goods; downloadable computer software for managing on-line commerce, processing orders, and tracking orders for delivery of convenience store items; downloadable software for accessing and providing restaurant and food ordering and delivery services; downloadable software for managing courier and delivery networks; downloadable software for providing routing and directional information to couriers; downloadable software for use in facilitating the advertising and marketing of restaurants, merchants, and food delivery services to consumers, for reviewing information concerning restaurants, food, catering and dining options, for searching restaurants and dining options, for accessing restaurant and dining menus, for placing restaurant and food orders, and for monitoring and tracking the status or location of orders, and for providing users with the ability to provide feedback on the food and goods delivery services; downloadable software in the nature of mobile applications, namely, software for placing restaurant orders, for monitoring the status and/or location of restaurant orders, and for assisting independent delivery operators with mapping, planning, and tracking their orders, trips, and finances; downloadable software in the nature of mobile applications, namely, software for use in facilitating the advertising and marketing of restaurants to consumers, for accessing restaurant menus; mobile software application pertaining to the retail industry, namely, a directory for food, beverage and entertainment establishments; downloadable software for use in facilitating the advertising and marketing of restaurants and instant food preparation services to consumers, and for monitoring and tracking the status of orders; downloadable software for use in ordering, paying for, and tracking food orders; downloadable software for use in receiving, managing, tracking orders of food; downloadable mobile application for use in electronically managing prepaid debit card transactions; downloadable mobile application for use in electronically managing independent contractor payouts; downloadable mobile application for use in electronically managing debit card transactions.

Class 35: Administration of a discount program for enabling participants to obtain discounts on delivery services through use of a membership program; administration of a discount program for enabling participants to obtain discounts on on-demand delivery of perishable food and beverages prepared for consumption upon delivery, through use of a membership program; administration of a membership program for enabling participants to obtain exclusive deals through use of membership; administration of programs for enabling participants to obtain discounts on products and services in the field of restaurants and food; advertising services via the internet, namely, promoting the goods and services of others; computerized online ordering services in the field of restaurants and food; customer loyalty program services featuring benefits and rewards in the form of discounted delivery services; customer service management, namely responding to customer inquiries for others in the field of restaurant delivery and carry-out; Administrative processing of purchase orders, being electronic processing of restaurant and food orders for others; online advertising and marketing services for restaurants, namely, internet and mobile marketing that promotes the goods and services of others; online advertising services for third party restaurants, namely, social media, internet and mobile marketing; Compilation of online business directories featuring restaurants and other establishments offering food and consumer goods; online order logistics services; on-line ordering services in the fields of pickup and delivery of consumer goods; on-line ordering services in the fields of pickup and delivery of convenience store items; on-line ordering services in the fields of pickup and delivery of food; online ordering services in the field of restaurant orders for take-out and delivery; on-line ordering services in the field of take-out and delivery from merchants and restaurants; online ordering services that allow for purchases made from multiple merchants; online retail store services featuring convenience store items; promoting and marketing the goods and services of others by distributing advertising material, coupons, coupons and promo codes, and special offers; promoting and marketing the goods and services of others in the field of restaurants and food through the distribution of discounts; promoting and marketing the goods and services of others; promoting goods by means of a subscription-based customer loyalty program; promoting goods, namely, providing information regarding special offers consisting of add-on orders; providing an online ordering service in the fields of food, restaurants, and merchants via a website; providing commercial information to consumers regarding food; providing curated commercial information to consumers about merchants that sell food, restaurants and food; business administration and management of awards and contests to demonstrate excellence in the fields of restaurants and food; provision of an online market place for sellers and buyers of food, goods, and services; retail services for goods, food, and beverages; Business management of logistics service connecting merchants, businesses and restaurants; business data analysis and advertising services, namely, managing, tracking, analyzing, reporting, measuring and optimizing electronic payment transaction data for others; Business administration of initiatives to help restaurants, business owners and entrepreneurs advance their businesses; Business administration of initiatives to help restaurants, business owners and entrepreneurs learn industry-specific skills; Business administration of initiatives to help businesses create tailored business plans; business data analysis and advertising services, namely, managing, tracking, analyzing, reporting, and measuring of merchant transaction data for others; Business data analysis, data compilation, data retrieval and data processing services, namely monitoring, managing, tracking, analyzing, reporting, and measuring merchant transaction data for others for the pickup, transportation and delivery of goods and food.

Class 36: Providing financial assistance to support restaurants, entrepreneurs and businesses; providing working capital financing to restaurants, merchants and businesses; financing services in the form of cash advances; facilitating and arranging for the financing of restaurants, merchants and businesses; prepaid debit card services, namely, issuing prepaid debit cards; prepaid debit card services, namely payment processing and transaction processing; prepaid debit card services, namely, independent contractor payout and transaction processing services; facilitating payments between local businesses and independent contractors via a prepaid debit card; providing electronic processing of debit card payments; providing financial assistance services for restaurants, entrepreneurs, merchants, and businesses.

Class 39: Delivery of consumer goods using discounted delivery services; pickup and delivery of convenience store items; pickup and delivery of food by independent couriers; pickup and delivery of goods; pickup and delivery of food; pickup and delivery of perishable food and beverages prepared for consumption upon delivery through a customer loyalty program providing discounted delivery services; logistic services related to the storage, transportation, pickup and delivery of goods; providing information concerning collection and delivery of assets in transit, namely, vehicles, drivers and delivery containers; providing information via a website in the field of delivery of food, beverages, merchant, and restaurant orders; provision of information through a website in relation to delivery and scheduled delivery services for delivery transportation, packaging and product storage

Class 42: Facilitation of temporary use of non-downloadable online software for use in the reception, management and tracking of orders for the delivery of food; facilitation of the temporary use of non-downloadable online software to place orders, pay for and monitor the delivery of food; providing application programming interface (API) platform for facilitating the delivery of food and goods; providing temporary use of on-line non-downloadable software for managing on-line commerce, processing orders; providing temporary use of on-line non-downloadable software for managing on-line commerce, processing orders, and tracking orders for pickup and delivery of food; providing temporary use of on-line non-downloadable software for managing on-line commerce, processing orders, and tracking orders for the pickup and delivery of goods; providing temporary use of on-line non-downloadable software for offering and managing customer loyalty program services; providing temporary use of online non-downloadable software for tracking and online order logistics; providing temporary use of on-line non-downloadable software for use in ordering, paying for, and tracking pickup and delivery of food and goods; providing temporary use of on-line non-downloadable software for use in receiving, managing, and tracking orders for food and goods; provision of temporary use of non-downloadable software to organize, search, schedule, contract, coordinate, manage and reserve transportation and deliveries; supply of temporary use of non-downloadable software to analyze transportation and deliveries; provide temporary use of non-downloadable online software to manage the exchange and sale of food and beverage products via automated food preparation machine; provide temporary use of non-downloadable software to organize, schedule, and manage the exchange and sale of food and beverage products via automated food preparation machine; providing application programming interface (API) platform for facilitating the exchange and sale of food and beverage products via automated food preparation machine; Platform as a Service being online software platform services for use in facilitating the managing, tracking, analyzing, reporting, and measuring of merchant transaction data for others.

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

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

[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelmann JJ).

[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [4] (Kitto J) ('Southern Cross').

[5] An independent contractor delivery driver for the Opponent.

[6] Pathiyal also provides details of two applications which have lapsed and are therefore no longer relevant.

[7] Regulation 21.15(4).

[8] Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [89] (O'Bryan J) ('Rodney Jane'); Qantas Airways Ltd v Edwards [2016] FCA 729, [160] (Yates J) ('Qantas Airways').

[9] [2000] FCA 1335, [81] ('McCormick').

[12] Jacksons Drawing Supplies Pty Ltd v Jackson's Art Supplies Ltd [2025] FCA 530, [290] (Jackson J); FanFirm Pty Limited v Fanatics, LLC [2024] FCA 764 (Rofe J).

[13] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

[14] [2017] FCAFC 83, [71] (Greenwood, Jagot and Beach JJ).

[15] Taylor v Killer Queen LLC [2026] HCA 5 (Gordon A-CJ, Steward, Gleeson, Jagot and Beech‑Jones JJ).

[16] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [57].

[17] Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410, 423 (citation omitted).

[19] Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd [2016] FCA 1406, [76] (Davies J).

[20] Australian Postal Corporation v Digital Post Australia [2013] FCAFC 153, [70] (North, Middleton and Barker JJ).

[21] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, [105] (Dodds-Streeton J).

[22] Coca-Cola Company v All-Fect Distributors Ltd [1999] FCA 1721, citing Pioneer Hi-Bred v Hy-Line Chicks [1979] RPC 410, 423.

[23] [1999] FCA 1020, [50].

[24] Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd [2010] ATMO 5, [39] (Hearing Officer Lyons), (emphasis in original). See also Qantas Airways (n 8), [142].

[25] [2012] ATMO 124, [40] (Hearing Officer Thompson).