Section 44

1. Section 44 relevantly provides:

(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if:

(a) it is substantially identical with, or deceptively similar to:

(i) a trade mark registered by another person in respect of similar services or closely related goods; or

(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

1. In its SGP, the Opponent nominated its registration detailed below as the basis for this ground of opposition:

Class 41: Health club services (health and fitness training); Boot camp services (fitness training); Conducting fitness classes; Operation of physical fitness centres; Personal trainer services (fitness training); Physical fitness training services

1. To successfully oppose the Application pursuant to s 44, the Opponent must establish each of the following requirements:
   • the Opponent's Mark has a priority date which is earlier than the Relevant Date and is held in a name other than that of the Applicant ('first requirement');
   • the Applicant's Services are similar to the Opponent's Services ('second requirement').
   • the Trade Mark is substantially identical with or deceptively similar to the Opponent's Mark ('third requirement').
2. The Opponent's Mark satisfies the first requirement in that it has an earlier priority date of 4 November 2019 and is in the name of a person other than the Applicant.

1. The second requirement will be satisfied if the Applicant's Services are similar to the Opponent's Services. Section 14 provides that two sets of services are similar if they are the same or of the same description. Whether two sets of services are of the same description depends on whether the services belong to the same or different trades, as determined through consideration of the following factors:[4]
   • the nature and characteristic of the services;
   • the origin of the services;
   • the purpose of the services;
   • whether the services are usually provided by one and the same business or person;
   • whether the services are provided from the same sources, in the same area or district, during the same season or in relation to the same related goods or services and to the same class or classes of customers; and
   • whether the services are regarded as the same by those who provide them.[5]
2. Both the Applicant's Services and Opponent's Services include various health and fitness services which are identical or at least services of the same description. However, a number of other services covered by the Application are different to the Opponent's Services including for example, mentoring (education and training), publication services, and social club services. Many of the services claimed in the Application are not limited to the fields of health and fitness and hence would cover services that are unrelated to the Opponent's Services. It is sufficient for the purposes of this decision that I have found some of the Applicant's Services to be similar to those of the Opponent and for reasons which will be apparent below, I need not determine this question with any further specificity.
3. Having found that some of the Applicant's Services are similar to the Opponent's Services, the determinative question for this ground of opposition is whether the Trade Mark is substantially identical or deceptively similar to the Opponent's Mark.

1. The test for determining whether trade marks are substantially identical was articulated by Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd ('Shell'):

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[6]

1. The marks to be compared in the present case are:

1. On a side by side comparison, it is apparent that the only common elements between the two marks are the numeral 40 and word TRANSFORMATION. The marks are otherwise completely different in their composition. The differences between the Trade Mark and Opponent's Mark are obvious at first glance and as such there is not a total impression of resemblance. The Trade Mark is not substantially identical to the Opponent's Mark and I move to the question of whether the marks are deceptively similar.
2. Section 10 of the Act defines "deceptively similar" as follows:

a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

1. The comparison of the marks is no longer to be conducted side by side but rather involves a consideration of the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [trade mark].[7]
2. It was stated in Clark v Sharp:

One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance to all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective wholes.[8]

1. This comparison of the mark is to be made by reference to the standards of ordinary people 'who should not be credited with high perception or habitual caution' and in the context of the business and the way in which the particular class of services are provided.[9] A likelihood of confusion will exist if there 'is 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'.[10] There must be a real tangible danger of confusion; a possibility of confusion is not sufficient.[11] It is not necessary that the confusion persist up to, or contribute to inducing, a sale.[12] The use to be considered is notional use.[13]
2. It may be relevant that an element of the mark is descriptive. This does not preclude a finding of deceptive similarity,[14] but the Full Court noted in Combe International Ltd v Dr August Wolff GmbH & Co. KG Arzneimittel:

It is correct to observe, as his Honour did, that an element of a trade mark that is descriptive may not tend to cause confusion about the source of a product because it calls to mind the nature of the product, rather than its trade source. However, as we have noted, each case must be considered on the basis of the marks in question and the facts established. The authorities do not say that where there is a common descriptive element in marks that component is to be ignored for the purposes of comparison. In this regard the observation made by Lord Evershed (Asquith and Jenkins LJJ agreeing) in Broadhead's Application (at 215.1-5), to the effect that even where there is a common denominator one must be careful not to treat words as though the common part was not there at all, is apposite.[15]

1. In this case, the overall appearance and sound of the two marks are distinct. The Trade Mark has a different structure and length to the Opponent's Mark. Further, the words 'BEYOND THE ULTIMATE' at the beginning of the Trade Mark are distinctive and memorable whereas in the context of fitness and health services, the common elements are descriptive of services aimed at individuals over forty who wish to 'transform' their health, fitness or body. The commonality of the numeral 40 and word 'TRANSFORMATION' in the marks is unlikely to lead consumers to assume that the services offered under the respective marks are related, as opposed to being separate businesses offering similar services. While the two marks convey a somewhat similar idea, the Trade Mark suggests a superior transformation experience whereas the Opponent's Mark implies a specialised centre. In my opinion, given the overall differences in the marks, there is not a real tangible danger that consumers, even those with an imperfect recollection, will be deceived or confused.
2. I am not satisfied that the Trade Mark is deceptively similar to the Opponent's Mark and accordingly, the s 44 ground of opposition is unsuccessful.

Section 58A

1. Section 58A applies only where a trade mark has been accepted for registration under the provisions of s 44(4) or a similar provision of the regulations made under Part 17A.
2. The Trade Mark has not been accepted under s 44(4) or similar provision. Further, the Applicant has not filed any evidence of use to persuade me that I should apply the provisions of s 44(4). Therefore, the s 58A ground of opposition is not available in this case.

1. Section 55 of the Act relevantly provides:

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

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

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

1. The Opponent has failed to establish either of the grounds of opposition nominated in the SGP. Trade mark application number 2218184 may proceed to registration not less than one month from the date of this decision.
   1. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the Application should be in accordance with the Court's order or direction.
   2. In its Notice of Intention to Defend, the Applicant requested an award of costs. As costs generally follow the event, I award costs against the Opponent under s 221 in the applicable amounts set out in Schedule 8 of the Regulations.

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

[4] Re Jellinek (1946) 63 RPC 59, 64 (Romer J).

[5] Trade Marks Office Manual of Practice and Procedure, [26.4.2].

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

[8] Clark v Sharp (1898) 15 RPC 141, 146 (Byrne J).

[9] Australian Woollen Mills v F S Walton and Co Ltd ('Australian Woollen Mills') [1937] HCA 51; (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ).

[11] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365; [1999] FCA 1020 [50] (French J).

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

[13] Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43; (1973) 129 CLR 353, 362 (Mason J).

[14] Lift Shop P/L v Easy Living Home Elevators P/L [2014] FCAFC 75, [64] (Besanko, Yates and Mortimer JJ).

[15] [2021] FCAFC 8, [78] (McKerracher, Gleeson and Burley JJ).