2026 ATMO 2

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

1. This is a decision on the opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by HISMILE IP PTY LTD ('Opponent') to registration of the trade mark detailed below in the name of hong chen ('Applicant'):

Specification: Class 21: dental floss, dental flossers, manual toothbrushes, electric toothbrushes, electric or non electric toothbrushes, toothbrushes ('Applicant's Goods')

1. Following the advertisement of acceptance of the Trade Mark for possible registration on 20 March 2025, the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark on 15 April 2025 and a Statement of Grounds and Particulars ('SGP') on 29 April 2025. The Applicant filed a Notice of Intention to Defend on 31 May 2025.
2. The parties then had an opportunity to file evidence in accordance with the Regulations. The Opponent filed its evidence in support ('EIS') on 7 July 2025 consisting of a declaration of Alex Tomic, director of the Opponent (an IP holding company) and its related trading entity HiSmile Pty Ltd, made on 7 July 2025 with Annexures A1-A2, B1-B5, C1, D1-D2, E1-E3, F1-F6, G1-G3, H1-H23 and J1-J2 ('Tomic'). No other evidence was filed in the proceedings.
3. Once the evidence stage concluded, the parties had the opportunity to request a hearing. Neither party asked to be heard but the Opponent asked for a decision without a hearing. This matter has been allocated to me to determine as a delegate of the Registrar of Trade Marks. I make my decision based on the aforementioned materials.

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

1. Tomic declares that the Opponent manufactures, distributes and sells oral care goods ('Opponent's Goods') globally, including dental bleaching gels, dentifrices and toothbrushes.
2. According to Tomic, the Opponent coined the mark HISMILE in 2014. Since that time, the Opponent has used and registered various marks containing HISMILE including Australian registrations: 1678190 HISMILE in class 3, 1923701 HISMILE in classes 3 & 21, 1923710 HISMILE (fig) in classes 3 & 21, 2087351 HISMILE PAP+ in classes 3 & 21, 2091043 hismile sona (fancy) in class 3 and 2268842 hismile care in classes 3 & 21 ('Opponent's Marks'). Full details of the Opponent's Marks are shown in Annexure A to this decision.
3. The Opponent started selling its HISMILE Teeth Whitening kits in Australia in 2014 through its online store at www.hismileteeth.com ('Opponent's Website'). It has since expanded the HISMILE brand to a range of oral-care products. In February 2023, it released HISMILE manual toothbrushes followed by electric toothbrushes in January 2024.
4. From 2016, the Opponent's Goods were also sold internationally through country specific websites including to the United States of America, United Kingdom and Europe since 2016 and Canada since 2019. Within Australia, the Opponent's Goods have also been available since 2022 through major retail partners. Tomic annexes proof of the first Australian sale in 2014, packaging artwork from 2015, screenshots of archived versions of the Opponent's Website from January 2015 to March 2022 and screenshots in 2025 of the Opponent's Goods being promoted on the websites of Myer, Amazon, Coles, Woolworths, Chemist Warehouse, Adore Beauty and Sephora.
5. Tomic declares that the Opponent promotes the Opponent's Goods across about 17 social media business accounts including TikTok, Instagram, Facebook, Snapchat, X, YouTube and Pinterest. For example, from 2016 to 2019, the Opponent ran Instagram marketing campaigns using 'mega influencers' such as Kylie Jenner, Conor McGregor and Kim Kardahsian as illustrated in Annexure E3. Additional examples of social media promotions and marketing of its HISMILE toothbrushes are also provided. Mainstream media, including the Sydney Morning Herald and Australian Financial Review ('AFR'), have reported on the Opponent's rapid growth driven by its social media presence. The AFR article from 2017 refers to the Opponent spending $10 million annually on social media marketing with $20 million revenue which was forecast to double by January 2018.
6. To demonstrate the Opponent's reputation in its HISMILE mark, the Opponent has provided the total revenue for financial year 2023 ('FY23') which is very substantial. In FY23, the Opponent sold almost 175,000 units of its HISMILE PAP+ STRIPS and about 420,000 units of HISMILE V33 Colour Corrector Serum, being its best-selling products. Australian and global sales figures for the Opponent's toothbrushes are also set out in Tomic.
7. Finally, Tomic asserts that the Applicant is not using the Trade Mark. Tomic notes that the Applicant is an individual residing in the USA and has listed a private residential address as its address for service in Australia. Whilst Tomic attests that the Trade Mark is being used on the website at www.mysmile.com, and that this use is similar to the Opponent's use of HISMILE, Tomic notes that there is nothing on this website to suggest any connection with the Applicant.

Section 44

1. Section 44 relevantly provides:

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

(a) the applicant's trade mark is substantially identical with, or deceptively similar to:

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

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

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

Note 1: For deceptively similar see section 10.

Note 2: For similar goods see subsection 14(1).

1. The SGP nominates registrations 1678190 HISMILE in class 3, 1923701 HISMILE in classes 3 and 21, 1923710 HISMILE (fig) in classes 3 and 21 ('Opponent's Registrations'), detailed in Annexure A.
2. To successfully oppose the Application pursuant to s 44, the Opponent must establish each of the following requirements:
   • one or more of the Opponent's Registrations have a priority date which is earlier than the Relevant Date and are held in a name other than that of the Applicant ('First Requirement');
   • the Applicant's Goods are similar to the goods of one or more of the Opponent's Registrations ('Second Requirement'); and
   • the Applicant's Mark is substantially identical with or deceptively similar to one of more of the Opponent's Registrations ('Third Requirement').
3. I am satisfied that the priority dates of the Opponent's Registrations are earlier than the Relevant Date and that the Opponent's Registrations are in a name other than the Applicant. Therefore, the First Requirement is satisfied.
4. The second consideration is whether the Applicant's Goods are similar to the goods of at least one of the Opponent's Registrations.

1. Goods are considered similar to other goods if they are the same or of the same description as the other goods.[5] In assessing similarity of two sets of goods, the relevant factors include their nature, uses made of the goods including their intended purposes, source of manufacture, respective trade channels and whether the ordinary consumer of the goods would regard the goods as being from a single source.[6] Determining these factors requires consideration of whether the respective goods are of the same nature; whether they are used by the same people for the same purposes, and whether the trade channels are the same. No single consideration is conclusive in itself.[7]
2. The Applicant's Goods are dental floss, dental flossers and various toothbrushes. Both the 701 and 710 Marks cover these goods.
3. The 190 Mark covers various dental products in class 3. In my opinion, these are similar goods to the Applicant's Goods. It is common for manufacturers of toothpaste and other dental care preparations to also manufacture and sell dental floss, toothbrushes and dental flossers. The goods of the 190 Mark are similar in their nature and purpose to the Applicant's Goods, all being for oral care. Moreover, the two sets of goods are generally directed towards the same consumers and sold through the same trade channels.
4. I am satisfied that the Applicant's Goods are the same or similar to those of the Opponent's Registrations. Therefore, the Second Requirement is met.

Substantially identical or deceptively similar

1. I propose to only consider the comparison of the Trade Mark and HISMILE because if HISMILE is not substantially identical or deceptively similar to the Trade Mark, it follows that the 710 Mark will not satisfy the Third Requirement given it has a device element rendering it more different.
2. Justice Windeyer enunciated the test for substantial identity in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd, where his Honour stated:

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.[8]

1. Thus, if a total impression of similarity emerges from a comparison between the two marks, the marks are substantially identical. Whether there is substantial identity is a question of fact.[9]
2. The relevant marks for comparison are:

Opponent's 190 and 710 Marks

1. Although the two marks have a common suffix, on a side by side comparison, the differences in the prefixes 'HI' and 'MY' are obvious. In my view, this difference is sufficient to prevent a total impression of similarity between the marks. The Trade Mark is not substantially identical to the Opponent's 190 and 710 Marks.
2. Turning to the question of whether the marks are deceptively similar, Windeyer J noted in Shell:

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].[10]

1. The common element 'SMILE' is not particularly distinctive in the context of dental care goods and therefore carries limited weight in the comparison of marks. The distinctive impact of each mark instead lies primarily in their respective prefixes, 'HI' and 'MY, which differ visually and conceptually. The immediate visual distinction created by the different prefixes is significant given the first part of a trade mark is generally the most important for comparative purposes.[11] The contrasting prefixes also create different ideas with the Opponent's Mark suggesting a greeting or premium quality ('high' smile) whereas the Trade Mark indicates the consumer's own smile. Whilst there is a degree of aural similarity between HI and MY, the two prefixes are overall distinct. The differences in sight, sound and meaning are such that an ordinary consumer, even with imperfect recollection, would not mistake one mark for the other or assume a common trade source. In my opinion, the overall impressions conveyed by the marks are sufficiently different to preclude any real tangible danger of confusion.
2. I am not satisfied that the Trade Mark is deceptively similar to the Opponent's Registrations and therefore, the s 44 ground of opposition is unsuccessful.

Section 60

1. Section 60 provides:

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 succeed on this ground of opposition, the Opponent must establish that as at the Relevant Date, another trade mark had acquired a reputation in Australia.[12] The Opponent must then establish that because of this reputation, use of the opposed mark would be likely to deceive or cause confusion.
2. In its SGP, the Opponent claims that a reputation existed in the Opponent's Registrations at the Relevant Date for oral-care products and as a result of that reputation, use of the Trade mark is likely to deceive or cause confusion. The Opponent must establish that a reputation exists in each of the marks on which it relies, as a matter of fact through its evidence. [13]
3. For the purposes of s 60, the word 'reputation' means 'the recognition of the [other trade mark] by the public generally'.[14] The reputation in the Opponent's Registrations must be amongst a 'significant or substantial' number of Australian consumers[15] but the size and extent of the class of persons may vary depending on the circumstances.[16] Here the market is fairly large being consumers of dental and oral care products.
4. Reputation may be inferred from a high sale volume, together with substantial advertising expenditures and other promotions, without direct evidence of consumer appreciation of the Opponent's Registrations[17] The use as shown in the evidence must be use such that it indicates a connection in the course of trade between the goods and the person who applied the trade mark to the goods.[18] This is an objective question from the perspective of the ordinary consumer.[19]
5. The Opponent has used its HISMILE mark for a decade before the Relevant Date for the same or similar goods to the Applicant's Goods. Goods bearing the HISMILE mark are widely available in Australia and have been extensively promoted on social media with numerous posts receiving significant consumer engagement. The Company Profile pack used for pitches to retailers in 2022[20] refers to the Opponent as being the number one tooth whitening brand globally, having 1 billion social media impressions annually, 5 million followers across social media and 650,000 new customers in 2021. Further, the Opponent's Website receives a substantial number of visitors annually. This promotion has translated into significant revenue generated from sales of HISMILE products both in Australia and globally.
6. I am satisfied from the Opponent's evidence that a reputation existed in the mark HISMILE for oral care products at the Relevant Date. Accordingly, I turn to the consideration under

s 60(b) as to whether, because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion. 7. The concepts of 'deceived' and 'confusion' were considered in the New Zealand case of 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.[21]

1. The likelihood of deception or confusion must be real and tangible.[22] It is sufficient 'if people would have cause to wonder' whether the Applicant's Goods appearing in relation to the Trade Mark were being provided by the same person as the owner of the HISMILE mark.[23] In this regard, it has been observed that 'the threshold for confusion is not high'[24] and confusion can be established even if it 'is unlikely to persist up to the point of, and contribute to, inducing sale'.[25]
2. There is no requirement to demonstrate that the trade marks in question are substantially identical or deceptively similar within the meaning of 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.[26]

1. Hence, the question of whether use of the Trade Mark is likely to cause confusion or deception is to be assessed by considering whether a notional consumer of the Applicant's Goods having an awareness of the Opponent's mark HISMILE and having never encountered the Trade Mark will be caused to wonder whether the Applicant's Goods are associated with the Opponent.[27] This question is to be answered having regard to the inherent distinctiveness of the mark HISMILE, the strength of the reputation in that mark, and the nexus or connection between the parties' goods.
2. In my view, despite the reputation established in the mark HISMILE, use of the Trade Mark for the Applicant's Goods is unlikely to give rise to deception or confusion for the purposes of s 60(b). While the Opponent's mark enjoys recognition of its HISMILE mark in the oral care market, the differences between the respective marks are sufficiently pronounced that a consumer familiar with HISMILE is unlikely to be caused to wonder whether the Applicant's Goods originate from, or are associated with, the Opponent. The respective prefixes HI and MY convey distinct ideas and these conceptual differences are reinforced by clear visual and aural distinctions. In view of the limited distinctiveness of the shared suffix SMILE in the context of dental and oral‑care products, consumers are unlikely to assume any association between the two marks.
3. In all the circumstances, I am not satisfied that use of the Applicant's mark would be likely to deceive or cause confusion. Accordingly, the s 60 ground of opposition is unsuccessful.

1. Section 55 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. I have found that the Opponent has not established either of the nominated grounds of opposition. Accordingly, the Trade Mark may proceed to registration not less than one month from the date of this decision. If the Registrar is served with a notice of appeal, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the Application should be in accordance with the Court's order or direction.
2. Both parties have sought costs. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

Class 3: Dental bleaching gels; Dental care preparations (Non-medicated); Non-medicated dental preparations; Preparations for dental purposes (dentifrices); Products for dental hygiene

Class 3: Dental bleaching gels; Teeth whiteners; Teeth whitening preparations; Teeth whitening articles; Teeth whitening utensils; Teeth whitening strips; Tooth whiteners; Gels for teeth cleaning; Bleaching preparations (decolourants) for cosmetic purposes; Toothpaste; Tooth polish; Preparations for dental purposes (dentifrices); Dental care preparations; Non-medicated dental preparations; Non-medicated preparations for the care of the mouth; Non-medicated preparations for oral hygiene purposes; Preparations for oral hygiene (dentifrices); Products for dental hygiene; Cosmetic preparations for cleansing the teeth; Cosmetic preparations for cleansing the mouth; Tooth cleaning preparations; Tooth care preparations; Mouthwash; Mouthwashes, not for medical purposes; Non-medicated mouth sprays; Non-medicated mouth rinses; Breath fresheners; Chewing gum for cosmetic purposes

Class 21: Toothbrushes; Electric toothbrushes; Utensils for cleaning teeth; Containers for toothbrushes; Holders for toothbrushes; Refilling cartridges for toothbrushes; Toothpaste applicators; Toothpaste holder; Apparatus and instruments for applying toothpaste; Dental floss; Dental flossing aids; Toothpicks; Apparatus for the care of teeth; Apparatus for the cleaning of teeth; Articles for cleaning the teeth; Utensils for cleaning teeth; Tooth polishing appliances for personal use; Dental cleaning apparatus for personal use ('701 Goods')

Class 3: Dental bleaching gels; Teeth whitening strips; Gels for teeth cleaning; Toothpaste; Preparations for care of the teeth; Cosmetic preparations for cleansing the teeth; Mouthwashes, not for medical purposes; Dentifrices in the form of chewing gum

Class 3: Non-medicated preparations for oral hygiene purposes

Class 3: Cleaning preparations for the teeth; Preparations for care of the teeth; Teeth whitening strips; Dental bleaching gels; Preparations for dental purposes (dentifrices); Dental rinses, non medicated; Rinses to prevent dental caries; Non-medicated preparations for oral hygiene purposes; Non-medicated dental hygiene preparations; Dentifrices in the form of chewing gum; Breath fresheners; Toothpaste

Class 21: Apparatus for the care of natural teeth; Apparatus for the cleaning of natural teeth; Devices for cleaning the teeth (electric and non-electric)

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

[2] 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 Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelman JJ).

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

[6] Re Jellinek's Application [1946] 63 RPC 59 (Romer J).

[8] [1963] HCA 66, [12] ('Shell').

[11] London Lubricants (1920) Ltd's Application (1925) 42 RPC 264, 279 (Sargant LJ).

[12] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J) ('ConAgra').

[14] McCormick & Co Inc v McCormick [2000] FCA 1335, [81] (Kenny J) ('McCormick').

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

[16] Conagra Inc (n 12) [131]-[132] cited with approval in Pham (n 46) [81].

[18] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sunberg and Finkelstein JJ), which was cited with approval in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15, [43] (French CJ, Gummow, Crennan and Bell JJ).

[19] Shell (n 8) [5]-[6] (Kitto J).

[21] [1979] RPC 410, 423 (citation omitted).

[23] Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd [2016] FCA 1406; (2016) 122 IPR 232, [76] (Davies J).

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

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

[26] Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd [2010] ATMO 5, [39] (Hearing Officer D. Lyons).

[27] Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [84(e)] (O'Bryan J).