Re: Trade mark application number 2450704 (International Registration 1789487) (classes 9, 16, 28, 41) - Horizon Hydrogen Grand Prix - in the name of Horizon Fuel Cell Ireland Limited.

Holder: written submissions prepared by Kuan Sian Low, Peter Low IP LLP

2025 ATMO 256

Reg 17A.24 proceeding - ground for rejection under s 44 of Trade Marks Act 1995 (Cth) - impact of words in the trade mark in context of goods and/or services - marks sufficiently different in six cases - amendment overcomes ground for rejection in remaining case - application accepted for potential extension of protection.

1. This is a decision pursuant to reg 17A.24 of the Trade Marks Regulations 1995 (Cth) ('Regulations')[1] which provides that the Registrar of Trade Marks ('Registrar') must, after examination, accept an International Registration Designating Australia ('IRDA') unless satisfied that it has not been made in accordance with the Act or that there are grounds for rejecting it.
2. Horizon Fuel Cell Ireland Limited ('Holder') applied to extend protection of its international registration number 1789487 to Australia. The IRDA was assigned Australian trade mark application number 2450704 and its relevant details are below.

Trade Mark: Horizon Hydrogen Grand Prix ('Trade Mark')

Class 9: Science sets for children being teaching apparatus; science sets for children being instructional apparatus; models for scientific experiments in laboratories; anemometers; pressure controllers [gauges]; pressure gauges; fuel cells; fuel cell electrodes; transducers; converters, electric; photovoltaic inverters; direct current converters.

Class 16: Manuals for instructional purposes; educational publications; printed educational materials; three dimensional models for educational purposes.

Class 28: Toys adapted for educational purposes; educational games; toy model kit cars.

Class 41: Teaching; training; education information; education and instruction; training and instruction; development of educational materials; organisation of educational events; conducting of educational events; publication of educational texts; organising of competitions for education; organising of educational games; organization of educational congresses; educational services provided for children; vocational education for young people; arranging and conducting educational conferences; arranging and conducting of educational events; arranging and conducting competitions; organisation of games and competitions; vocational education and training services; arranging and conducting of workshops [training].

1. The IRDA was examined and partially refused on the basis of a ground for rejection under s 44[2], wherein the examiner considered eleven prior trade marks to be substantially identical or deceptively similar to the Trade Mark.
2. The Holder responded with submissions that the Trade Mark was not deceptively similar to the prior trade marks, including because several trade marks incorporating the word 'horizon[s]' co-existed on the Register of Trade Marks ('Register').
3. The examiner reconsidered and withdrew three of the cited prior trade marks, and a further prior trade mark was cancelled by the International Bureau. However, the ground for rejection was maintained in respect of the remaining seven prior trade marks.
4. The Holder then requested to be heard on the ground for rejection by way of written submissions.
5. The matter has been allocated to me to decide in my capacity as a delegate of the Registrar of Trade Marks. In accordance with my directions, the Holder has filed written submissions for my consideration, as well as declarations by Ales Rakovsky (Director of Horizon Fuel Cell APAC Pty Ltd), Carol Ann Devney (former Program Coordinator for Horizon Hydrogen Grand Prix) and Glenn Butcher (State Member for Gladstone and former Queensland Minister for Manufacturing and Regional Development).
6. I mention that the purpose here is not a review of the examiner's decision, and I am not bound by it in any way. Rather, this is a fresh consideration of the ground for rejection.[3]

Section 44

1. Section 44 relevantly provides (notes omitted):

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

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

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

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

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

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

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

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

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

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

(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.

(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.

1. Regulation 17A.24 embodies a presumption of registrability, whereby registrability is assumed and the Registrar may only refuse to extend protection where it can be shown either that the application has not been made in accordance with the Division[4] or that there are grounds for rejecting the trade mark. Accordingly, in this matter I am not entitled to reject the Trade Mark under s 44 unless satisfied that one or more the cited trade marks:
   • is in the name of a person other than the Applicant;
   • has a priority date that is earlier than the priority date of the Trade Mark;
   • is in respect of similar goods or services, or closely related services or goods, to the Applicant's goods and services; and
   • is substantially identical with, or deceptively similar to, the Trade Mark.
2. If I am so satisfied, sub-ss (3) and (4) of 44 provide exceptions to sub-s (1) and (2). Under those provisions I may accept the application because the Applicant has made honest concurrent use of the Trade Mark (s 44(3)(a)) or because other circumstances exist which would make acceptance proper (s 44(3)(b)); or, if prior continuous use is established (s 44(4)), then I cannot reject the application because of the cited marks.
3. For convenience the seven prior trade marks ('Prior Trade Marks') are shown in the table below. (The Prior Trade Marks, individually or collectively, are also referred to as 'citation(s)' in this decision).

Class 16: Magazines, books and information brochures, none of these including computer instruction manuals or user guides

Class 16: Member cards, instructional and teaching material (except apparatus) all relating to incentive and loyalty schemes operated by casinos; plastic member cards including plastic member cards relating to incentive and loyalty schemes operated by casinos

Class 43: Restaurant, cocktail lounge, bar and all other catering and hospitality services in this class, none of the aforesaid services being cafe services; other services in this class relating to the preparation and serving of food, food products and beverages (alcoholic and non alcoholic), none of the aforesaid services being cafe services; accommodation services; hotel services including reservation services; services in this class relating to the provision of conference facilities

Class 41: Entertainment services being the provision of casino gaming services, electronic gaming and slot machine facilities, wagering services and betting competitions; entertainment services relating to the conduct of games of chance; interactive real time online games, gaming and gambling via the Internet and other forms of telecommunications services

Class 9: Electronic publications downloadable exclusively in relation to disability information, disability services and charitable events

Class 16: Printed newsletters exclusively in relation to disability information, disability services and charitable events

Class 41: Charitable services, namely providing training and education services; information services relating to education, employment training and recreation services; publication of newsletters; all of the above exclusively used in relation to disability information, disability services and charitable events

Registration No. 2067088 (International Registration No. 1512806)

Class 5: Pharmaceutical preparations for human use for the treatment of pain, inflammation, gastrointestinal disorders, rare and orphan diseases.

Class 16: Printed medical publications, namely, reports, manuals, brochures, newsletters, leaflets, in the field of medical issues, medical procedures, and disease symptoms.

Class 41: Augmented reality arcade services; augmented reality game services provided on-line from a computer network; augmented reality video production; providing a computer game for use network-wide by network users; providing online augmented reality games; providing online computer and video games; providing on-line computer games; providing online non-downloadable game software; providing online virtual reality games; virtual reality arcade services; virtual reality game services provided on-line from a computer network; virtual reality video production.

Class 9: Electronic publications (downloadable), namely magazines, books and information brochures; none of the aforementioned being in the field of medicine, health, disability or charitable services

Class 41: Providing online electronic publications, not downloadable, namely magazines, books and information brochures; none of the aforementioned being in the field of medicine, health, disability or charitable services

1. For the purposes of s 44, the priority date of the Trade Mark is 20 December 2023.
2. It is straight-forward that each of the cited marks are in the name of a person other than the Holder and that they each have a priority date which is earlier than the priority date of the Trade Mark.
3. I consider it also relatively straightforward that the Trade Mark is not substantially identical to any of the Prior Trade Marks. Substantial identity is to be tested by comparing trade marks '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'.[5] Prior Trade Mark registrations 1484587, 1652090 and 2067088 (the first two containing the letter 'H' comprised of horizontal lines and the latter containing four vertical slanted strokes) are precluded from substantial identity with the Trade Mark on account of their devices, which are dominant or equally-dominant in their respective marks and possess a degree of distinctiveness in their own right. Each of the remaining Prior Trade Marks comprises the word 'horizon' or 'horizons'. However, the Trade Mark also contains the words 'Hydrogen Grand Prix'. Whilst this expression may be discounted somewhat in contexts where it denotes the nature of the goods or services rather than trade source, it cannot be ignored altogether.[6] Additionally, 'Hydrogen Grand Prix' carries a modicum of distinctiveness - 'hydrogen' only being descriptive in contexts where it may refer to hydrogen-powered vehicles and 'grand prix' being a slightly more unusual word in the Australian context than 'race'. For these reasons, the Trade Mark is not substantially identical to any of the Prior Trade Marks.
4. The remaining issues are the similarity or close relationship between the respective goods and services and whether the Prior Trade Marks are deceptively similar to the Trade Mark. Given that these matters vary between each of the Prior Trade Marks, I will discuss them individually. However, the matter of the state of the Register, raised by the Holder as a basis (amongst others) for withdrawing the ground for rejection, applies to all of the trade marks and so I turn to that first.
5. The Holder points out that initially eleven co-existing trade marks were cited against its application. After comparing, in order, the goods and/or services of each mark with the preceding mark(s), the Holder alleges that it may be observed from this co-existence that 'where goods and services overlap, the elements that ensue from the common element "HORIZON" act as distinguishing features that set them apart from HORIZON solus marks'.[7]
6. The Holder also points to 21 co-existing trade marks in class 16 which contain the word 'horizon' and 28 co-existing trade marks in class 41. It cites a number of Office decisions[8] to support its contention that the Registrar may take note of the state of the Register when assessing deceptive similarity. In this regard the Holder submits:

Although each mark that got on the Register should be assessed on its own merits, it is a fact that "HORIZON" is a popular element in respect of goods for printed matter in class 16 and education and training services in class 41. We submit that the Registrar should take into account how different "HORIZON" formative marks got into the Register to maintain its consistency and established pattern of assessment. We further submit that the state of the Register is not a deciding factor but a relevant factor to take into consideration is the assessment of the Holder's International Registration Designating Australia.[9]

1. It is true that the state of the Register may be a relevant factor to take into account in determining deceptive similarity,[10] particularly at the pre-acceptance stage where the comparison is made with all trade marks in relevant classes on the Register which share the feature (as opposed to the opposition stage wherein particular trade marks are raised to support a ground of opposition under s 44). It is not the only, or even dominant, factor taken into account, and I bear in mind the caution from Wilcox J in Ocean Spray Cranberries Inc v Registrar of Trade Marks that it would be an unwarranted distraction from the task at hand to investigate whether trade marks had been wrongly registered.[11] Nonetheless, as noted by his Honour in the same case, consistency in public administration is desirable.[12]
2. With that in mind a broad overview of the co-existing trade marks identified by the Holder (shown below) demonstrates, in my consideration, a limited occurrence of coexistence that is not explained by differences in goods and/or services or the application of ss 44(3) or 44(4). Nonetheless, this list of trade marks does appear to indicate that additional features in trade marks containing the word 'horizon' will often be sufficient to differentiate between them. This is particularly so where device features are dominant or equally dominant to 'horizon[s]', or where additional words create an expression that has its own meaning. I therefore bear this in mind in my assessment.

Principles applied in the assessment of similar or closely related goods and/or services

1. Similar goods and similar services are defined in s 14 as:

14 Definition of similar goods and similar services

(1) For the purposes of this Act, goods are similar to other goods:

(b) if they are of the same description as that of the other goods.

(2) For the purposes of this Act, services are similar to other services:

(b) if they are of the same description as that of the other services.

1. Goods that are not the same may be 'of the same description'. This expression is a term of art to be understood 'in such a sense that, if two different items are held not to fall within the expression, their sale under the same trade mark by different companies is not likely to lead to deception or confusion'.[13] Three principle factors inform whether or not goods or services are similar to other goods or services, namely their nature; the uses to which they may be put; and the trade channels through which they are bought and sold.[14] These factors have been expanded upon to include the origin of goods, their purpose, whether they are usually produced by the same manufacturer and distributed by the same wholesale houses, whether they are sold in the same shops over the same counter during the same season, and whether those engaged in their manufacture and distribution are regarded as belonging to the same trade.[15] These principles, subject to any necessary modification, also apply in relation to services.[16]
2. The expression 'closely related' is not defined in the Act. It recognises that goods and services are different things, so that the word 'similar' does not apply between them as it does between classes of goods or classes of services. Another form of relationship exists between them.[17] 'Closely related':

...recognises the potential for confusion in the minds of consumers as to the origin of goods in respect of which a mark is registered or sought to be registered and the origin of services in which an identical or deceptively similar mark is registered, or sought to be as the case may be. The more closely related the goods on one hand and the services on the other, the greater the potential for confusion as to whether they originate from the same person.[18]

1. I bear in mind also the observation of French J in Registrar of Trade Marks v Woolworths:

In the end there is one practical judgement to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question...Consistently with that proposition, the registrar or a judge on appeal from the registrar could determine in a particular case that, given the limited degree of resemblance between the relevant marks he or she could not be satisfied, no matter how closely related the goods and services concerned, that the use of the applicant's marks would be likely to deceive or cause confusion.[19]

Principles applied in the assessment of deceptive similarity

1. 'Deceptively similar' is defined in s 10 as follows:

For the purposes of this Act, 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. Deceptive similarity is to be tested by a comparison between, on the one hand, the impression based on recollection of the Prior Trade Marks that persons of ordinary intelligence and memory would have and, on the other hand, the impression that consumers would get from the Trade Mark.[20] In The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd[21] Jackman J summarised the principles of deceptive similarity given by the High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[22] as follows (citations omitted):

(a) the resemblance between the two marks must be the cause of the likely deception or confusion;

(b) in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;

(d) 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 (or services), then similarities both of sound and of meaning may play an important part;

(e) the focus is upon the effect or impression produced on the mind of potential customers of the goods (or services) in relation to which the two marks are used and in the case of the registered mark, allowing for "imperfect recollection";

(f) the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the marks prior to filing, or any reputation associated with the registered mark;

(g) the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods or services covered by the registration), with the impression that the notional buyer would have of the alleged infringer's mark (as actually used);

(h) "deceived" implies the creation of an incorrect belief or mental impression; "causing confusion" may merely involve "perplexing or mixing up the minds" of potential customers;

(i) the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected, having regard to the character of the customers who would be likely to buy the goods in issue;

(j) it is not necessary to establish actual probability of deception or confusion, but a mere possibility of confusion is not enough. There must 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";

(k) evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant; and

(l) any intention to deceive or cause confusion may be a relevant consideration but is not required.[23]

1. A further principle of relevance is 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 the trade source'.[24] However, each case must be considered in its own context and it is important to note that 'even where there is a common denominator one must be careful not to treat the words as though as the common part was not there at all'.[25]
2. Lastly, differences between trade marks may be readily apparent but consumers may nonetheless be confused as to origin because they perceive one trade mark to be a variant of the other, for example one that signifies a specific line of products or services - so called 'contextual confusion' where 'the mark in question has usually incorporated the whole of a registered mark or some distinctive component of the registered mark which has been coupled with some descriptive element'.[26]

1. Prior Trade Mark 1164856 is comprised of the word HORIZONS and is registered in respect of 'magazines, books and information brochures, none of these including computer instruction manuals or user guides' in class 16. These goods are not confined to any particular area of interest (they only exclude an area of interest) and so notionally include instructional or educational magazines, books and information brochures, which are similar to the Holder's 'manuals for instructional purposes; educational publications; printed educational materials' in class 16. They also notionally include such goods whose subject matter is racing of hydrogen-powered vehicles, albeit it is a niche subject.
2. Bearing that in mind, the question is whether an imperfect recollection of HORIZONS is likely to be confused with Horizon Hydrogen Grand Prix. On one perspective, the trade marks are deceptively similar because 'Hydrogen Grand Prix' may be discounted somewhat due to descriptiveness, rendering 'Horizon' the primary distinctive feature in the Trade Mark. When compared to HORIZONS, it differs only by being the singular form of the word - a difference that may well be imperfectly recalled and lead to confusion amongst consumers. On another perspective, HORIZONS evokes (as submitted by the Holder) metaphorical and aspirational meanings of potential, looking ahead and exploration; meanings which are somewhat retained in Horizon Hydrogen Grand Prix but where the entirety of the latter refers to a specific and niche event. I am inclined towards the second perspective. Given its specificity, and because the words are not the most straight-forward of descriptions, 'Hydrogen Grand Prix' is likely to be perceived as a differentiating feature, albeit one that may be somewhat descriptive.
3. I do not consider that the risk of confusion amongst consumers rises beyond a mere possibility. For that reason, I am not satisfied that Prior Trade Mark 1652846 is a basis for the ground for rejection under s 44 and I withdraw the citation.

1. The relevant details of Prior Trade Mark 1484587 are shown below.

Class 16: Member cards, instructional and teaching material (except apparatus) all relating to incentive and loyalty schemes operated by casinos; plastic member cards including plastic member cards relating to incentive and loyalty schemes operated by casinos

Class 43: Restaurant, cocktail lounge, bar and all other catering and hospitality services in this class, none of the aforesaid services being cafe services; other services in this class relating to the preparation and serving of food, food products and beverages (alcoholic and non alcoholic), none of the aforesaid services being cafe services; accommodation services; hotel services including reservation services; services in this class relating to the provision of conference facilities

1. The second examination report states that the citation could be overcome if the Holder were to limit the scope of its specification 'manuals for instructional purposes; educational publications; printed educational materials' in class 16 as well as limiting the scope of all of its services in class 41. This suggests that the citation was raised on the basis of an alleged similarity between the respective goods in class 16 and an alleged similarity between the respective services in class 41, and possibly an alleged close relationship between either party's goods in class 16 and the other's services in class 41.
2. However, the class 16 goods of Prior Trade Mark 1484587 are limited to being in relation to incentive and loyalty schemes operated by casinos, and its class 41 services are limited to being in relation to various hospitality and hotel services and the provision of conference facilities. In these contexts, the words 'Hydrogen Grand Prix' are distinctive - they say nothing of incentive or loyalty schemes nor of hospitality, hotel and conference facilities. As such their impact in the Trade Mark is not diminished by potential descriptiveness. For that reason, they serve a differentiating function.
3. Additionally, the letter 'H' in the Prior Trade Mark is dominant and possesses a degree of distinctiveness in its own right on account of its stylisation. Due to this, it is unlikely to be discounted or not recalled in the minds of consumers.
4. I am therefore not satisfied that the presence of the word HORIZON the respective trade marks would lead to confusion. Their other essential features in the context of the relevant goods and services sufficiently differentiate.

1. The relevant details of Prior Trade Mark 1652090 are shown below.

Class 41: Entertainment services being the provision of casino gaming services, electronic gaming and slot machine facilities, wagering services and betting competitions; entertainment services relating to the conduct of games of chance; interactive real time online games, gaming and gambling via the Internet and other forms of telecommunications services

1. Prior Trade Mark 1652090 is registered in respect of three specified claims:
   • Entertainment services being the provision of casino gaming services, electronic gaming and slot machine facilities, wagering services and betting competitions;
   • entertainment services relating to the conduct of games of chance; and
   • interactive real time online games, gaming and gambling via the Internet and other forms of telecommunications services.
2. The Trade Mark specifies in class 41 'arranging and conducting competitions, organisation of games and competitions'. At face value these services are similar to those of the Prior Trade Mark - they are unqualified and therefore notionally include such services in respect of betting competitions, games of chance and online gaming. However, when the essential features of the Trade Mark and Prior Trade Mark 1652090 are taken into account the marks are sufficiently differentiated. The words 'Hydrogen Grand Prix' suggest a race involving hydrogen-powered vehicles. It is an unusual reference in the context of casino gaming, betting, wagering, gambling and games of chance. It is also an unusual reference in the context of electronic and online gaming, given hydrogen-powered racing cannot take place in an electronic or online environment. Additionally, as with the previous Prior Trade Mark, this Prior Trade Mark includes also a dominant letter 'H' which possesses a degree of distinctiveness in its own right.
3. When compared as wholes and in the context of the relevant goods and services, I am not satisfied that there is a real, tangible risk of Prior Trade Mark 1652090 and the Trade Mark being confused. For these reasons I withdraw this citation.

1. Prior Trade Mark 1652846 comprises the word HORIZON and is registered in respect of electronic publications, printed newsletters and charitable training, education, information and publication services in class 41, all of which are 'exclusively in relation to disability information, disability services and charitable events.'
2. When the comparison of HORIZON and Horizon Hydrogen Grand Prix is made in this context, the words 'Hydrogen Grand Prix' in the Trade Mark are not entirely descriptive. They refer to a specific and niche event, one that likely focusses on alternative energy. It is possible that it is also in relation to disability and charity but such convergence is not common. Given that it is not common for alternative-fuel vehicle racing to be combined with disability or charitable services (unlike, for example, a walk or fun run) I do not consider it likely that consumers would perceive Horizon Hydrogen Grand Prix to denote services associated with the disability and charity related services of HORIZON. I am not satisfied that the risk of confusion rises beyond a mere possibility.
3. Accordingly, I am not satisfied that the Trade Mark is deceptively similar to Prior Trade Mark 1652846 and I withdraw this citation.

1. The relevant details of Prior Trade Mark 2067088 are shown below.

Class 5: Pharmaceutical preparations for human use for the treatment of pain, inflammation, gastrointestinal disorders, rare and orphan diseases.

Class 16: Printed medical publications, namely, reports, manuals, brochures, newsletters, leaflets, in the field of medical issues, medical procedures, and disease symptoms.

1. The second examination report states that the citation could be overcome if the Holder were to limit the scope of its 'manuals for instructional purposes; educational publications; printed educational materials' in class 16 as well as its services in class 41, and to delete various science sets for children from class 9. Although not explicit, this suggests the citation was raised on the basis of an alleged similarity between the Holder's goods and the goods in classes 16 and 9 of the Prior Trade Mark, and an alleged close relationship between the Holder's services and the goods in either or both of classes 5 and 16 of the Prior Trade Mark.
2. In the context of the Prior Trade Mark's pharmaceutical preparations and printed medical publications, the words 'Hydrogen Grand Prix' in the Trade Mark are distinctive. They are far removed from pharmaceuticals and medicine and on account of this are unlikely to be discounted to any degree for potential descriptiveness. On the contrary, in these contexts they are striking. For that reason, they serve a differentiating function.
3. Additionally, the device in the Prior Trade Mark is at least equally dominant with the word HORIZON. It may be interpreted as an unenclosed negative image of a letter 'H' or an abstract design comprised of four vertical slanted strokes. Either way, whilst words in composite trade marks may be more likely to be the portion referred to,[27] it is unlikely that the device would be discounted altogether or not recalled.
4. Accordingly, in the context of pharmaceutical preparations and printed medical publications, I am not satisfied that the presence of 'horizon' in both trade marks would cause consumers to be deceived or confused. On the contrary, in this context consumers are unlikely to associate goods and services under Horizon Hydrogen Grand Prix with goods under the composite trade mark . I therefore withdraw this citation.

1. Prior Trade Mark 2215305 comprises the word HORIZON and is registered in respect of the following services in class 41:

Augmented reality arcade services; augmented reality game services provided on-line from a computer network; augmented reality video production; providing a computer game for use network-wide by network users; providing online augmented reality games; providing online computer and video games; providing on-line computer games; providing online non-downloadable game software; providing online virtual reality games; virtual reality arcade services; virtual reality game services provided on-line from a computer network; virtual reality video production.

1. As noted previously, hydrogen powered racing cannot take place in an electronic or online environment and so the words 'Hydrogen Grand Prix' in the Trade Mark are an unusual reference in the context of virtual and online gaming. There is somewhat more latitude to interpret 'Hydrogen Grand Prix' as descriptive material in the context of augmented reality gaming, given augmented reality incorporates computer generated effects into real world scenarios or experiences.[28] To that end there is a reasonable risk that consumers may perceive Horizon Hydrogen Grand Prix to refer to, for example, an augmented reality game which incorporates computer effects into a real life racing game, and therefore be confused as to whether it is associated with HORIZON games.
2. The Holder proposed, in the event I found the Trade Mark to be deceptively similar to the Prior Trade Marks, to amend its goods and services. Among the proposed amendments is the deletion of 'organisation of games and competitions'. I consider this amendment would be sufficient to enable me to withdraw the citation. I have accordingly deleted those services from the Holder's Goods and Services. The remaining goods and services of the Holder are sufficiently removed from the augmented and virtual reality gaming and online gaming of the Prior Trade Mark. As such, Prior Trade Mark 2215302 is no longer a basis for the ground for rejection.

1. Prior Trade Mark 2356702 comprises the word Horizons and is registered in respect of:

Class 9: Electronic publications (downloadable), namely magazines, books and information brochures; none of the aforementioned being in the field of medicine, health, disability or charitable services

Class 41: Providing online electronic publications, not downloadable, namely magazines, books and information brochures; none of the aforementioned being in the field of medicine, health, disability or charitable services.

1. Notionally, these goods and services are similar to the Holder's 'manuals for instructional purposes; educational publications; printed educational materials' and 'publication of educational texts'. There is also a notional close relationship between each party's goods and the services of the other, and vice versa. Nonetheless, as with Prior Trade Mark 1164856, the question is whether an imperfect recollection of Horizons is likely to be confused with Horizon Hydrogen Grand Prix in the context of publications and their provision online. For the same reasons as my conclusion in respect of 1164856, I am not inclined to believe the risk of confusion rises beyond a mere possibility.
2. Accordingly, this citation is withdrawn.

1. Regulation 17A.24 relevantly provides:

(1) The Registrar must, after the examination, accept the IRDA unless he or she is satisfied that:

1. Given the amendment to the Holder's Goods and Services, I am not satisfied that Trade Mark is deceptively to any of the Prior Trade Marks. The ground for rejection under s 44 is therefore withdrawn and there are no other grounds for rejection.
2. Accordingly, I accept trade mark application 2450704 for potential extension of protection to Australia.

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

[2] Reg 17A.28 states that the grounds for rejecting an IRDA are those set out in ss 39 to 44 of the Act.

[3] TOM Organic [2018] ATMO 46, [5].

[4] Being Division 3 of the Regulations.

[5] Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd ('Shell') [1963] HCA 66, [12] (Windeyer J).

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

[8] The H.D. Lee Company Inc v Tracey Taylor [2013] ATMO 49; Joe Dib and John El-Chah v Robert Charles Minto [2003] ATMO 47; Victoria Osborne v Luxelabel Pty Ltd [2023] ATMO 120; Yingli Group Co. Ltd [2012] ATMO 35; Major League Baseball Properties, Inc v Blooming Angel Pty Ltd [2011] ATMO 83 citing Unilever PLC [2001] ATMO 39.

[11] [2000] FCA 177, [35].

[13] Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd [1993] FCA 265, [27] (Burchett J), cited in Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808, [284] (Burley J).

[14] Re Jellinek's Application [1946] 63 RPC 59, 70-72 (Romer J).

[15] Beck, Koller & Company's Application 64 RPC 76, 78.

[16] MID Sydney v Australian Tourism Co Ltd [1998] FCA 1616, (Burchett, Sackville and Lehane JJ).

[17] Registrar of Trade Marks v Woolworths [1999] FCA 1020, [37] (French J) ('Woolworths').

[18] Enagic Co Ltd v Horizons (Asia) Pty Ltd (No 3) [2021] FCA 1512, [33] (Charlesworth J)

[20] Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [13] (Windeyer J).

[21] [2023] FCA 482 ('The Agency Group').

[22] [2023] HCA 8 (Keifel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

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

[25] Ibid, citing Lord Evershed (Asquith and Jenkins LJJ agreeing) in Re Broadhead's Application (1950) 67 RPC 209, 215.

[26] Vivo International Corporation Pty Ltd v Tivo Inc [2012] FCAFC 159, [145]-[150] (Keane CJ, Dowsett and Nicholas JJ).

[27] American Trading & Shipping Co Ltd's Appn (1936) 6 AOJP 78

[28] Macquarie Dictionary (online at 26 November 2025) 'augmented reality'.