DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS**

Re: Opposition by Inter Ikea Systems BV to registration of trade mark application number 2395993 (classes 9, 18 & 36) - Nikea & Device - in the name of Nikea Pty Ltd

2026 ATMO 28

Trade Marks Act 1995 (Cth) - opposition under section 52 - ss 42(b), 44, 58, 60 and 62A - 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 Inter Ikea Systems BV ('Opponent') to registration of the trade mark detailed below in the name of Nikea Pty Ltd ('Applicant'):

Trade Mark: ('Trade Mark')

Specification: Class 9: Downloadable software applications (apps)

Class 36: Providing financial information via a website; Agencies for the exchange of financial operations; Buying and selling currency; Currency trading services; Trading in currencies; Provision of foreign currency; Brokerage of currency; Currency exchange services; Provision of online currency exchange calculators; Agencies for the exchange of currency; Money transfer services; Electronic money transfer services; Money exchange services; Money exchanging; Exchanging money; Agencies for the exchange of money; Money deposit services; Money order services; National money transfer services; Money lending; Money brokerage; Advisory services relating to money management

1. Following the advertisement of acceptance of the Trade Mark for possible registration on 20 March 2024, the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark on 26 April 2024 and a Statement of Grounds and Particulars ('SGP') on 10 May 2024. The Applicant filed a Notice of Intention to Defend on 31 May 2024.
2. The parties then had an opportunity to file evidence in accordance with the Regulations. The only evidence filed in the proceedings was the Opponent's evidence in support ('EIS') lodged on 4 September 2024 being a declaration of Johannes Bierman, Legal Counsel Manager IP of the Opponent, made on 3 September 2024 with Annexures JB-1 to JB-27 ('Bierman').
3. Once the evidence stage concluded, the parties had the opportunity to request a hearing. The Opponent requested a hearing by way of written submissions and the Applicant did not ask to be heard. The Opponent's written submissions were prepared by Leanne Oitmaa of Griffith Hack Lawyers and filed on 24 October 2025. I am a delegate of the Registrar of Trade Marks and this matter has been allocated to me to determine. I do so based on the aforementioned materials.

1. The Opponent's SGP nominates grounds of opposition under ss 42(b), 44, 58, 60 and 62A.
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] 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. The Opponent is the global owner and franchisor of the IKEA brand. The IKEA business began in Sweden in 1943 offering pens, wallets, picture frames, table runners, watches, jewellery and nylon stockings before expanding into furniture in 1948. Today, there are 473 IKEA stores in more than 63 countries.
2. IKEA has been present in Australia since 1975, with 18 stores and collection points currently operating.
3. Bierman claims that the IKEA brand is famous and annexes extracts from showing the rankings for IKEA in Interbrand's Best Global Brands from 2020 to 2024 inclusive. Also provided are Ikea's Brand Capital Country Report Australia on surveys conducted in 2014 and 2018 across the 10 Australian IKEA stores showing a high level of brand awareness.[5] Moreover, in 2020, IKEA ranked number 40 on Forbe's Magazine's World's Most Valuable Brands with an estimated brand value of USD15.8 billion.
4. The Opponent owns approximately 2,300 registered and pending trade marks in over 85 countries. A list of the Opponent's Australian registrations is provided. In particular, the Opponent owns the following Australian registrations ('Opponent's Marks'):

Class 36: Financial services and financial management

Class 42: Professional consultation services relating to the rental and programming of computers; retail store services featuring the sale of furniture, furnishings and housewares

Class 42: Services relating to architectural construction and consultation, drafting, engineers technical consultation and surveying, rental of data processing equipment, computer programming, copyright management and exploitation, exploitation of industrial copyrights, catering, and retail store services relating to furniture of all types, furnishings for interior decoration; textiles, carpets, rugs, mats and floor covering materials; wall hangings; paints, varnishes, lacquers; hand tools and instruments; tools for domestic use; lamps and installations for lighting, heating, cooking, refrigerating, drying and ventilation; paper and paper articles, paint brushes, office requisites; leather and imitations of leather, articles made from these materials, umbrellas and parasols; small domestic utensils and containers, instruments and material for cleaning purposes; glassware, porcelain and earthenware; clothes and footwear; games and playthings, ornaments and decorations for Christmas trees; meat, fish, poultry and game; preserved, dried and cooked fruits and vegetables; coffee, tea, cocoa, bread, biscuits, cakes, pastry and confectionery, ices, icecream, honey, treacle, mustard, vinegar, sauces, spices; live plants and flowers, dried flowers, flower seeds

Class 36: Services relating to the issuing of credit cards; financing services; financial management services i.e. services and systems for accounting and cash management; services relating to insurance business in relation to the above

Class 9: Electric apparatus and instruments for input, processing, transmitting, storage and output of data; optical data media, registered computer programs, electric apparatus and instruments and apparatus and instruments for weighing, measuring; electricity armatures, sound recording discs; wires and cables, electric contacts and dimmers, sockets, plugs, contacts and other electric connections, branch boxes (electricity); animated cartoons, thermometers not for medical use, video tapes and scales

Class 35: Publicity and advertising, processing, control, storage and/or compilation of information in data bases, processing and/or control of computerised information; storage and/or compilation of computerised information, computerised data-handling computerised data base handling, computerised file-handling, computerised handling of registers, computerised storage and compilation of business information, digital product information with illustrations for messages by global networks, information to customers on sales of personal property, information and marketing on sales of personal property, distribution and rental of publicity material, distribution of advertisements and publicity material, television commercials activities, distribution of samples, business information, radio advertising, public relations

Class 38: Computer controlled sending (transmission) of messages and images, sending and transmission of messages by electronic media; transmission of data base information by telephone network, telecommunications, including computer based on-line services making it possible to order products by computer networks, including global computer networks

1. Bierman declares that on 26 August 2024 he conducted a search of the Australian Trade Marks Register which revealed only eight pending and registered trade marks containing the letters IKEA that were not owned by the Opponent.
2. According to Bierman, the Opponent, its affiliates and franchisees have used marks containing or consisting of IKEA ('IKEA Marks') for:
   1. furniture, furniture accessories and homewares, and retailing of those goods since at least 1948 globally and 1975 in Australia;
   2. bags since 1988 globally including Australia;
   3. rental and programming of computers since 1988 globally including Australia;
   4. financial information and financial services since at least 1979 globally including Australia;
   5. computer networks and online computer services since at least 1997; and
   6. application software available to download from the AppStore since at least 2019.

1. The Opponent promotes its goods and services broadly through:
   • traditional media: TV, radio, print and outdoor advertising;
   • digital channels: social media, email, websites; and
   • the IKEA catalogue, historically printed in huge quantities (213 million copies printed by 2018), and now available digitally.
2. Examples of Australian and overseas catalogues, website extracts and social media statistics are included in the evidence, together with online articles concerning the Opponent's collaborations with artists, designers and third parties since 2016 to promote the IKEA brand.
3. Bierman details various successful oppositions and enforcement actions overseas, as well as decisions recognising IKEA as a well‑known mark in multiple jurisdictions, including in domain name dispute resolutions.

Section 44

1. Section 44 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.

(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. Therefore, 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 Marks 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 Mark is substantially identical with or deceptively similar to one of more of the Opponent's Marks ('Second Requirement'); and
   • the Applicant's Goods and Services are similar or closely related to the goods or services of one or more of the Opponent's Marks ('Third Requirement').
2. In its SGP, the Opponent nominates the Opponent's Marks as the basis for this ground of opposition. Each of the Opponent's Marks satisfies the First Requirement.
3. I move to consider the Second Requirement namely whether the Trade Mark is substantially identical or deceptively similar to the Opponent's Marks. I propose to first consider the similarity of the word mark IKEA ('Opponent's Word Mark') to the Trade Mark because if the Trade Mark is not substantially identical or deceptively similar to the Opponent's Word Mark, it follows that the same conclusion will apply to the rest of the Opponent's Marks.
4. The starting point of an analysis as to whether trade marks are substantially identical is the well-known dicta of Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd ('Shell'), 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.[6]

1. The Opponent notes the Full Federal Court decisions in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd[7] and Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd[8] where the Court noted that the test for substantial identity requires consideration of the essential features or dominant cognitive cues of the marks. The Opponent argues that the essential feature of both marks is the shared word IKEA, which is wholly incorporated into the word Nikea. Given the rarity of words ending in 'IKEA', the Opponent submits that attention is drawn to the identical suffix, with the only difference being the addition of the letter 'N'. The Opponent further submits that, as a result, the marks convey a strong overall resemblance and should be found to be substantially identical.
2. In my view, it is obvious that the Trade Mark is not substantially identical to the Opponent's Word Mark. I disagree with the Opponent that 'IKEA' is an essential element of the word NIKEA in the Trade Mark. The additional letter 'N' at the commencement of the word Nikea is immediately apparent and the device element is also obvious. As a result of these additional features, the Trade Mark appears longer and is visually distinct from the Opponent's Word Mark. There is not a total impression of similarity and hence the Trade Mark is not substantially identical to the Opponent's Word Mark.
3. I now turn to a consideration of whether the Trade Mark is deceptively similar to the Opponent's Word Mark. A trade mark is taken to be deceptively similar to another mark if it so nearly resembles that other mark that it is likely to deceive or cause confusion.[9] Justice Windeyer outlined the following approach for assessing deceptive similarity 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 High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[11] conveniently stated the relevant principles, which were summarised in The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd[12] as follows:

(a) the resemblance between the two marks must be the cause of the likely deception or confusion;[13]

(b) in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[14]

(c) the marks should not be compared side by side;[15]

(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;][16]

(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';[17]

(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;[18]

(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 notional and normal fair use of the opposed mark;[19]

(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;[20]

(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;[21]

(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";[22]

(k) evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[23] and

(l) any intention to deceive or cause confusion may be a relevant consideration but is not required.[24]

1. The Opponent argues that the Trade Mark is deceptively similar to IKEA when an assessment is made of the overall impression the marks leave on an ordinary consumer with imperfect recollection. The Opponent argues that the case law emphasises that first impression is critical, because consumers who are only familiar with one mark may be misled by resemblance in sound or appearance, especially in ordinary speech and commercial settings.[25] The Opponent submits that the Opponent's Word Mark is immediately recognisable within the Trade Mark. The addition of a small flag device and the additional letter 'N' does not adequately distinguish the marks. Further, consumers will verbally refer to the Trade Mark as NIKEA without reference to the device. Phonetically, the Opponent says the two marks are effectively identical, apart from the soft initial 'N' in NIKEA. In spoken use, the Opponent says that phrases such as 'go to NIKEA' or 'get a NIKEA money bag' sound the same as 'go to an IKEA' or 'get an IKEA money bag'. Hence, the Opponent says consumers will be confused given that they are not to be credited with 'any high perception or habitual caution'.[26]
2. I am not satisfied that the Trade Mark is deceptively similar to the Opponent's Word Mark. When considered as a whole, the presence of the additional initial letter 'N', together with the accompanying flag device, materially alters the visual impression conveyed by the Trade Mark. The device is immediately perceptible and gives the Trade Mark a different overall appearance to the Opponent's Word Mark. Many of the Applicant's Goods and Services would be encountered and selected on the basis of visual impression, including when downloading software or accessing financial services online, in circumstances where consumers would have the opportunity to observe and distinguish the marks. Further, the marks are aurally distinct. The addition of the initial letter 'N' at the commencement of the word element NIKEA substantially alters its pronunciation as compared to the Opponent's Word Mark. The Trade Mark is likely to be pronounced as 'NIK‑E‑A' or 'NE‑KEA', in each case with emphasis on the initial 'N', which distinguishes it from the pronunciation of 'I‑KEA'. In my view, the Trade Mark is unlikely to be pronounced 'NIGH-KEA', being the closest aurally to IKEA, but even in that remote event, I believe the two marks are distinguishable. Allowing for ordinary consumer behaviour and imperfect recollection, and considering the notional and normal fair use of each mark, the visual and aural differences are sufficient to dispel any reasonable doubt that the marks originate from the same source. At most, the similarities relied upon by the Opponent amount to a speculative possibility of association, which falls short of the real and tangible danger of confusion required to establish deceptive similarity.
3. As the Trade Mark is not substantially identical or deceptively similar to the Applicant's Word Mark, it follows that it is not confusingly similar to any of the other marks nominated by the Opponent. Accordingly, the s 44 ground of opposition is unsuccessful.

Section 58

1. Pursuant to s 58, registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
2. The term 'owner' is not defined in the Act. However, it is well established that the owner of a trade mark is the person who first uses it in Australia, or first files a trade mark for it in Australia, whichever is the earlier.
3. Therefore, to establish this ground of opposition, the Opponent must show that:
   • the Trade Mark is identical or substantially identical to the mark relied on by the Opponent;[27]
   • the Applicant's Goods are the same as the goods for which the Opponent claims to have used its mark;[28] and
   • a person other than the Applicant has an earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to either (a) the application to register the Trade Mark or (b) any use of the Trade Mark by the Applicant in Australia, whichever is the earlier.[29]
4. In its SGP, the Opponent particularised this ground of opposition as follows:

The Opponent has used the trade mark IKEA in Australia since at least 1975 in relation to at least the Ikea Goods and Services, amongst others

1. I have already found at [23] that the Trade Mark is not substantially identical to the Opponent's Word Mark and therefore, this ground of opposition fails.

Section 60

1. Section 60 provides:

60 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 of opposition, the Opponent must demonstrate that a reputation has been acquired in another trade mark in Australia at the Relevant Date. If the requisite reputation is established, the Opponent must then prove that because of this reputation, use of the Trade Mark is likely to deceive or cause confusion.

1. In McCormick & Co Inc v McCormick, Kenny J concluded that reputation in the context of s 60 means 'recognition of the [trade mark] by the public generally'.[30]
2. The Opponent must establish a reputation and a likelihood of confusion exists amongst a substantial number of consumers[31] but this is tempered by the nature of the relevant market. In the present case, the relevant market is large, comprising most Australian consumers who download software, or seek the provision of the Applicant's services such as financial advice and foreign currency exchange.
3. The reputation must also be established as a matter of fact by the Opponent.[32] Reputation can be demonstrated in a number of ways. For instance, it can be established by demonstrating that a significant number of consumers are regularly exposed to a particular trade mark. It may also be inferred from a high volume of sales combined with substantial advertising figures and other promotions.[33]
4. Section 60 does not require the reputation in the other mark to exist in respect of the Applicant's Goods and Services,[34] nor that the parties operate in the same industry or field of business.[35]
5. In its SGP, the Opponent claims:

The trade mark/s had acquired reputation before the priority date of the trade mark being opposed Before the priority date of the Opposed Trade Mark, there existed a reputation in the trade mark IKEA through use of that trade mark throughout Australia by the Opponent since at least 1975 in relation to at least the IKEA Goods and Services, amongst others including furniture, furniture accessories and homewares and the retailing of those goods. Use of the Opposed Trade Mark would be likely to deceive or cause confusion in light of that reputation.

1. The Opponent has used the mark IKEA in Australia and globally for decades in relation to furniture, furniture accessories, homewares and bags, and the retail of those goods; rental and progamming of computers, financial services and more recently, a downloadable software application. The Opponent's goods and services have been extensively promoted in Australia through its website which receives significant traffic, catalogues, television, outdoor advertising, press, social media, collaborations, events and other means. Moreover, the Opponent's evidence shows that the mark IKEA has significant recognition amongst Australian consumers and very substantial brand value. I am satisfied that a reputation existed in the mark IKEA at the Relevant Date amongst relevant Australian consumers for furniture, furniture accessories, homewares and the retail of those goods. However, the evidence does not demonstrate extensive use for computers, financial services or downloadable application software. Other than indicating how long the Opponent claims to have offered these goods and services, there is no quantitative data or other metrics to indicate how extensive any use of the Opponent's Word Mark has been in Australia in relation to these other goods and services.
2. I turn now to consider whether because of the reputation acquired in the Opponent's Word Mark, use of the Trade Mark by the Applicant for the Applicant's Goods and Services would be likely to deceive or cause confusion.

1. The distinction between the concepts of 'deceived' and 'confusion' was considered in the New Zealand case of Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd wherein Richardson J stated:

"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.[36]

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

The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent's trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and 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.[37]

1. The Opponent argues that the Trade Mark is very similar in look and sound to the Opponent's Word Mark. Bierman says that consumers will be misled into believing that the Applicant's Goods and Services are associated with the Opponent because the Trade Mark wholly contains its IKEA mark and consumers are not accustomed to seeing other 'IKEA' brands in the marketplace. The Opponent notes that on the Australian Register there are only two marks with the suffix 'ikea' not belonging to the Opponent, being expired registration 1718717 Bodikea & Device and the Trade Mark. According to Bierman, '[u]se of the Nikea mark will result in the Applicant relying on the reputation of the IKEA brand to promote and sell its products. Such an affiliation will likely negatively affect the strong reputation in the IKEA brand.'
2. I am not persuaded that there is a likelihood of deception or confusion arising from use of the Trade Mark by reason of the reputation in IKEA. While the Opponent plainly enjoys a strong and longstanding reputation in the IKEA mark, that reputation has only been established on the evidence in relation to furniture, homewares and the retailing of those goods which is quite different to many of the Applicant's Goods and Services such as downloadable software applications, financial services and foreign currency exchange. Although s 60 does not require the parties to operate in the same field, the absence of a meaningful nexus between the respective goods and services remains a material consideration in assessing confusion. In this case, the Applicant's Goods and Services are of a fundamentally different nature and acquired in different commercial contexts than those associated with IKEA's core retail offerings. Further, while the Trade Mark contains the Opponent's Word Mark, I do not regard the shared element IKEA (despite the scarcity of such marks on the Register) as giving rise to a level of similarity that is likely to cause confusion. In my opinion, the Trade Mark creates a distinct visual, phonetic and conceptual impression. In these circumstances, even allowing for IKEA's reputation, ordinary Australian consumers would not be deceived into an incorrect belief, nor caused to wonder, whether the Applicant's Goods and Services originate from, are licensed by, or are otherwise associated with the Opponent. Rather, the differences in the marks and the lack of a relevant commercial connection between the parties' offerings weigh against any real likelihood of deception or confusion.
3. For the above reasons, the s 60 ground of opposition is unsuccessful.

Section 42(b)

1. Section 42(b) provides that a trade mark may be opposed on the grounds that its use would be contrary to law.
2. The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities. The relevant time for assessing whether an application is contrary to law is at the Relevant Date but 'looking forward to prospective conduct after registration'.[38]
3. The Opponent claims in its SGP that use of the Trade Mark will contravene the Competition and Consumer Act 2010 ('CCA') and constitute passing off. The Opponent's written submissions make reference to ss 18 and 29 of the Australian Consumer Law ('ACL'), in Schedule 2 of the CCA and relying on the same arguments as those made in support of the s 60 ground that use of the Trade Mark is likely to mislead or deceive consumers. Section 18 of the ACL requires that there be a likelihood that the relevant consumer would be misled or deceived as to the origin of the Applicant's Goods and Services due to the conduct of the Applicant. Section 29 of the ACL concerns representations that are false or misleading. The expression 'mislead or deceive' in s 18 of the ACL is effectively equivalent to the expression 'false or misleading' in s 29 of the ACL.[39]
4. The test for misleading or deceptive conduct under the ACL is more stringent than that for deception or confusion under s 60.[40] Given that the Opponent has failed to establish that the Applicant's use of the Trade Mark would be likely to deceive or confuse in breach of s 60, I find that the Applicant's use would not be contrary to ss 18 or 29 of the ACL.
5. Where use of a trade mark does not contravene s 18 of the ACL, it will not amount to the tort of passing off. The relationship between passing off and s 52 of the now repealed Trade Practices Act 1974 (Cth) ('TPA') was addressed by French J in Re Equity Access Pty Ltd v Westpac Banking Corporation:

the scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[41]

1. Sections 18 and 29 of the ACL are the broad equivalents of ss 52 and 53 of the TPA[42] and so the above comments of French J are applicable to the relationship between s 18 of the ACL and passing off. Since I am not satisfied that ss 18 and 29 of the ACL have been contravened, I am likewise not satisfied that use of the Trade Mark would amount to passing off.
2. Accordingly, I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law and hence the ground of opposition under s 42(b) is not established.

1. Section 62A provides for the opposition to registration of a trade mark on the ground that the application was made in bad faith.
2. There have been two Federal Court decisions that substantively considered s 62A: Fry Consulting v Sports Warehouse Inc (No 2)[43] and DC Comics v Cheqout Pty Ltd[44] ('DC Comics'). The following propositions emerge from each of these two decisions relevant to the present opposition:

(a) Bad faith for the purposes of s 62A must be [as at the priority date] and must relate to the making of the subject of the application:[45]

(b) Section 62A does not require the opponent to establish that the trade mark's use would result in deception or confusion. However, evidence to that effect may be persuasive in considering whether the application to register a mark was in bad faith:[46]

(c) The onus of proving bad faith rests upon the opponent:[47]

(d) All of the circumstances surrounding the application to register the mark are relevant:[48]

(e) The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading:[49]

(f) While the seriousness of an allegation of bad faith that "impugns the character of an individual or collective character of a business" requires correspondingly cogent evidence, the standard of proof is the balance of probabilities, rather than that of beyond reasonable doubt[50]

(g) Conduct which falls "short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area" is sufficient. Dishonesty is not required. Bad faith requires both subjective and objective elements; it is a combined test[51]

(h) Subjective naivety does not exclude a determination of bad faith for the purposes of s 62A.

1. In its SGP, the Opponent alleges that the Application was filed with knowledge of the reputation in the Opponent's mark IKEA and the filing of the Application falls short of the standards of acceptable commercial behaviour. The Opponent's written submissions also invite me to take notice of the brand NIKE and claim that the Trade Mark is a combination of the two brands NIKE and IKEA. No mention was previously made of the NIKE mark and there is no evidence that the Trade Mark was created by combining these marks. The Opponent further claims that because the Applicant has not filed any evidence or submissions, I should infer that the Applicant knew at the time of filing the Application that it should not have applied for the Trade Mark being a combination of the brands NIKE and IKEA. I do not consider it appropriate to take into consideration the Applicant's arguments regarding the NIKE mark given that issue was not pleaded.
2. Regardless, whilst it is likely that the Applicant was aware of an earlier trade mark such as the Opponent's IKEA Mark(s), 'mere knowledge before the relevant date of another person's trade marks, without more, does not in itself constitute the basis for a finding of bad faith'.[52]
3. The Opponent has not adduced any other evidence to support an allegation of bad faith and based on the evidence before me, I cannot conclude that the Applicant's decision to file the Application for the Trade Mark was done to take advantage of the reputation of the IKEA mark. Moreover, even if the Applicant knew of the IKEA mark, there is no reason for the Applicant to conclude that adoption was problematic for its own use or registration of the Trade Mark.
4. The Opponent has failed to satisfy me that the Application was filed in bad faith and the s 62A ground of opposition is unsuccessful.

1. I find that the Opponent has failed to establish any of the grounds of opposition nominated in the SGP. Accordingly, registration of the Application may proceed 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. The Opponent sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

[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').

[5] Bierman, Confidential Annexure JB-6.

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

[7] [2017] FCAFC 56 (Greenwood, Besanko and Katzmann JJ).

[8] [2017] FCAFC 83 (Greenwood, Jagot, and Beach JJ).

[11] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

[12] [2023] FCA 482, [55] (Jackman J).

[13] [2023] HCA 8, [26] citing Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69] (Yates, Abraham and Rofe JJ) ('Swancom').

[14] [2023] HCA 8, [26] citing Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd [1952] HCA 15 (1952); 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).

[15] [2023] HCA 8, [27] citing Australian Woollen Mills Ltd v F S Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ) ('Australian Woollen Mills').

[17] [2023] HCA 8, [28], [29] citing Australian Woollen Mills (n 15) 658 (Dixon and McTiernan JJ).

[18] [2023] HCA 8, [28], [29] citing Swancom (n 13) [69]-[70], [77]-[80].

[19] [2023] HCA 8, [29] citing Shell (n 6), [5].

[20] [2023] HCA 8, [30] citing Coca-Cola Company v All-Fect Distributors Ltd [1999] FCA 1721; (1999) 96 FCR 107, 122 [39] (Black CJ, Sundberg and Finkelstein JJ) quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62 (Richardson J).

[21] [2023] HCA 8, [31] citing Campomar Sociedad Limitada v Nike International Limited [2000] HCA 12; (2000) 202 CLR 45, 79 [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).

[22] [2023] HCA 8, [32] citing Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50)] (French J) restating principles from Southern Cross (n 4) 594-595 (Kitto J).

[23] [2023] HCA 8, [30], [71] citing Australian Woollen Mills Ltd (n 15) 658.

[24] [2023] HCA 8, [30], Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc [2020] FCAFC 235; (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) citing Australian Woollen Mills (n 15) 657.

[25] Aristoc Limited v Rysta Limited (1943) 60 RPC 87, 108.

[26] Australian Woollen Mills (n 15), 658.

[27] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [62] (Gummow J).

[28] Re Hicks's Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636, 640 (Holroyd J).

[29] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).

[30] [2000] FCA 1335, [81].

[31] Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [74]-[75] (Moore, Tamberlin and Goldberg JJ).

[32] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [77] (Lockhart J).

[34] Qantas Airways Limited v Edwards [2016] FCA 729, [143] (Yates J).

[35] Big Screen Video Pty Ltd v Pyramid Circle Holdings Pty Ltd t/a LED Sign Supply [2016] ATMO 16, [27] (Hearing Officer D. Lyons).

[36] [1979] RPC 410, 423.

[37] [2012] ATMO 124, [40] (Hearing Officer I. Thompson).

[38] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2003] FCA 1502, [47] (Wilcox J).

[39] Australian Competition and Consumer Commission v Coles Supermarkets Australia Pty Ltd [2014] FCA 634, [40] (Allsop CJ).

[40] See e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36] (Hearing Officer T. Williams); Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191, 198 (Gibbs CJ).

[41] [1989] FCA 506, [40] (French J).

[42] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174 [410] (Rangiah J).

[43] [2012] FCA 81 ('Dodds-Streeton J) ('Fry Consulting').

[44] [2013] FCA 478 (Bennett J) ('DC Comics').

[51] Ibid [147], [148] and [165].

[52] 1872 Holdings VOF v Havana Club Holding SA [2017] ATMO 12, [64] (Hearing Officer I. Thompson).