1. The Application was examined as required by s 31 and advertised for possible registration on 16 August 2023.
2. On 2 October 2023 the Opponent filed a Notice of Intention to Oppose the registration, followed by its Statement of Grounds and Particulars ('SGP') on 2 November 2023. The Applicant filed its Notice of Intention to Defend the opposition on 6 December 2023.
3. Regulation 5.14 provided that the evidence in support ('EIS') was to be filed by the Opponent by 12 March 2024. On 12 March 2024, the Opponent sought a one month extension of time ('EOT') within which to file the EIS. A delegate of the Registrar of Trade Marks ('Registrar') wrote to the Opponent on 25 March 2024 indicating the Registrar's intention to refuse the request. On 8 April 2024 the Opponent filed its EIS and on 10 April 2024 provided further information regarding the EOT. The Registrar wrote again to the Opponent on 22 April 2024 expressing an intention to refuse the EOT. The Opponent applied to be heard in relation to the EOT on 30 April 2024. On 14 November 2024 this Office issued the decision that the EOT had been granted.
4. Thereafter the Applicant filed its evidence in answer ('EIA') on 17 February 2025 and the evidence in reply ('EIR') was filed on 20 April 2025. Details of the evidence follow:

• Declaration of Glenn Brendon Wainrib, Director of the Opponent, made on 8 April 2024, with Exhibits GW-1 to GW-17 ('Wainrib 1').

• Declaration of Elena Petrova, Director of the Applicant, made on 13 February 2025, with Annexures EP-1 to EP-19 ('Petrova').

• Declaration of Glenn Brendon Wainrib, made on 17 April 2025, with Exhibits GW-2.1 to GW-2.4 ('Wainrib 2').

1. Once time for filing evidence had ended, both parties were given an opportunity to either request an oral hearing or hearing by way of written submissions. Both parties requested to be heard by way of videoconference. As a delegate of the Registrar of Trade Marks ('Registrar') I heard the matter by videoconference on 14 November 2025. Susan Gartford of Counsel instructed by Upekha Wedage of Rotstein Commercial Lawyers appeared on behalf of the Opponent, with Glenn Wainrib in attendance. Melissa McGrath of Counsel instructed by Jacob Grumetza and Ana Henao Lopez of Progressive Legal appeared on behalf of the Applicant.

1. In the SGP the Opponent nominated grounds of opposition under ss 41, 42(b), 43, 44, 58, 58A, 60 and 62A.
2. The date at which the rights of the parties are to be determined is the filing date of 26 July 2022 ('Relevant Date') which is also the priority date for the purposes of ss 44 and 60.
3. The Opponent bears the onus of establishing at least one of the grounds of opposition.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3]

1. Founded in 2015, the Opponent provides mobile emergency, general and dental laboratory services and is headquartered in Heatherton, Victoria.

1. The Applicant was incorporated in September 2022 and operates a mobile dentistry practice from premises in Bankstown, New South Wales.

41 Trade mark not distinguishing applicant's goods or services

(1) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

(2) A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

(a) the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b) the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

(a) the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b) the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

(i) the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

(ii) the use, or intended use, of the trade mark by the applicant;

(5) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

1. In the SGP the Opponent particularises the ground of opposition under s 41 as follows:

The Applicant's trade mark is not inherently adapted to distinguish the applicant's goods and/or services as follows:

1. The words contained in the Applicant's trade mark "MOBILE DENTAL CARE AUSTRALIA" is descriptive of the services sought to be registered in class 44, being primarily mobile dental services. The ordinary meaning of the Opposed Mark as a whole indicates that it is a MOBILE DENTAL CARE service, operating in AUSTRALIA.

2. It is likely that other traders in the ordinary course of their business and without any improper motive, would ordinarily require to use the words MOBILE DENTAL CARE AUSTRALIA or words so nearly resembling these in connection with goods or services goods or services similar to the Applicant.

3. The ancillary features in the logo device are insufficient to distinguish the Applicant's services from those of other traders who provide similar goods/services. The tooth device which doubles as a map of Australia represents "Dental Services being provided in Australia".

The trade mark application for the Opposed Mark was lodged on 15 March 2023 and the Applicant's business was registered on 7 September 2022. The Applicant's trade mark has insufficient use (if any) to have acquired any distinctiveness through use.

1. Section 41 must be assessed having regard to s 33, which embodies a 'presumption of registrability'. Section 33(3) compels the Registrar to accept a trade mark for registration unless the Registrar is satisfied that grounds exist for rejecting the application.
2. In Clark Equipment Co v Registrar of Trade Marks, Kitto J stated that the inherent adaptation of a trade mark is assessed:

[B]y reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[4]

1. In Cantarella Bros Pty Ltd v Modena Trading Pty Ltd, the High Court explained that the test for inherent distinctiveness involves a two-step process. Firstly, determination of the ordinary signification of the sign to those who would purchase, consume or trade in the goods. Secondly, having determined the ordinary signification, determination of the likelihood of the sign being desired for use by others.[5]
2. The ordinary signification is the ordinary meaning of the words to any person in Australia concerned with the goods.[6]
3. The Opponent submits that the phrase MOBILE DENTAL CARE AUSTRALIA in plain English describes the Applicant's Services. Furthermore, the accompanying device is itself merely descriptive as it visually communicates "dental services delivered in and around Australia".
4. The Applicant submits that the Trade Mark is not merely the phrase MOBILE DENTAL CARE AUSTRALIA but a composite mark comprising words and a distinctive device element (tooth shaped like a map of Australia) which is not just an image with the same meaning as the text.
5. The Trade Mark comprises a combination of words and a device. In Re Diamond T Motor Company Lawrence J noted that:

In determining the question of (whether a mark is adapted to distinguish the applicant's goods from goods of other manufacturers) it is, in my judgement, immaterial to consider whether any of its component parts are or are not registrable by themselves.[7]

1. In Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) ('Fry'), Dodds-Streeton J observed that:

It is established that a combination mark may be capable of distinguishing by the overall impression it creates, even if the individual elements in isolation lack any such capacity, because, for example, they are commonplace in a trade, or, by parity of reasoning, merely or highly descriptive.[8]

1. In my assessment the Trade Mark is inherently adapted to distinguish in respect of the Applicant's Services. The word phrase MOBILE DENTAL CARE AUSTRALIA is descriptive of the Applicant's Services, however I agree with the Applicant that the device element is multilayered and depicted in a fanciful manner. The Trade Mark as a whole does not strike me as a combination which other traders, without improper motive, would desire to use for its ordinary signification in connection with their own services.
2. The ground of opposition under s 41 has not been established.

43 Trade mark likely to deceive or cause confusion

An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

1. In the SGP the Opponent particularises the s 43 ground of opposition as follows:

Given the significant reputation of the Original Trade Mark and its extensive use across Australia in connection with mobile dentistry services the Opposed Mark would be likely to deceive or cause confusion. It is likely that members of the Australian public would be deceived or confused into thinking that the Applicant's Services offered under or by reference to "Mobile Dental Care Australia" originate from, or are associated with, or are authorised or has sponsorship or affiliation with the Opponent, when they do not.

1. To establish a ground of opposition under s 43, there must be an inherent connotation within the trade mark itself. Justice Gyles in Pfizer Products Inc v Karam commented:

'Connotation' is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, [21](https://jade.io/article/53 and [21](https://jade.io/article/55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question ...[9]

1. In the Full Federal Court decision of Primary Health Care Limited v Commonwealth of Australia,[10] Greenwood J identified two questions to be considered under s 43: first, "whether the trade mark, sought to be registered, has 'some connotation'" and therefore engages s 43; and secondly, if s 43 is engaged "whether 'because of [that connotation]', use of the trade mark, in relation to the relevant goods or services, in a forward-looking way, 'would be likely to deceive or cause confusion'".
2. As to whether there is a connotation associating the Trade Mark with the Opponent, I note that the connotation cannot arise from a comparison with another trade mark. It is ss 44 and 60 that are concerned with whether use of the Trade Mark would be likely to deceive or cause confusion by reason of similarity with another trade mark or the reputation of another trade mark in Australia. The authorities do recognise that deception or confusion may arise from a perceived sponsorship or endorsement in the name of a well-known institution or celebrity persona.[11] However the Opponent does not appear to depend on a connotation arising from the Trade Mark itself, but upon the Trade Mark's alleged similarity to the 211 Mark and the potential reputation the Opponent has developed in relation to mobile dentistry services. For these reasons, I do not find that the Trade Mark is likely to deceive or cause confusion because of any connotation in the Trade Mark.
3. The Opponent has not established the ground of opposition under s 43.

Section 58

1. Section 58 provides:

The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

1. In the SGP the Opponent relies on its trade mark registration 1772211 which I have reproduced below:

Trade mark: ('211 Mark')

Specification: Class 44: Dental surgery services ('Opponent's Services')

1. To establish this ground, the Opponent must show use in Australia, by some person other than the Applicant, of a trade mark that is identical or substantially identical to the Trade Mark, [12] in relation to goods and/or services that are the 'same kind of thing' as the Applicant's Goods and/or Services[.] The trade mark relied on by the Opponent must have been used in the course of trade prior to the filing date, or prior to the date of first use of the Trade Mark, whichever is earlier.[14]
2. The test for whether trade marks are substantially identical was set out by Windeyer J in The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited ('Shell') as follows:

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. [15]

1. For the purposes of comparison, I have reproduced the respective trade marks below:

1. In this matter the parties were at odds as to the dominant cognitive cues within the respective trade marks. The Opponent relies on Pham Global Pty Ltd v Insight Clinic Imaging Pty Ltd ('Pham')[16] where it was observed that the essential elements of a mark are those features that distinguish it, not merely descriptive elements. For the Opponent the device element in the respective trade marks is the dominate cognitive cue as it has the same visual concept, being a tooth incorporating the Australian map. The Applicant argues that the acronym MDCA in the 211 Mark is the dominant part of this trade mark.
2. In my view the 211 Mark consists of two essential elements being the tooth device and the letters MDCA, and the essential element in the Trade Mark is the device element. The descriptive words MOBILE DENTAL CLINICS AUSTRALIA in the 211 Mark and the words MOBILE DENTAL CARE AUSTRALIA in the Trade Mark are secondary elements and unlikely to be regarded as acting as a badge of origin.
3. On a side by side comparison, while both trade marks contain a tooth device, the Opponent's tooth device is highly stylised with layers denoting parts of a tooth. The 211 Mark also consists of the letters MDCA which are underlined by the descriptive words MOBILE DENTAL CLINICS AUSTRALIA. In comparison, the Trade Mark is drawn as an outline of a map of Australia which includes Tasmania and comprises the letter M inside which indicates the roots of a tooth. The Trade Mark also consists of the words MOBILE DENTAL CARE AUSTRALIA forming a circle around the device element. For these reasons the total impression emerging from a side by side comparison is not one of resemblance. I add that while some consumers may consider MDCA as an acronym for the descriptive word elements in the respective trade marks, the connection is not so immediately obvious as to negate the impact of the letters when the trade marks are considered as wholes.
4. The Opponent has not established the ground of opposition under s 58.

Section 44

1. Section 44 provides:

Section 44 - Identical etc. trade marks

(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) it 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).

(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.

Note 1: For deceptively similar see section 10.

Note 2: For similar services see subsection 14(2).

Note 3: For priority date see section 12.

Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A. ...

(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.

Note: For limitations see section 6.

(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.

Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2: For predecessor in title see section 6.

Note 3: For priority date see section 12.

1. In the SGP the Opponent relies on the 211 Mark as set out in paragraph 31.
2. To satisfy the s 44 ground of opposition, the Opponent much establish that the Trade Mark is substantially identical or deceptively similar to another trade mark with an earlier priority date, in the name of a person other than the Applicant, in respect of similar services.
3. From the information set out at paragraph 31 and verified on the Register of Trade Marks ('Register'), the 211 Mark is held in a name other than the Applicant and has a priority date earlier than the Relevant Date. The next consideration is whether the Applicant's Services are similar to the Opponent's Services.
4. Section 14 relevantly provides:

14 Definition of similar goods and similar services

(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. The 211 Mark covers dental surgery services in class 44. The Applicant's claims a broad range of dental and medical services in class 44. I consider the Opponent's Services to be the same as the Applicant's claims for dental services. In regards to the Applicant's broad claims for medical services, I consider these services are similar to the services provided in dental surgeries as some treatments cross into medical services.
2. I have found under s 58 that the respective trade marks are not substantially identical. The remaining question is whether the Trade Mark is deceptively similar to the 211 Mark. The expression 'deceptively similar' is defined by s 10:

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. The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J 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 [trade mark].[17]

1. The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[18] conveniently stated the relevant principles, which was summarised in The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd[19] as follows:

(a) the resemblance between the two marks must be the cause of the likely deception or confusion;[20]

(b) in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[21]

(c) the marks should not be compared side by side;[22]

(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;[23]

(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';[24]

(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;[25]

(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;[26]

(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; [27]

(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;[28]

(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";[29]

(k) evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[30] and

(l) any intention to deceive or cause confusion may be a relevant consideration but is not required.[31]

1. Distinctiveness of the compared trade marks is a factor that can legitimately be taken into account when considering deceptive similarity[32] and the determination of the question 'must necessarily involve some inquiry as to the inherent distinctiveness of the part which is common to both marks under consideration'.[33] Therefore it is relevant to take into account whether elements of the rival marks have a descriptive character[34] and whether the element of a trade mark that is descriptive may call to mind the nature of the product or service, rather than its trade source but each case must be considered on the basis of the marks in question.[35]
2. The Opponent asserts that the words MOBILE DENTAL CLINICS AUSTRALIA in the 211 Mark can easily be mixed up by consumers with imperfect recollection with the words MOBILE DENTAL CARE AUSTRALIA. Moreover, the similar features of the two trade marks with the near identical wording, and common use of a logo device in a stylised shape of a tooth and a map of Australia, creates a resemblance which is likely to cause confusion in the consumer's mind, especially given the two trade marks cover similar services in the same class.
3. The Applicant submits that the comparison of the impression that the notional buyer would have of the 211Mark with the impression that the notional consumer would have of the Trade Mark does not result in a conclusion of deceptive similarity. The Applicant argues that the tooth device in the 211 Mark is a conventional image of a tooth, whereas the Applicant's tooth shape has been artfully modified to resemble the shape of Australia including the land mass of Tasmania to identify the supplier of the services as Australian. Moreover, the Trade Mark does not include the prominent MDCA acronym, which is central to the identity of the 211 Mark, leaving a different overall impression for consumers. For the Applicant any conceptual similarity between the Trade Mark and the 211 Mark is outweighed by the visual and aural differences.
4. Whilst I acknowledge that the 211 Mark and the Trade Mark share word phrases which follow a similar structure by including the words MOBILE DENTAL at the beginning of the phrase and the word AUSTRALIA at the end of the phrase, and a logo device of a stylised shape of a tooth, the trade marks must be considered in their entirety.[36] Further, the meaning of the word elements in both marks clearly convey their intended meaning in relation to dental services and may call to mind the nature of the service provided, rather than any trade source, such that the ordinary patient would expect the words MOBILE DENTAL CLINICS AUSTRALIA and MOBILE DENTAL CARE AUSTRALIA to be commonly used in the names of dental providers or as a description of the type of dental care provided, namely mobile. Here the words in the marks which prima facie lack inherent adaptation to distinguish the parties' services, must be to some extent discounted for the purposes of comparison, although they cannot ever be completely disregarded.[37]
5. I consider that the 211 Mark in its entirety has some meaningful and memorable elements. Visually the 211 Mark consists of an opaque layered tooth device beside the acronym MDCA with the word descriptive phrase MOBILE DENTAL CLINICS AUSTRALIA underneath. This is in contrast to the Trade Mark which does not contain the acronym MDCA, and the device element is a line drawing of a map of Australia in the shape of a tooth with the descriptive word phrase MOBILE DENTAL CARE AUSTRALIA circling it. As such the trade marks are likely to be remembered and recalled in different ways.
6. In determining whether there is a likelihood of deception or confusion I must consider all the surrounding circumstances including the circumstances in which the services are offered and the character of the probable acquirer of the services. The services are broadly speaking dental services which are directed at the public at large. I consider that providers of these services would need to be competitive with rivals, and due to the health impacts and cost considerations involved, consumers would be typically engaged with a relatively high degree enthusiasm, care and attention when choosing a dental service. In this regard I find it more probable than not that consumers of these services would not be contextually confused between the dental offerings of the Opponent and the Applicant. While I acknowledge that Wainrib 1 claims that the Opponent has received numerous inquiries from its clients asking if the Applicant is affiliated with its business, the Opponent has provided no documentary evidence of any actual confusion.
7. Assessing the trade marks in their entirety, and the likely impression on the mind of the relevant consumer, I am not satisfied that there would be a real tangible danger of deception or confusion. In my opinion, the visual differences between the trade marks are sufficient such that the ordinary customer is likely to distinguish between them and would not be likely to wonder whether the services come from the same source. I find the 211 Mark is not deceptively similar to the Trade Mark.
8. The Opponent has not established the ground of opposition under s 44.

58A Opponent's earlier use of similar trade mark

(1) This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:

(a) subsection 44(4); or

(b) a similar provision of the regulations made for the purposes of Part 17A.

(2) The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:

(a) first used the similar trade mark in respect of:

before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and

(b) has continuously used the similar trade mark in respect of those goods or services since that first use.

1. I have not found the 211 Mark to be substantially identical or deceptively similar to the Trade Mark. Accordingly, I have not considered whether the provisions of s 44(4) are applicable. Therefore, the ground of opposition under s 58A is otiose.

Section 60

1. Section 60 is reproduced below:

Section 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. In the SGP the Opponent particularises the ground under s 60 as follows:

The Opponent is a pioneer of mobile dentistry services in Australia, which was the brainchild of its young founder Caitlin Wainrib (now deceased). Caitlin's father Glenn Wainrib and her brother, Stephen Wainrib continues the mobile dentistry business founded by Caitlin by reference to "Mobile Dental Clinics Australia". Since 2015, the Opponent and its related entities which operate the "Mobile Dental Clinics Australia" business, have won many accolades and awards including the Australian Small Business Champion Award in the Dental Services sector in the year 2022. As a result of the Opponent's reputation acquired through the extensive use of the Original Trade Mark in connection with the provision of mobile dental services in Australia, the awards and accolades it has received and its extensive and ongoing marketing activities since 2015, their dental practice has become widely known and identified with mobile dental care across Australia .

The Opponent has gained significant goodwill and reputation as the premium mobile dental services provider in Australia over the past 8 years or so. The Applicant's application to register the Opposed Mark as an Australian Trade Mark was lodged on 15 March 2023 and the Applicant's business was registered in September 2022. The Applicant is "piggy-backing" off the goodwill and reputation of the Opponent acquired for nearly 8 years by using the Opposed Mark which is deceptively similar to the Original Trade Mark to promote its mobile dental business.

1. To satisfy s 60 the Opponent must establish that the trade mark upon which it relies had a reputation in Australia at the Relevant Date. The Opponent must then establish that because of that reputation, use of the Trade Mark would be likely to deceive or cause confusion.
2. In McCormick & Co Inc v McCormick, Kenny J asked what is intended by the word 'reputation' in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was 'the recognition of the [trade mark] by the public generally'.12F9F[38]
3. Justice Kenny also referred to the decision of Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG, where Hearing Officer Thompson stated:

[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under the trade mark and contemplation of the advertising and promotional figures.

As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the 'recognition' component of the trade mark's reputation. The credit, image and values projected by a trade mark attaches to the 'esteem' component of the reputation as do the public events and other trader's marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, 'contra deals' and so forth.

It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.14F11F[39]

1. What constitutes a significant or substantial number of persons in the relevant market must be considered. Justice Heerey in Le Cordon Bleu BV v Cordon Bleu International Ltee provided some guidance:

What is "significant" or "substantial" will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.[40]

1. The Opponent relies on its 211 Mark and turning to its evidence in this matter, Wainrib 1 declares that the 211 Mark has been used continuously since 1 July 2015 in relation to dental surgery services. Wainrib 1 states that the Opponent has provided dental care services to over 600 facilities in all States and Territories in Australia including aged care facilities, prisons, schools, childcare centres and other corporations.
2. Wainrib 1 states that the Opponent's advertising expenditure since 2015 is approximately $213,000. Wainrib 1 states that in or around July 2015 the Opponent set up a website under the domain name www.mobiledentist.com.au ('Website'). Exhibit GW-1 to Wainrib 1 comprises screenshots from the Internet Archive Wayback Machine of the Website dated between February 2017 and February 2023, featuring the 211 Mark. Wainrib 1 attests that the Opponent also operates and manages social media accounts in Facebook, Instagram and TikTok to promote and advertise the 211 Mark.
3. Wainrib 1 declares that in or around August 2015 the Opponent purchased a van fitted with dental gear and equipment to be used in connection with its business. Exhibit GW-2 to Wainrib comprises a photograph of a van featuring the 211 Mark. Wainrib 1 states that since August 2015 the Opponent has purchased 11 vehicles to deliver dentistry services all across Australia, which feature the 211 Mark.[41] Wainrib 1 attests that the van number plates are customised to state "MDCA" followed by numbers 1 to 11 in relation to the 11 vehicles owned by the Opponent. Exhibit GW-5 to Wainrib 1 comprises a screenshot from the Opponent's Facebook account of seven vehicles featuring the MDCA Mark and customised numberplates dated 14 May 2019.

1. Wainrib 1 attests that on or about 19 October 2016, the Opponent's business commenced operations at its new headquarters in Melbourne. Exhibit GW-3 to Wainrib comprises a screenshot of a Facebook post made on the Opponent's founder Caitlin Wainrib's account dated 19 October 2016 confirming the opening of the Opponent's new head office. The post includes a photo of the headquarters and the outside windows feature the tooth logo beside the words 'Mobile Dental Clinics Australia'.
2. Wainrib 1 declares that the Opponent's uniforms worn by medical professionals and staff all carry the 211 Mark. Exhibit GW-7 to Wainrib 1 comprises screenshots from the Opponent's Facebook account dated between March 2016 and March 2023. The posts show members of the Opponent's workforce wearing uniforms and scrubs featuring the 211 Mark.
3. Wainrib 1 claims the following examples of the Opponent's reputation and community reach:
   • The Opponent won the Australian Small Business Champion Award ('ASBCA') in the Dental Services sector in 2022, and was a finalist in the ASBCA in 2023.
   • Two of the Opponent's staff are university lecturers and wear their uniforms displaying the 211 Mark when delivering their lectures.
   • The Opponent employs student interns from various universities and provides opportunities for them to gain work experience.
   • The Opponent has undertaken special outreach programs whereby its services have been provided to indigenous communities.
   • The Opponent is a member of the Australian Dental and Oral Health Therapists' Association.
   • The Opponent has featured in third party national and industrial digital platforms, including Video Net Movies in 2016, Dentrix Ascend Australia in 2019 and House of Wellness in 2023.
4. In my assessment of the evidence before me, I am not satisfied that at the Relevant Date, the 211 Mark had acquired a reputation in Australia amongst a significant number of consumers in respect of dental surgery services. There are significant weaknesses in the Opponent's evidence as much of it lacks detail. The Opponent's evidence does not contain any sales revenue or documentary evidence such as invoices which demonstrate sales made by the Opponent in Australia. While the Opponent has provided advertising expenditure, the figure is minimal. There are no analytics/metrics in relation to the Website or the Opponent's social media accounts, nor are there any metrics in relation to the reach of third party promotion of the 211 Mark.
5. Given that the market for the Opponent's Services includes most, if not all, Australian households, having considered the totality of the Opponent's evidence, I am not satisfied there is a reputation in the 211 Mark in relation to the dental surgery services amongst a 'significant or substantial' number of Australian consumers to satisfy the requirements of s 60(a).
6. The Opponent has not established the ground of opposition under s 60.

Section 42(b)

1. Section 42 is reproduced below:

42 - Trade mark scandalous or its use contrary to law > > An application for the registration of a trade mark must be rejected if: > > (a) the trade mark contains or consists of scandalous matter; or > > (b) its use would be contrary to law.

2. In the SGP the Opponent particularises the ground under s 42 as:

Competition and Consumer Act 2010; Tort of passing off

1. Section 42(b) and the case law requires the Opponent to show that use of the Trade Mark would be, rather than could or might be, contrary to law.[42] As observed by Rangiah J in Primary Health Care Limited v Commonwealth of Australia:

It is not enough for a party opposing registration to show that s 18 of the ACL [Australian Consumer Law 2010] or s 52 of the TPA [Trade Practices Act 1974] might be contravened. The opponent must prove, on the balance of probabilities, that the provision would be contravened by use of the trade mark.[43]

1. Section 18 of the Australian Consumer Law[44] ('ACL') is concerned with misleading or deceptive conduct, while s 29 of the ACL is concerned with false and misleading representations. Case law has made it plain that s 18 of the ACL imposes a more stringent test than that for deception or confusion under s 60.[45] I have found that the Opponent has failed to establish a ground of opposition under s 60. Consequently, I find that the Opponent has also failed to establish that use of the Trade Mark would be contrary to s 18 of the ACL.
2. In relation to s 29 of the ACL it has been held that where a trade mark does not offend s 18 of the ACL, neither will it offend s 29 of the ACL[46] and nor will it constitute passing off.[47]
3. The Opponent has not established the ground of opposition under s 42(b).

The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

1. In the SGP the Opponent particulasises the ground under s 62A as follows:

(a) The Opponent's business has acquired a significant reputation in Australia by trading by reference to the Original Trade Mark.

(b) The Opponent and its related entities have won may accolades and awards in relation to providing the class 44 services in Australia under and by reference to the Original Trade Mark.

(c) The Opponent refers to and repeats the particulars outlined under the s58A, sS60, s58, s44 and s43 Grounds above in respect of its extensive use of, and reputation in, the Original Trade Mark in Australia, and the deceptive similarity of the Opposed Mark to the Original Trade Mark.

(d) As at the date of filing this Statement of Grounds and Particulars, the Applicant has and is promoting dental services by reference "Mobile Dental Care Australia" on the website athttps://dentalcareaustralia.com/ ("Applicant's Website"). The style and arrangement of the Applicant's Website is virtually identical to the style, arrangement and depiction of the Original Trade Mark and other features of the Opponent's Website.

(e) The Applicant is also promoting its mobile dental services under and by reference to the Opposed Mark on Instagram and Facebook in a manner similar to the Opponent.

(f) The Applicant's attempt to register the Opposed Mark falls short of acceptable commercial behaviour.

1. The Act provides no guidance on the meaning of the term 'bad faith'. The Explanatory Memorandum to the Trade Marks Bill 2006 (Cth) provided that the new ground has been introduced to cater for situations (among others) 'in which a person has deliberately set out to gain registration of a trade mark, or adopted a trade mark in bad faith'.
2. In DC Comics v Cheqout Pty Ltd, Bennett J observed that all of the circumstances surrounding the application to register a trade mark are relevant.[48] Moreover, conduct after the filing of an application can be used to shed light on the Applicant's subjective intent at the time of filing.[49]
3. The test for bad faith incorporates subjective and objective elements. That is, I must consider what the Applicant actually knew at the filing date, and then consider whether, armed with that knowledge its decision to file the Trade Mark would be considered to be in bad faith by persons who adopt proper standards of behaviour in business. In Fry, Dodds-Streeton J made the following comments, quoting from Harrisons's Trade Mark Application:

Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton "the Robin Hood test". The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.

... The words "bad faith" suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[50]

1. Her Honour continued later in the same decision:

The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant's mental state in the combined test preferred in Harrison.

Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand, or unconscientious character.[51]

1. The Opponent submits that bad faith on the part of the Applicant may be inferred from the following:
   • The Trade Mark is similar to the 211 Mark.
   • The Applicant applied for services within the same class 44 as the services for which the 211 Mark is registered.
   • An assertion by the Applicant that it had no knowledge of the Opponent or the 211 Mark at the date of filing is untenable given the significant reputation and the accolades received by the Opponent since June 2015.
   • The style and arrangement of the Applicant's website is virtually identical to the style, arrangement and depiction of the 211 Mark and other features of the Opponent's Website.
   • The Applicant is also promoting its mobile dental services on Instagram and Facebook in a manner similar to the Opponent.
2. In response the Applicant submits that the Opponent's bad faith allegations are speculative and unsupported and makes the following statements:

(a) Independent adoption: The Applicant independently developed the Applicant's Mark to accurately describe its services. The mark was not derived from or inspired by the Opponent's mark.

(b) No knowledge of Opponent: The Applicant had no knowledge of the Opponent's business when establishing its own business and adopting its mark. The Applicant operated independently in New South Wales; the Opponent was based in Victoria.

(c) Material differences: The Applicant's Mark differs from the Opponent's asserted mark in material respects (no acronym, different key word). If the Applicant had intended to "piggy-back" on the Opponent's reputation (which is denied), it would have adopted a mark more similar to the Opponent's mark, particularly the distinctive acronym "MDCA."

(d) Legitimate business: The Applicant operates a genuine, substantial mobile dental business. It has made significant investments in equipment, vehicles, staff, and business development. This is not the conduct of an opportunistic applicant seeking to trade on another's reputation.

1. In regard to the similarities in the parties' websites the Applicant submits that its website has its own independent design, layout and content.
2. The onus is on the Opponent to establish that the act of filing the Application was in bad faith. While the standard of proof remains the same, given the serious nature of the allegation, cogent evidence is required in order to prove it. [52]
3. Turning to the factors raised by the Opponent, I am not satisfied that the Applicant's conduct falls short of the standards of reasonable commercial behaviour. The Applicant has not provided evidence that the Applicant had knowledge of the Opponent at the filing date, and 'mere knowledge before the relevant date of another person's trade marks, without more, does not itself constitute the basis for a finding of bad faith'.[53] I have previously addressed the reputation in the 211 Mark in Australia and based on the evidence before me, I cannot conclude that the decision by the Applicant to apply and seek to register the Trade Mark for its chosen services was a decision to take advantage of the reputation in the 211 Mark. In regard to the style and arrangement of the Applicant's website being virtually identical to the Opponent's Website, I only note that many website designs use popular frameworks and this leads to similar layouts, buttons and navigation styles because it works well for usability and accessibility. In regard to the Applicant's promotion of its services on social media being similar, each platform has specific templates, so brand owners generally follow these templates.
4. On balance there is nothing to identify the Applicant's conducts as unscrupulous, underhanded or otherwise unconscientious in character.
5. The Opponent has not established the ground of opposition under s 62A.

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

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

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

1. The Opponent has not established a ground of opposition in relation to the Application. Accordingly, trade mark number 2341816 may proceed to registration one month from the date of this decision. If the Registrar is served with a notice of appeal, I direct that the disposition of the Application should be in accordance with the Court's order or direction.

1. Both parties sought an award of 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 accordance with the amounts detailed in Schedule 8 of the Regulations.
2. In the hearing the Applicant asked that it should be awarded extra costs because the Opponent filed two sets of submissions. I note that these submissions were both filed within the deadline set by this Office. Given this, even if I had the discretion to award extra costs in this matter, I would not do so.

[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 Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

[4] [1964] HCA 55, [5].

[5] [2014] HCA 48, [71] (French CJ, Hayne, Crennan and Kiefel JJ) ('Cantarella').

[8] [2012] FCA 81, [61].

[9] [2006] FCA 1663, [53].

[10] [2017] FCAFC 174, [14].

[11] See: McCorquodale v Materson [2004] FCA 1247, [60] (Kenny J).

[12] Carnival Cruise Lines Inc. v Sitmar Cruises Limited [1994] FCA 68, [62] (Gummow J).

[[.]](https://jade<a name=) [1897] VicLawRp 118; (1897) 22 VLR 636, 640 (Holroyd J).

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

[15] [1963] HCA 66; (1963) 109 CLR 407, 415.

[16] [2017] FCAFC 83; (2017) 251 FCR 379 [52].

[18] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

[19] [2023] FCA 482, [55] (Jackman J).

[20] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69] (Yates, Abraham and Rofe JJ) ('Swancom').

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

[22] 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').

[25] C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539; (2000) 52 IPR 42, 62 [43] (Ryan, Branson and Lehane JJ).

[27] 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).

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

[29] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50(ii)] (French J) restating principles from Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592, 594-595 (Kitto J).

[30] Australian Woollen Mills (n 21).

[31] 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 21), 657.

[32] Stone & Wood Group Pty Ltd v Intellectual Property Development Corporation Pty Ltd [2018] FCAFC 29, [66] (Allsop CJ, Nicholas, Katzmann JJ).

[33] Re Frigiking Trade Mark [1973] RPC 739, 752 (Ch D).

[34] The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd [2023] FCA 482, [73] (Jackman J).

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

[36] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [92] (Keane CJ, Stone and Jagot JJ).

[37] Re Frigiking Trade Mark [1973] RPC 739, 752 (Ch D).

[38] [2000] FCA 1335, [81].

[39] [1999] ATMO 23; (1999) 47 IPR 423, 436.

[40] [2000] FCA 1587, [91], (albeit in relation to paragraph 28(a) of the now superseded Trade Marks Act 1955 (Cth)), (emphasis in original).

[42] Advantage Rent a Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).

[43] [2017] FCAFC 174, [411].

[44] Competition and Consumer Act 2010 (Cth), sch 2.

[45] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191, 198. This case was decided under the superseded s 52 Trade Practices Act 1974 (Cth) ('TPA') the equivalent provision to the current s 18 of the ACL.

[46] In Pacific Publications Pty Ltd v IPC Media Pty Ltd [2003] FCA 104, Beaumont J considered - in connection with the superseded TPA - that 'the Court's conclusion on section 52 would necessarily carry with it a conclusion on section 53 (c) and (d).' Sections 53(c)-(d) of the TPA are the equivalent provisions to ss 29(1)(g)-(h) of the ACL.

[47] Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506, [40] (Hill J), wherein failure to succeed under ss 52 or 53 of the TPA 'will invariably mean that proceedings for passing off would likewise fail'.

[48] [2013] FCA 478, [62].

[50] [2012] FCA 81; Harrison's Trade Mark Application [2004] EWCA Civ 1028.

[51] Fry (n 8) [2012] FCA 81, [147], [165]-[166].

[52] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12] (Hearing Officer Nancarrow).

[53] 1872 Holdings VOF v Havana Club Holding SA [2017] ATMO 12, [64] (Hearing Officer Thompson).