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.[9]

1. The marks to be compared in this case are shown below:

1. The Opponent refers to a number of decisions involving word marks and composite marks in support of its argument that the above marks are substantially identical. Other than accepting the legal principles in these cases, I do not find any of these decisions persuasive as each involves a comparison of more complex marks than those before me. More helpfully, the Opponent noted the finding that the following marks are substantially identical in Ferrari SpA v Wicara Enterprises ('Ferrari'):[10]

1. In reaching this conclusion, the Delegate noted:

The purpose of a side by side comparison is to decide whether or not the trade marks are 'essentially the same'. The Registrar's delegate in Estar Online Trading Pty Ltd v Estar Ltd (2001) 53 IPR 583 commented at 588:

The fact that trade marks are not exactly identical does not necessarily mean that they are not substantially identical.

I find the side by side comparison of the trade marks in this opposition establishes that they are in essence the same. The general effect of "the respective wholes" is of a realistic drawing of a rearing black horse as seen from the side. The trade marks are substantially identical.[11]

1. It is the Opponent's contention that the Opponent's Mark and Trade Mark are 'in essence the same' both consisting of the letter 'P' having the essential features of a bold stocky form made up of 2 halves with a gap between the halves. The Opponent submits that there are only minor stylistic differences which are not essential features.
2. The Applicant argues that the Trade Mark and Opponent's Mark are not substantially identical. In support of this contention, the Applicant notes the Delegate's decision in Muscle Nation IP Pty Ltd v Worldwide Sports Nutrition Pty Ltd ('Muscle Nation')[12] where the following marks were found to be neither substantially identical nor deceptively similar:

1. The Applicant submits that the Trade Mark comprises two representations of the numeral one or two slanted letter I side by side, with the left side being longer in length and the right side being identical but half the size. In comparison, the Opponent's Mark is not slanted and is comprised of an isosceles trapezoid on the left and chevron on the right.
2. In my view, the Trade Mark is not substantially identical to the Opponent's Mark. When comparing the two marks side by side, noticeable differences emerge. The Opponent's Mark features more traditional shapes, such as an isosceles trapezoid and a chevron, whereas the Trade Mark consists of less regular shapes. Although I disagree with the Applicant's assertion that the shapes in the Trade Mark clearly represent either the numeral one or the letter 'I', the flat tops, points or arrows, and elongated left-hand shape in the Trade Mark are evident when the marks are juxtaposed.
3. Having found that the Opponent's Mark is not substantially identical to the Trade Mark, I turn to a consideration of whether the two marks are deceptively similar. Section 10 provides that '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'.
4. In Shell, Windeyer J enunciated the following approach for assessing whether two marks are deceptively similar:

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].[13]

1. There must be a real tangible danger of confusion occurring.[14] Consumers need not think that the marks are the same, but rather it is sufficient if there is a real risk that use of the Trade Mark will cause a significant number of ordinary persons to wonder or to entertain a reasonable doubt as to whether the Applicant's Goods come from the same source as the Opponent's Goods.[15]
2. The Opponent drew my attention to a number of cases involving device marks which it claims are analogous to the marks before me.[16] The Opponent contends that there are striking similarities between the two marks, common essential elements and only minor stylistic differences. The Applicant's submissions on deceptive similarity and substantial identity are the same. The Applicant focusses on the different shapes comprising the two marks, number of sides of each of those shapes and argues that the 'ambiguity to the shapes of each mark' means neither mark conveys a meaning to ordinary consumers which 'mitigates any potential confusion. According to the Applicant, the Trade Mark would not necessarily be construed as the letter 'P' and there are other constructions presumably a combination of the numeral '1 1' or letters 'I I'.
3. In my opinion, both trade marks give the impression of the letter 'P', which is the lasting image consumers will retain. It is unlikely that consumers will perceive the trade marks differently without a detailed examination, given the dominant presence of the letter 'P'. Additionally, both marks consist of two angular shapes forming the letter 'P'. Although there are minor differences, such as the flat top of the Applicant's shapes compared to the slanted top of the Opponent's shapes, these differences are subtle and unlikely to be remembered by consumers. Overall, the two marks share significant visual similarities and would both be recognized as the letter 'P'. Furthermore, while consumers exercise some care when purchasing clothing, these items are relatively inexpensive, and an imperfect recollection without careful consideration is likely to result in confusion or deception. I am convinced that there is a real and tangible risk of confusion due to the similarities and the likely imperfect recollection of the trade marks. Therefore, I find the Opponent's trade mark to be deceptively similar to each of the Applicant's trade marks.
4. The reg 4.15A ground of opposition is established with respect to the Applicant's class 25 goods. However, the Applicant may still be entitled to registration of the Trade Mark if it has established honest concurrent use of its mark under reg 4.15A(3)(a), other circumstances justifying registration of the Trade Mark under reg 4.15A(3)(b) and/or prior continuous use of its mark since before the priority date of any relevant prior mark covering similar goods or services under reg 4.15A(5). The Applicant argues that it is entitled to registration of the Trade Mark on the basis of honest concurrent use. The Opponent argues that the Applicant did not commence use of the Trade Mark until August 2022 and hence the Applicant cannot claim honest concurrent use.
5. I agree with the Opponent that the relevant date for determining honest concurrent use is the priority date of the Application. The Applicant has not demonstrated use before the Relevant Date and hence there has not been honest concurrent use of the Trade Mark.

Section 58

1. Section 58 provides that provides that a trade mark may be opposed on the grounds that the Applicant is not the owner of the Trade Mark.
2. To succeed in this ground of opposition, the Opponents must establish the following:
   • The Trade Mark is identical, or substantially identical, to an earlier trade mark;[17]
   • The earlier trade mark has been used in respect of good or services that are 'the same kind of thing' as the Applicant's Goods and Services;[18] and
   • Another person has an earlier claim of ownership based on use of the earlier trade mark before the Relevant Date.[19]
3. The Opponent has particularised this ground of opposition by reference to the Opponent's Mark. I have found at [38] that the Opponent's Mark is not substantially identical with the Trade Mark and hence the s 58 ground of opposition is unsuccessful.

1. In Apple Inc. v Registrar of Trade Marks Yates J stated that:

My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[20]

1. In circumstances where an opposition has been established in respect of some, but not all of an applicant's goods or services the Registrar may proceed to reject the application in its entirety, under the principles outlined above, but also has a discretion to offer an amendment to an applicant, allowing it to amend the application to remove goods and services for which a ground of opposition has been established. I note that in in Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited, Murphy J stated:

I consider the Court has power under s 65(7) of the Act to cut down the breadth of the application but I do not take that course when no party argued that the Court should do so, or identified a principled basis upon which the Court could approach such a task.[21]

1. In the present case, noting that the reg 4.15A ground was clearly confined to the Applicant's class 25 goods I consider it reasonable to offer an amendment to the Applicant's Goods and Services to allow the Trade Mark to proceed to registration for the subset of Applicant's Goods and Services for which the reg 4.15A ground was not established, namely the Applicant's Goods and Services other than the Class 25 Goods.
2. Accordingly on 21 May 2025, I informed the Applicant that it was my intention to refuse to register the Trade Mark unless class 25 was deleted from the Application. The amendment has now been made. On that basis I find that the opposition has not been established for the revised set of goods and services for which the Trade Mark is sought to be registered.

1. The Opponent has succeeded in establishing a ground of opposition under reg 4.15A with respect to the Applicant's class 25 goods. The Opponent has not succeeded (nor pursued) its opposition to the Trade Mark in the other classes of goods and services.
2. The Trade Mark may now proceed to registration in classes 5, 9, 29, 30, 32 and 41 one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the application should otherwise be in accordance with the Court's order or direction.
3. Both parties sought an award of costs. As both parties have had some measure of success, I decline to award costs.

[1] Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) ('Act') or the Trade Marks Regulations 1995 (Cth) ('Regulations'), respectively.

[2] Convention priority claimed based on US application numbers 97539536 and 97699915. The goods and services of the US applications are identical except for the class 30 specification which is 'protein bars'.

[3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

[4] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot

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

[6] Registrar of Trade Marks v Woolworths Ltd (1999) FCR 365; [1999] FCA 1020, [37] ('Woolworths').

[7] (online at 19 May 2025) 'apparel'(def 1).

[8] (online at 19 May 2025) 'raiment' (def 1).

[9] [1963] HCA 66, [12] (Windeyer J).

[10] [2010] ATMO 96 (Hearing Officer D. O'Brien).

[12] [2023] ATMO 10 (Hearing Officer T. Brown).

[13] [1963] HCA 66, [13] (Windeyer J).

[14] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J); Woolworths (n 6) [50] (French J).

[15] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, [102] (Dodds-Streeton J).

[16] See Yadea Technology Group Co Ltd v Kawasaki Motors Ltd [2024] ATMO 242 (Hearing Officer B. Goldsworthy), New South Wales Lotteries Corporation Golden Casket Lottery Corporation Pty Ltd, Limited, Tattersall's Sweeps Pty Ltd, Tatts Lotteries SA Pty Ltd and Tatts NT Lotteries Pty Ltd [2024] ATMO 70 (Hearing Officer N. Worth) and Aaron Shearer v Revl IP Pty Ltd [2023] ATMO 21 (Hearing Officer N. Butson).

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

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

[19] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [50] (Greenwood, Jagot and Beach JJ).

[20] [2014] FCA 1304, [232].

[21] [2014] FCA 373, [231].