Applicant: KINGS PATENT & TRADE MARKS ATTORNEYS PTY LTD

2025 ATMO 189

Trade Marks Act 1995 (Cth) - opposition under section 52 - grounds of opposition under ss 43, 44, 58A and 60 - deceptively similar trade mark in respect of similar services - applicant filed no evidence in opposition proceedings - delegate not satisfied that ss 44(3) and/or 44(4) applicable - s 44 ground of opposition established - trade mark refused.

1. This proceeding concerns an application for registration of a trade mark filed by Kalliso Holding Pty Ltd ('Applicant') on 24 May 2023 under the Trade Marks Act 1995 (Cth).[1] I extract details of the trade mark below:

Specification: Class 41: Advisory services relating to entertainment; Arranging and conducting of in-person educational forums; Arranging and conducting of seminars; Dissemination of educational material; Consultancy services relating to education; Education academy services; Education services; Advisory services relating to education; Educational advisory services; Health education; Providing facilities for educational purposes; Providing information, including online, about entertainment activities; Providing information, including online, about education activities; Provision of educational courses; Provision of educational information; Publication of educational materials; Arranging and conducting of workshops (training); Mentoring (education and training); Training; All of the foregoing relating to acting and/or management of emotions ('Applicant's Services')

Endorsement: Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.

1. The Trade Mark was examined under s 31 and acceptance was advertised on 23 November 2023.
2. On 22 January 2024, PEM STUDIOS MELBOURNE PTY LTD ('Opponent') filed its Notice of Intention to Oppose registration of the Trade Mark. On 22 February 2024, the Opponent filed its Statement of Grounds and Particulars ('SGP'). On 26 March 2024, the Applicant filed its Notice of Intention to Defend.
3. The parties filed no evidence in these proceedings.
4. The Applicant requested to be heard by written submissions and filed these on 2 July 2025 ('Applicant's Written Submissions'). The Opponent did not request to be heard. I am to decide this matter as a delegate of the Registrar of Trade Marks ('Registrar').

1. The Opponent has the onus of establishing one of the nominated grounds of opposition.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3]
2. The SGP pursued grounds of opposition under ss 43, 44, 58A and 60.

Section 44

1. Section 44(2) provides:

(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. By its SGP, the Opponent relies on registered trade mark numbers 1009658 and 2256903 for its s 44 ground of opposition. I note that the status of trade mark number 1009658 is 'ceased' and therefore this trade mark is not relevant to the s 44 ground. In respect of trade mark number 2256903, details of this trade mark appear below:

Specification: Class 41: Arranging and conducting of seminars; Conducting of cultural events; Cultural activities; Cultural information; Demonstration (for instructional purposes); Academies (education); Advisory services relating to education; Conducting of educational courses; Conducting of educational events; Dissemination of educational material; Educational and cultural advisory services relating to art; Educational seminars; Educational services; Entertainer services; Entertainment; Information services relating to education; Information services relating to entertainment; Instruction services; Presentation of live performances; Providing information in the field of entertainment; Providing information, including online, about cultural activities; Providing information, including online, about education activities; Providing information, including online, about entertainment activities; Teaching; Adult training; Advisory services relating to training; Providing information, including online, about training activities; Provision of training; Training; Vocational education; All of the aforementioned services relating to acting, theatre, media, professional development and wellbeing, and the arts; None of the aforementioned services relating to education and training in respect of machinery, or professional development in medical fields ('Opponent's Services')

1. The Trade Mark is clearly identical with 2256903 and the priority date of 2256903 is before that of the Trade Mark. The Applicant's Services are clearly of the same description as at least some of the Opponent's Services, noting that they both relate to training in the field of acting. 2256903 is clearly substantially identical and in relation to services of the same description. The Applicant does not appear to resist any of these findings. Therefore, the ground of opposition under s 44 will be established, subject to any application of ss 44(3) and/or 44(4).
2. I note that at examination the Trade Mark was accepted under s 44(4) and/or reg 4.15A(5). Relevantly, s 44(4) broadly provides that the Registrar may not reject the application if the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent's marks.
3. In respect of 2256903, referring to s 44(4) and its requirements, the Applicant submits the following:

16. The Trade Mark was allowed based on such evidence, which included a declaration of Mark Tarring of the Applicant which outlines that the Applicant and the Applicant's predecessor in title used the Trade Mark in Australia in relation to the claimed services since 2011.

17. Furthermore, the director of the Applicant and the Applicant's predecessor in title's is Stephan Perdekamp. When Stephan Perdekamp devised his emotional method associated with the services in 2011, he referred to it as the "Perdekamp Emotional Method" or, the abbreviated form, "PEM".

18. To succeed under this ground of opposition the Opponent must establish that the Trade Mark is substantially identical with, 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 goods or closely related services, and that section 44(4) does not apply.

19. The Opponent has not provided any reasoning, let alone evidence, regarding why the Trade Mark should not have been allowed under section 44 in light of Trade mark 2256903, or why the Trade Mark should not have been allowed in light of Trade Mark 2256903.

20. As outlined above, notwithstanding the Opponent's lack of reasoning or evidence, no such reasons exist, and the Trade Mark was correctly allowed in light of the cited marks.

21. Accordingly, the section 44 ground for opposition cannot be satisfied.[4]

1. The comments of the delegate in Challenge Cancer Support Network Inc v Leukaemia Foundation of Queensland are apt here:

...I note that the provisions of s 44(4) were applied in the examination stages...I think that, if the application of that provision is challenged in the opposition forum, the alleged triggering facts should be required to be clearly demonstrated, and this requires a correspondently high evidentiary threshold. If the Applicant, once opposed, intends to rely on this provision, it needs to establish the date of first use positively, by way of facts...[5]

1. The onus in terms of the applicability of s 44(4) is on the Applicant in these circumstances. It is not for the Opponent to establish, as asserted by the Applicant, 'that s 44(4) does not apply' unless the Applicant has done the work during the proceedings to establish its applicability as a preliminary matter. The Applicant has not provided any material in this proceeding on which they seek to rely for the purposes of establishing that the Applicant is entitled to registration of the Trade Mark under s 44(4). I note that the Applicant was informed by this Office on 10 July 2024 by letter that if it wished to rely on any evidence filed in the course of examination, such evidence was required to be filed as part of its evidence in answer. For whatever reason, the Applicant did not do this.
2. I give the uncorroborated factual assertions made in the Applicant's Written Submissions no weight and confirm that I have not considered the material filed by the Applicant during the examination of the Trade Mark. I am therefore not satisfied that s 44(4) is applicable in these circumstances. Accordingly, the ground of opposition under s 44 has been established.

1. Section 55 relevantly provides:

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

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

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

Note: For limitations see section 6.

1. The Opponent has established a ground of opposition under s 44. Accordingly, I refuse registration of trade mark 2359106.
2. The parties sought their costs. Costs ordinarily follow the event and the Opponent has been successful. I award costs against the Applicant under s 221 in accordance with Schedule 8 of the Regulations.

[1] Unless specified otherwise, a reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth).

[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).

[5] [2002] ATMO 29 (Delegate T. Williams).