1. The SGP nominates grounds of opposition under ss 42(b), 44[1] and 60 of the Act.
2. The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[2] The standard of proof is the ordinary civil standard on the balance of probabilities.[3]
3. The date at which the rights of the parties are to be determined is 17 October 2023 ('Relevant Date'), being both the filing date and priority date of the Trade Mark.

1. The Opponent is a producer of non-alcoholic beverages including ready to drink herbal tea products, iced teas, immunity shots, tea bags, and loose leaf tea, and is headquartered in Hawaii, United States of America ('USA'). Since the Opponent's launch in 2016 its distribution network has expanded to include major supermarkets and e-commerce retailers across the USA. The Opponent's beverages are distinguished by their use of māmaki tea leaves, which are native to the Hawaiian Islands.
2. The Opponent is the owner of the following PITM in Australia ('Opponent's PITM'):

Class 30: Beverages made of tea; beverages with a tea base; coffee and tea; fruit teas; ginger tea; green tea; herb tea.

1. The Opponent also uses the following trade marks:

1. The above trade marks and the Opponent's PITM are referred to collectively in this decision as the 'Opponent's Marks'. Ohman contains images of canned herbal teas, bottled iced teas and tea bags which feature one or more of the Opponent's Marks.
2. Exhibit E to Ohman contains extracts from the 'About Us' and 'FAQ' pages of the Opponent's website. It is explained on the 'FAQ' page that SHAKA is the hand gesture depicted in the above logo and is 'synonymous globally with surf culture and is the unofficial symbol of Hawai'i'.
3. It is declared in Ohman that the Opponent's products are not sold directly to Australia, however Australian tourists may have encountered the Opponent's products at airports and hotels in Hawaii. Ohman contains data for the period between 2020 and 2023 on the number of Australian tourists entering or departing Hawaii, and the total revenue generated from sales of products bearing the Opponent's Marks in Hawaiian airports, hotels and restaurants.
4. The Opponent's advertising activities include the Opponent's website, social media, point of sale displays and product neck hangers. Examples of promotions for the Opponent's products, historical screenshots of the Opponent's website, and screenshots of the Opponent's social media pages are contained in Ohman. A small percentage of the followers of the Opponent's social media accounts are from Australia.

1. The Applicant is a producer of cacao blends incorporating various spices and is based in Bright, Victoria. The Applicant's products are sold through the Applicant's website as well as via retailers, cafes and other businesses around Victoria. Meissner contains a photograph showing the back label of one of the Applicant's products which contains product and brand information.
2. The Applicant licenses use of the Trade Mark to his company, Shakao Pty Ltd, which was registered in August 2023.
3. The Applicant selected the Trade Mark because it sounded 'unique and distinctive'[4] and rhymed with 'cacao' which is the primary ingredient of the Applicant's products. It is declared in Meissner that the Applicant conducted internet research in August 2023 for the term 'shakao' but did not identify any other products using this name.

(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.

1. In respect of the s 44 ground of opposition, the Opponent relies on the Opponent's PITM. To establish this ground of opposition, the Opponent's PITM must satisfy the following requirements:

(i) be in the name of a person other than the Applicant;

(ii) have a priority date which is earlier than the Relevant Date;

(iii) be substantially identical with, or deceptively similar to, the Trade Mark; and

(iv) be in respect of goods and/or services which are either similar and/or closely related to the Applicant's Goods.

1. The Opponent's PITM is held in the name of a person other than the Applicant and the priority date of the Opponent's PITM is earlier than the Relevant Date. Requirements (i) and (ii) are satisfied. The next question is whether the Opponent's Goods are similar to the Applicant's Goods.

1. Section 14(1) of the Act defines goods as being similar to other goods if they are the same, or of the same description, as the other goods.
2. The factors to be considered in assessing whether goods are similar include the nature, characteristics, origin and purpose of the goods; whether the goods are usually produced by one and the same manufacturer or distributed by the same wholesale houses; whether the goods are sold in the same shops, over the same counter, during the same season and to the same class or classes of customer; and whether those engaged in the manufacture and distribution of the goods are regarded as belonging to the same trade.[5]
3. As explained by Burchett J in Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd:

[T]he expression "goods of the same description" is generally to be understood in such a sense that, if two different items are held not to fall within the expression, their sale under the same mark by different companies is not likely to lead to confusion or deception.[6]

1. The Applicant's Goods are, broadly speaking, tea, cocoa or chocolate-based beverages, cocoa, tea and chocolate. The Opponent's Goods are tea-based beverages, tea and coffee.
2. I consider the respective tea, coffee and other beverages or preparations for beverages to be the same or goods of the same description. Although they may consist of different ingredients and may be consumed for different purposes, they share a similar nature and are likely to be sold by way of the same trade channels, by the same or competing traders and to the same or similar classes of consumers. I consider cocoa and chocolate-based beverages to be common substitutes for teas and coffees. A consumer would likely conclude that the respective beverage goods, if sold under the same or similar brands, originate from the same trade source.
3. Cacao is defined in the Macquarie Dictionary as 'a small evergreen tree, Theobroma cacao, of the family Malvaceae, native to tropical America, cultivated for its seeds, the source of cocoa, chocolate, etc.' and 'the fruit and seeds of this tree'.[7] Cocoa is similarly defined as 'the roasted, husked, and ground seeds of the cacao, Theobroma cacao, from which much of the fat has been removed' and 'a beverage made from cocoa powder'.[8] On the basis of these definitions I consider cacao products, cocoa, cocoa based products, cocoa powder and cacao paste (cacao liquor) to also fall within the category of beverages or preparations for beverages that are similar to the Opponent's Goods. The same can be said of chocolate flavourings. Notwithstanding that these goods are not particularised in the specification for the Applicant's Goods as being specifically for use in beverages, the notional use of these products would encompass use as a primary ingredient in beverages such as hot chocolates and tea or coffee blends, placing them within the scope of the Opponent's Goods. Traders would sell these goods as one product having many potential uses; they would not distinguish, for example, cocoa powder for use in baking from cocoa powder for use in hot chocolate.
4. Likewise, although 'chocolates' would ordinarily be understood as being readily consumable chocolates in the form of, for example, chocolate bars or boxes of chocolates, several producers of readily consumable chocolates (Nestlé and Cadbury being notable examples) also produce beverage products under the same trade marks, such as iced teas, drinking chocolates, or flavoured drink powders. Further, because such goods are available for purchase from online supermarkets and e-commerce retailers and searches for a product on the websites of these retailers, by for example brand name, are likely to yield results for both chocolates and beverages, there is diminished relevance to the segregated placement of these goods in a physical store. In such circumstances, I consider there is a reasonable basis to conclude that consumers may be caused to wonder whether chocolates provided under the Trade Mark may emanate from the same trade source as the Opponent's Goods.
5. I am satisfied that the Applicant's Goods and the Opponent's Goods are similar. The next step is for me to consider whether the Trade Mark is substantially identical with or deceptively similar to the Opponent's PITM.

1. The relevant test for determining whether trade marks are substantially identical is set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd ('Shell'):

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 respective trade marks are reproduced below:

1. On a side by side comparison, although both trade marks contain the term SHAKA there are notable differences between them. Notwithstanding that the term 'tea' in the Opponent's PITM is descriptive of the Opponent's Goods, I do not think that it would be discounted in a close comparison of the marks. The addition of the letter 'O' in the Trade Mark further differentiates the marks. I am not satisfied that a total impression of resemblance emerges from a comparison. The marks are not substantially identical.

1. Section 10 of the Act defines "deceptively similar" as follows:

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. In Shell, Windeyer J made the following comments with respect to deceptive similarity:

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].[10]

1. The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[11] stated the relevant principles, which were conveniently summarised in The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd[12] as follows:

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

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

(iii) the marks should not be compared side by side:[15]

(iv) 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]

(v) 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]

(vi) 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]

(vii) the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods or services covered by the registration), with the impression that the notional buyer would have of the alleged infringer's mark (as actually used);[19]

(viii) "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]

(ix) 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]

(x) 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]

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

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

1. There is a clear degree of resemblance between the Opponent's PITM and the Trade Mark. The first five letters of the Trade Mark, SHAKA, comprise the first of the two words comprising the Opponent's PITM. The first syllables of each mark are identical. It is well established that the first syllable of a word is the most important for the purpose of distinction.[25] The second syllable of SHAKAO is less likely to be recalled and is more likely to be mispronounced than the shared first syllable SHAK.
2. While the additional word 'tea' in the Opponent's PITM is not to be discounted entirely, the strength of the impression created by it is reduced for the purpose of the comparison, because it bears a direct relationship to the nature of the Opponent's Goods.
3. There is difficulty in determining the degree of aural similarity between the respective trade marks. The respective marks differ in the number of syllables and last letters or words. The difference in the vowel ending of the Trade Mark, while small, may affect how the respective marks are pronounced. I note in this regard that the proper pronunciation of the Trade Mark is outlined on the packaging for the Applicant's products, a photograph of which is contained in Annexure SM-1 to Meissner:

1. It is clear from Meissner that the Trade Mark is intended to be a play on the word 'cacao'. If pronounced as intended, the Trade Mark is aurally distinguishable from the Opponent's PITM because it rhymes with 'cacao'. However, a consumer presented with the Trade Mark who is unfamiliar with its intended pronunciation would likely pronounce it in the same manner as the Opponent's PITM, with the addition of the long vowel sound 'O' at the end, or as 'SHAH-KAY-OH' where the -KAO suffix of the Trade Mark is pronounced in the same manner as the acronym 'K.O.'. Accordingly, it is possible that there is a degree of aural similarity between the marks, particularly having regard to the emphasis that is placed on the first syllable given the tendency for speakers of English 'to slur the termination of words'.[26]
2. As regards conceptual similarity, in my view, SHAKA is not so subsumed in the Trade Mark that the respective trade marks carry different connotations. The shared prefix SHAKA is inherently distinctive with respect to the relevant goods. There is no evidence before me that this prefix is in common use with respect to goods in class 30. The average Australian consumer, although possibly not familiar with the meaning of the word SHAKA, would likely recognise it as a foreign word. In my view, the average Australian consumer perceiving SHAKAO would understand it to be an invented word. Two words that are not in use in the English language are more likely to be confused with one another. As was stated by Farwell J in William Bailey (Birmingham) Ltd's Application:

No doubt in the case of a fancy or invented word, a word which is not in use in the English language, the possibility of confusion is very much greater. A fancy word is more easily carried in mind and is more easily carried in mind in connection with some particular goods and it may well be that in the case of a fancy word there is much more chance of confusion...[27]

1. As the present comparison is between two words whose meaning is not likely to be readily understood by Australian consumers, there is increased potential for confusion between the respective trade marks. The additional letter 'O' in the Trade Mark may suggest to consumers that the Applicant's Goods are a range or variation of the Opponent's Goods, further heightening the risk of confusion.
2. In assessing the risk of confusion or deception, it is appropriate to consider the surrounding circumstances, including the prospective purchaser[28] and the normal and fair use of the respective goods and/or services. The goods for which the respective trade marks are registered are not in the nature of high value products purchased by sophisticated consumers and subject to careful consideration prior to purchase. Rather, they would often be purchased spontaneously, by all classes of consumers.
3. In my view, accounting for the doctrine of imperfect recollection, the likelihood of deception or confusion is high. Allowing for the possibility that the Trade Mark would be misheard, mispronounced or misremembered, I consider there is a real tangible danger that a consumer who is aware of the Opponent's PITM and subsequently encounters the Trade Mark would be caused to wonder whether the respective trade marks share the same trade source.
4. I am satisfied that the Trade Mark is deceptively similar to the Opponent's PITM. The Opponent has established a ground of opposition under s 44 of the Act. The Applicant has not filed evidence of use or other circumstances that would justify registration of the Trade Mark under ss 44(3) or 44(4).
5. As I have found the ground of opposition under s 44 is established, it is not necessary to consider the remaining grounds of opposition.

(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. I am satisfied that there is a ground of opposition under s 44 of the Act. Accordingly, I refuse registration of trade mark application number 2393289.
2. If the Registrar is served with a notice of appeal within one month from the date of this decision, I direct that the disposition of the Application be in accordance with the court's direction or order.

1. The parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle. I award costs against the Applicant in accordance with s 221 of the Act, in the amounts set out in Schedule 8 of the Regulations.

[1] For this ground of opposition, the Opponent relies on a protected international trade mark ('PITM'). Accordingly, the technical ground of opposition is under reg 4.15A of the Trade Marks Regulations 1995 (Cth) ('Regulations') rather than s 44. However, since the terms of s 44 and reg 4.15A are substantively identical for all relevant purposes, I have retained the reference to s 44 in this decision. References to s 44 in this decision should be read as reg 4.15A.

[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 Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot

[5] Beck, Koller & Company's Application (1947) 64 RPC 76, 78 (Assistant Comptroller Chisolm).

[6] [1993] FCA 265, [27].

[7] Macquarie Dictionary (online at 5 September 2025) 'Cacao' (def 1 and 2).

[8] Macquarie Dictionary (online at 5 September 2025) 'Cocoa' (def 1 and 2).

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

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

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

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

[14] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd [1952] HCA 15; (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ); Re Application by Pianotist Co Ltd (1906) 23 RPC 774, 777 (Parker J).

[15] 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').

[18] Swancom (n 13), [70], [77]; C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539, [43] (Ryan, Branson and Lehane JJ).

[19] Shell (n 9), [13]; Wingate Marketing Pty Ltd v Levi Strauss & Co (1994) 49 FCR 89, 128 (Sheppard, Wilcox and Gummow JJ); MID Sydney Pty Ltd v Australian Tourism Co Ltd [1998] FCAFC 1616; (1998) 90 FCR 236, 245 (Burchett, Sackville and Lehane JJ).

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

[22] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; (1999) 93 FCR 365, 382 (French, Branson and Tamberlin JJ) ('Woolworths'), restating principles from Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd 91 CLR 592, 594-595 (Dixon CJ, McTiernan, Webb, Fallagar and Taylor JJ) ('Southern Cross').

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

[24] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc [2020] FCAFC 235, [67] (Nicholas, Yates and Burley JJ), citing Australian Woollen Mills (n 15), 657.

[25] London Lubricants (1920) Ltd's Application (1925) 42 RPC 264, 279 (Sargant LJ) ('London Lubricants'); ALDI Stores Ltd Partnership v Frito‑Lay Trading Co GmbH [2001] FCA 1874, [32], [160] (Hill, Lindgren and Conti JJ).

[27] (1935) 52 RPC 136, [153].