Re: Opposition by Syntegon Technology GmbH to registration of trade mark application 2342776 (9, 28, 35, 39, 40 42) - SYNNEX (Figurative) - in the name of Synnex Technology International Corporation

2025 ATMO 257

Trade Marks Act 1995 (Cth) - section 52 opposition: s 44 considered and not established - trade mark to proceed to registration

1. This decision concerns an opposition brought by Syntegon Technology GmbH ('Opponent') to the registration of the trade mark which is the subject of the application detailed below in the name of Synnex Technology International Corporation ('Applicant'):

See Annexure A ('Applicant's Goods and Services')

1. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) ('Act') or the Trade Marks Regulations 1995 (Cth) ('Regulations'), respectively.
2. Following the advertisement of the application's acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose the possible registration followed by a Statement of Grounds and Particulars ('SGP') on 5 March 2024. The SGP raised grounds of opposition under ss 44[2], 58A, and 60. The Applicant filed a Notice of Intention to Defend on 3 April 2024.

1. The parties filed the following evidence in this matter:

David Müller-Wiesner, Shareholder at GLMR PTY LTD, the Opponent's representative ('Müller-Wiesner declaration')

Natalie Murray-Jones, solicitor at brandU Legal, the Applicant's representative ('Murray-Jones declaration')

1. Once the time allowed for filing evidence had ended, the parties were given an opportunity to request an oral hearing or a hearing by written submissions. On 24 December 2024 the Opponent requested a hearing by oral submissions and paid the appropriate fee. The matter was set down for a hearing on 12 September 2025. In line with usual practice, a letter was sent to the parties on 11 August 2025 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing. The Opponent filed written submissions on 28 August 2025 ('Opponent's Submissions'). The Applicant filed written submissions on 5 September 2025 ('Applicant's Submissions').
2. I am a delegate of the Registrar of Trade Marks ('Registrar') and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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.

In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.

1. The Opponent is the owner of the trade mark listed below ('Opponent's Trade Mark').

1. The Müller-Wiesner declaration does not provide any information about the Opponent, rather it confirms that the Opponent is the owner of the Opponent's Trade Mark. It annexes the results of a Freedom of Information request for the Examination Report into the Trade Mark application confirming that the Opponent's Trade Mark was not considered by the examiner. Finally, it attaches screenshots of the Opponent's and the Applicant's respective websites from which I can confirm that the Opponent is a company working in pharmaceutical packaging and processing and offers a product known as Synexio that is cloud-based software for the collection, evaluation and visualisation of machine and production data.

1. The Murray-Jones declaration does not provide any information about the Applicant, rather it states that the Applicant holds two other registrations for marks that are substantially identical to the Trade Mark (No. 626181 registered on 30 March 1994 for goods in class 9 and No. 704213 registered on 11 March 1996 registered for services in class 35). It also provides evidence of numerous other marks on the Register containing the prefix SYN- or SIN- that co-exist with the Trade Mark, the Opponent's Trade Mark and the Applicant's prior registered marks.

Grounds of Opposition, Onus and Standard of Proof

1. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 44, 58A and 60, however it does not press the ground of opposition under s 60. In its submissions the Applicant notes that the Trade Mark did not proceed to acceptance based on the application of s 44(4) (a pre-requisite for the operation of s 58A) nor does it make any submissions that s 44(4) is applicable in the event that I find that s 44(1) and/or (2) is/are established. As such I do not need to consider the ground of opposition under s 58A.
2. Therefore, to successfully oppose the application the Opponent needs to establish the s 44 ground of opposition. The onus of proof in an opposition rests upon the Opponent.[3] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[4] The date at which the rights of the parties are to be determined is the relevant date, which is also the priority date for the purposes of ss 44.

Section 44

1. The relevant provisions of ss 44 and 10 are reproduced below:

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 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.

(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.

Section 10 - Definition of deceptively similar

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. To successfully oppose the application pursuant to s 44 the Opponent must establish the requirements of s 44(1) or (2), i.e. that at least one of the trade marks upon which it relies, being a trade mark registered or sought to be registered[5] by a person other than the Applicant:
   • has a priority date which is earlier than that of the Trade Mark ('the first requirement');
   • is substantially identical with or deceptively similar to the Trade Mark ('the second requirement'); and
   • is in respect of similar goods/services, and/or services/goods which are closely related to, the Applicant's Goods and Services ('the third requirement').
2. In the event that each of these requirements is satisfied by the Opponent it may still be possible for me to allow the application to proceed to registration if I am satisfied, pursuant to ss 44(3) and 44(4), that there has been honest concurrent use of the Trade Mark, there are other circumstances which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent's relied upon mark.
3. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent's Trade Mark which has a priority date that is earlier than the priority date of the Trade Mark. I am also satisfied that there is a subset of the Applicant's Goods and Services that is similar to a subset of the Opponent's Goods and Services (specifically some of the IT goods in class 9 and the business analysis services in class 35 though given the finding made relating to the second requirement it is unnecessary to consider this issue in greater detail). The first and third requirements are satisfied.

Substantially identical and/or deceptively similar

1. I will now consider whether the Trade Mark is substantially identical to the Opponent's Trade Mark. When considering 'substantial identity' in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd ('Shell') Windeyer J said:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[6]

1. The Trade Mark and the Opponent's Trade Mark are set out below:

SYNEXIO

1. On a side-by-side comparison there are clear differences which mean that a total impression of dissimilarity emerges from a comparison of the Opponent's Trade Mark and the Trade Mark. The marks are different words and the Trade Mark contains the additional device element with the letter 'M' above the letter 'W'. I move then to consider whether the Trade Mark and Opponent's Trade Mark are deceptively similar.
2. 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].[7]

1. The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[8] conveniently stated the relevant principles, which were summarised in The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd[9] as follows:

(a) the resemblance between the two marks must be the cause of the likely deception or confusion;[10]

(b) in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[11]

(c) the marks should not be compared side by side;[12]

(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;[13]

(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';[14]

(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;[15]

(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;[16]

(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; [17]

(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;[18]

(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";[19]

(k) evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[20] and

(l) any intention to deceive or cause confusion may be a relevant consideration but is not required.[21]

1. Furthermore the Court, in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, noted the following[22]:

In considering the likelihood of confusion or deception, "the court is not looking to the totality of the conduct of the defendant in the same way as in a passing off suit"[23]. In addition to the degree of similarity between the marks, the assessment takes account of the effect of that similarity considered in relation to the alleged infringer's actual use of the mark[24], as well as the circumstances of the goods, the character of the likely customers, and the market covered by the monopoly attached to the registered trade mark[25]. Consideration of the context of those surrounding circumstances does not "open the door" for examination of the actual use of the registered mark, or, as will be explained, any consideration of the reputation associated with the mark.[26]

1. As stated above, for the purposes of considering deceptive similarity, the reputation of the Opponent's Trade Mark is not a relevant factor.[27] Distinctiveness is a factor that can legitimately be taken into account when considering deceptive similarity.[28]
2. In the present case, while the marks consist of different words, the words are undeniably similar, in that they both contain the SYN elements and they both contain the EX elements (indeed it would be arguable that both marks contain the SYNNEX/SYNEX element). However, the Trade Mark contains the prominent device element with the letter 'M' above the letter 'W' and a modest stylisation that together creates a degree of visual difference between the marks. Aurally, while both marks share the first two syllables, the Opponent's Trade Mark has the additional 'io' element (adding an additional two syllables) that is unlikely to be slurred and creates an aural difference that would noticeably elongate the mark (four syllables compared to two) when spoken aloud. Neither trade mark appears on its face to have an ordinary meaning, such that I cannot find that the marks are conceptually dissimilar (or obviously conceptually similar). In considering the goods and services for which the Opponent in their submissions has identified as similar, I consider that these are goods that are generally purchased visually, with the mark being displayed on goods or marketing material, rather than being ordered aurally. Also, the similar class 9 and class 28 goods are generally quite expensive consumer or business purchases that are likely to be chosen with some care while the class 35 goods are likely to be chosen by professionals, both of whom are likely to take greater care to avoid confusion and be more attuned to relatively smaller differences in words than, for example, an ordinary consumer shopping for a low-value item,.
3. While noting the significant similarities between each of the marks, the differences between the respective marks are such that in the context of the similar goods and services for which the Trade Mark and the Opponent's Trade Mark are sought to be registered and considering the circumstances surrounding the purchase of those goods and services, I am not satisfied that, even given imperfect recollection, there is a real tangible danger of deception or confusion.
4. I find that the Opponent has failed to establish the ground of opposition under s 44.

1. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Trade mark application number 2342776 may proceed to registration not less than 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 either the appeal is withdrawn or discontinued. Otherwise the disposition of the application should be in accordance with the Court's order or direction.
2. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs in respect of trade mark number 2342776 against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

Class 9: Electronic interactive whiteboards; Electronic notice boards; Photocopiers; Photocopying machine components; Monitors [computer hardware]; Computer keyboards; Printers for use with computers; Disk drives (for computers); Computer memory devices; Mouse [computer peripheral]; Hard disks; Data storage devices; Data processing equipment; Data retrieving devices; Random access memory cards; Computers; CD drives for computers; Computer software; Disc drivers; Flash memory cards; Colour printers for use with computers; Apparatus for network communication; Communication devices for linking computer networks; Hard disk drives; Computer hardware; Toner cartridges, unfilled, for printers and photocopiers; Network cards; Floating-point arithmetic chips; Computer motherboards; Graphic cards; Memory cards [computer hardware]; Interfaces for computers; Magnetic data media; Computer diskettes; Magnetic diskettes; Optical discs; Optical data media; Card reader; Bar code readers; Scanners (data processing equipment); Electronic scanners; Tablet computers; Personal digital assistants; Optical character readers; Computer software for application and database integration; CD burners; Portable flash memory devices; USB Flash Drives; Calculating machines; Photographic equipment; Combination video players and recorders; Televisions; Headsets; Speakers (audio equipment); Portable multimedia players; Batteries; Power packs [batteries]; Materials for electricity mains [wires, cables]; Telegraph wires; Electric charging cables; Data cables; Compact discs [audio-video]; Telephone apparatus; Facsimile machines; Cellular phones; Electrical communication machines and instruments; telecommunication equipments; Display apparatus (electrical or electronic); Display monitors; Computer network adapters; Set-top boxes; Network routers; Chips [integrated circuits]; Motherboards; Transformers [electricity]; Internal cooling fans for computers; Electrical power supply apparatus other than generators; Battery chargers; Electrical transducers; Electronic locks; Theft prevention installations, electric; Electronic scales; Electrical network analyzers; Material testing instruments and machines; Sensors (measurement apparatus), other than for medical use; Electronic sensors; Cabinets adapted to hold electronic equipments; Integrated circuit memory cards; Time recording apparatus; Wearable activity trackers; Wearable digital electronic communication devices

Class 28: Toys; Apparatus for achieving physical fitness [for non-medical use]; Sporting apparatus; Physical exercise apparatus, other than for medical purposes; Stand-alone video game machines; Arcade video game machines with multi-terminals; Video game machines; Apparatus for games

Class 35: Advertising; Distribution of samples; Promotion of goods and services for others; Online advertising on a computer network; Demonstration of goods; Sales promotion for others; Presentation of goods on communication media, for retail purposes; Marketing; Internet marketing; Promotion of goods and services through sponsorship of entertainment events; Targeted marketing; Marketing in the framework of software publishing; Lead generation services; Influencer marketing; Promotion of goods through influencers; Import-export agency services; Quotation, tendering and distribution of products of domestic and foreign manufacturers; Procurement services for others [purchasing goods and services for other businesses]; Outsourcing services [business assistance]; Providing information in the field of marketing; Price comparison services; Price analysis services; Systemization of information into computer databases; Computerized file management; Computerised database management; Updating and maintenance of data in computer databases; Updating and maintenance of information in registries; Providing business information; Commercial administration of the licensing of the goods and services of others; Commercial information agency services; Marketing research and analysis; Providing commercial and business contact information; Commercial intermediation services; Negotiation and conclusion of commercial transactions for third parties; Administrative assistance in responding to calls for tenders; Administrative processing of purchase orders; Public relations; Online auctioneering; Marketing research; Market intelligence services; Provision of an online marketplace for buyers and sellers of goods and services; Office machines and equipment rental; Rental of office equipment in co-working facilities; Organization of exhibitions for commercial or advertising purposes; Online retail shop services; Providing commercial information and advice for consumers in the choice of products and services; Retail services for electronic materials; Wholesale services for electronic materials; Retail services for telecommunication devices; Wholesale services for telecommunication devices; Retail services for computer software; Wholesale services for computer software; Retail services for computer hardware; Wholesale services for computer hardware; Retail services for computer peripheral; Wholesale services for computer peripheral

Class 39: Collection of recyclable goods [transport]; Physical storage of electronically stored data or documents; Providing transportation information; Computerized tracking and tracing of packages in transit; Locating and tracking of people and cargo for transportation purposes; Transport brokerage; Freight forwarding; Rental vehicle reservation; Transport reservation; Home shopping delivery services; Cargo delivery services; Freighting; Transportation logistics; Courier services; Packaging and parceling of goods for transport; Packaging services; Packaging of products; Cargo handling; Cargo transportation; Storage of goods; Rental of warehouses; Warehousing; Warehousing information; Providing information relating to storage services

Class 40: Custom 3D printing for others; Duplication of compact discs under customer consignment and specifications; Assembly of computer components under customer consignment and specifications; Custom assembly of electronic products and parts according to the customer commissioned and instructed specifications; Custom assembly of consumer electronics and game apparatus according to the customer commissioned and instructed specifications; Custom assembly of electronic mechanics products according to the customer commissioned and instructed specifications; Custom assembly of notebook computers according to the customer commissioned and instructed specifications; Custom assembly of computer hardware according to the customer commissioned and instructed specifications; Custom assembly of internet devices according to the customer commissioned and instructed specifications; Custom assembly of communication appliances according to the customer commissioned and instructed specifications

Class 42: Computer graphics design services; Computer software design; Updating of computer software; Maintenance of computer software; Rental of computer software; Computer software consultancy; Computer system analysis; Computer system design; Installation of computer software; Duplication of computer programs; Rental of computer hardware; Computer rental; Providing temporary use of online non downloadable computer software; Technological analysis services in the field of data processing; Recovery of computer data; Conversion of data or documents from physical to electronic media; Digitization of documents [scanning]; Conversion of computer programs and data, other than physical conversion; Rental of web servers; Creating, designing and maintaining web sites; Creating and maintaining websites for others; Hosting computer sites [web sites]; Web site hosting services; Creating and maintaining web pages; Consultancy in the design and development of computer hardware; Computer technology consultancy; Monitoring of computer systems by remote access; Monitoring of computer systems to detect breakdowns; Online data storage service; Electronic data storage; Backup services for computer hard drive data; off-site data backup; Information technology [IT] consultancy; Providing information relating to computer technology and programming via a website; Cloud computing; Providing virtual computer systems through cloud computing; Software as a service [SaaS]; Information technology services (computer hardware, software and peripherals design and technical consultancy) provided on an outsourcing basis; Creating and designing website-based indexes of information for others [information technology services]; Platform as a service [PaaS]; Development of computer platforms; Telecommunication network security consultancy; Technological consulting services for digital transformation; Rental of data centre facilities; Computer programming services for data processing; Software engineering services for data processing; Providing on-line virtual product software, not downloadable; Telecommunications technology consultancy; Electronic engineering consultancy; Planning and design of automatic control system engineering; Planning and design of communication system and equipment engineering; Planning and design of central monitoring and control system; Conducting technical project studies; Research in the field of computer hardware; Research in the field of computer software; Quality control

Class 9: Application software; software used for running applications; recorded or downloadable data sets; downloadable and recorded media; recorded or downloadable media, software, blank digital or analogue recording and storage media; software downloaded on the Internet; embedded operating software; software for operating local area networks (LAN); software for operating virtual private networks (VPN); software for operating wide area networks (WAN); computer programs for searching remotely for content on computers and computer networks; software for databases; data processing apparatus; digital telecommunication apparatus; electronic apparatus for wireless reception, storage and transmission of data and messages; apparatus and instruments for sound, image or data recording, transmission, reproduction or processing; apparatus for monitoring and recording the performance of machines; data processing equipment; local-area network (LAN) hardware; virtual private network [VPN] hardware; wide-area network hardware; computer hardware components; downloadable computer software applications; communication software; programs for electronic equipment and installations for data processing; interface cards for computers; software; software applications; software packages; electronic publications (downloadable) provided online from databases or the Internet; virtual reality software; e-commerce software enabling users to carry out commercial transactions by electronic means via a global computer network; software for operating online stores; all of the aforementioned goods unrelated to the travel, transport and hospitality industries.

Class 35: Analysis and assessment of data in a central file; corporate data analysis services; preparation of commercial statistics; analysis, research and information services relating to business; advice and analysis with respect to company management; computerized inventory control services; computerized online ordering services; computerized inventory preparation services; computerized file management services; electronic inventory management services; establishing statistics; statistical report analysis and presentation services; providing business information directory services via global computer networks; optimization of working procedures for others; compilation and systematization of information into computer databases; compilation of statistics for business or commercial purposes; order taking, administrative organization of deliveries and invoice preparation, including within the framework of electronic commerce; providing information and advice with respect to electronic commerce (ordering merchandise); preparation of commercial transactions for third parties, also in the framework of electronic commerce; electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; e-commerce services, namely advertising in the form of data, texts, images, sounds, individually or in combination, via computer networks, for the sale of goods and services of all kinds; arranging third-party commercial transactions, via online stores; all of the aforementioned services unrelated to the travel, transport and hospitality industries.

Class 41: Education, instruction and training services with respect to manufacturing and production; know-how transfer (training); preparation and hosting of conferences, congresses, seminars, symposiums, lectures, lessons and training courses; instruction and training services; publication and editing of printing products; publishing and editing of books, newspapers, magazines and other information media, also via telecommunication networks; dissemination of educational material; preparation, conducting and organization of training workshops; all of the aforementioned services unrelated to the travel, transport and hospitality industries.

Class 42: Updating, design, installation, maintenance and rental of computer software; consultant services with respect to data security; consultant services with respect to software maintenance; consultant services in the field of cloud computing networks and applications; consultant services with respect to design, development and use of computer hardware and computer software; services provided by consultants relating to technical and scientific measurements; conducting of quality control tests; analysis of technical data; development, programming and implementation of software; temporary provision of Web software; temporary provision of web-based applications; industrial analysis services; computer programming services for data processing; programming of data reading, transmission and organization software; Software as a Service (SaaS); technical measuring services; technical support services with respect to software; consultancy in connection with technology; hosting of e-commerce platforms on the Internet; programming of software for e-commerce platforms; maintenance and consultancy services relating to software used in the field of e-commerce; user authentication services using technology for e-commerce transactions; consultant services with respect to website creation and design for e-commerce; consultant services in the field of security software; rental of Internet security programs; programming of Internet security programs; computer programming services for electronic data security; design and development of Internet security programs; security services for protection against illegal network access; security consultant services for telecommunication networks; development (design) and development of electronic data security systems; security services, namely online protection of computer networks against unauthorized third-party access; advice with respect to cloud computer applications and networks; advice regarding information technology; IT security, protection and repair services; programming of software for assessing customer behaviour in online stores; all of the aforementioned services unrelated to the travel, transport and hospitality industries.

[1] Also known in this decision as the 'relevant date'.

[2] As the Opponent relied on a protected international trade mark application as the basis of this ground of opposition, the technical ground of opposition is under reg 4.15A of the Regulations rather than s 44 of the Act. However, as the terms are substantively identical for all relevant purposes and for ease of reading, I have retained the reference to s 44 in this decision. References to s 44 as considered in the present decision should be taken to read reg 4.15A and the Opponent's Trade Mark (as defined later in the decision) should be recognised as a protected international trade mark applications.

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

[4] Following Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

[5] or an international registration designating Australia protected or sought to be protected under Reg 4.15A.

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

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

[9] [2023] FCA 482, [55] (Jackman J).

[10] [2023] HCA 8, [26] citing Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69] (Yates, Abraham and Rofe JJ).

[11] [2023] HCA 8, [26] citing Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd [1952] HCA 15 (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).

[12] [2023] HCA 8, [27] citing Australian Woollen Mills Ltd v F S Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ) ('Australian Woollen Mills').

[14] [2023] HCA 8, [28], [29] citing Australian Woollen Mills, 658 (Dixon and McTiernan JJ) .

[15] [2023] HCA 8, [28], [29] citing Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69]-[70], [77]-[80] (Yates, Abraham and Rofe JJ).

[16] [2023] HCA 8, [29] citing Shell, [5].

[17] [2023] HCA 8, [30] citing Coca-Cola Company v All-Fect Distributors Ltd [1999] FCA 1721; (1999) 96 FCR 107, 122 [39] (Black CJ, Sundberg and Finkelstein JJ) quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62 (Richardson J).

[18] [2023] HCA 8, [31] citing Campomar Sociedad Limitada v Nike International Limited [2000] HCA 12; (2000) 202 CLR 45, 79 [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).

[19] [2023] HCA 8, [32] citing Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50)] (French J) restating principles from Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592, 594-595 (Kitto J).

[20] [2023] HCA 8, [30], [71] citing Australian Woollen Mills Ltd, 658.

[21] [2023] HCA 8, [30], Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc [2020] FCAFC 235; (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) ('Hashtag Burgers') citing Australian Woollen Mills, 657.

[22] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [33] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

[23] New South Wales Dairy Corporation v Murray-Goulburn Co‑operative Co Ltd [1989] FCA 124; (1989) 86 ALR 549, 589 (emphasis added) (Gummow J), approved in CA Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539; (2000) 52 IPR 42, 62 [44] (Ryan, Branson and Lehane JJ), Hashtag Burgers, [64], Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel [2021] FCAFC 8, [27], PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2021] FCAFC 128; (2021) 285 FCR 598, [97] (see also 626 [111]) and Swancom [2022] FCAFC 157; (2022) 168 IPR 42, [73].

[25] New South Wales Dairy [1989] FCA 124; (1989) 86 ALR 549, 589.

[26] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157; (2022) 168 IPR 42, 59 [2022] FCAFC 157 [89]. See also CA Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539; (2000) 52 IPR 42, 62 [44] (Ryan, Branson and Lehane JJ).

[27] See Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [93] (Yates, Abraham and Rofe JJ) and, albeit in the s120(1) context Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [49] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

[28] Stone & Wood Group Pty Ltd v Intellectual Property Development Corporation Pty Ltd [2018] FCAFC 29; (2018) 129 IPR 238, [66] (Allsop CJ, Nicholas, Katzmann JJ).