Opponent: Edward Thompson of Counsel , instructed by Rebecca Currey of Bird & Bird, Solicitors

Applicants: Sophie Yates of Counsel , instructed by Hayley Tarr of Tarr Law

Trade Marks Act 1995 (Cth) - opposition under section 52 - ss 44 and 60 considered - s 44 established - trade mark refused registration

1. This is a decision on the opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by Comité International Olympique[2] ('Opponent' or 'IOC') to registration of the trade mark detailed below in the name of Olympia Massage Chairs Pty Ltd and Edmond Saffuri ('Applicants'):

Specification: Class 10: Massage chairs with built-in massage apparatus; Massage

chairs with in-built massage apparatus; Electric massage chairs;

Apparatus for use in massaging; Appliances for massaging feet; Body

massagers; Electric massage guns; Electrically operated massagers;

Foot massagers; Instruments for massage; Manual massage

apparatus; Manual massage instruments; Massage apparatus;

Massage appliances; Massaging apparatus; Motor vibrated massage

apparatus; Therapeutic apparatus incorporating massaging facilities;

Vibration generating apparatus for massage; Heat wrap massage

apparatus; Esthetic massage apparatus; Deep heat massage

1. Following the advertisement of acceptance of the Trade Mark for possible registration on 15 August 2024, the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark on 14 October 2024 and a Statement of Grounds and Particulars ('SGP') on 13 November 2024. The Applicants filed a Notice of Intention to Defend on 2 December 2024.
2. The parties then had an opportunity to file evidence in accordance with the Regulations. The Opponent filed its evidence in support ('EIS'), followed by the Applicants' evidence in answer ('EIA'). The Opponent did not file any evidence in reply.
3. Once the evidence stage concluded, the parties both requested a hearing. Prior to the hearing and in accordance with directions given by this Office, both filed written outline submissions. On 12 March, 2026, acting as a delegate of the Registrar of Trade Marks, I conducted a hearing where the Opponent was represented by Edward Thompson of Counsel, instructed by Bird & Bird, Solicitors and the Applicants represented by Sophie Yates of Counsel, instructed by Tarr Law, Solicitors.
4. I have made the decision which follows having regard to the aforementioned material and oral submissions.

1. The SGP nominates grounds of opposition under ss 42(b), 44 and 60. All three grounds were pressed but the Opponent need only establish one.
2. The Opponent bears the onus of proof in an opposition[3] and the relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[4]
3. The date at which the rights of the parties are to be determined is the Relevant Date being, in this case, both the filing date and priority date of the Application.[5]

1. The following evidence was filed in the proceedings:

Joint declaration of Mariam Mahdavi, the Director of Legal Affairs, and Emre Kurtoglu, the Chief Financial Officer, of the Opponent ('Mahdavi/Kurtoglu')

Statutory declaration of Rebecca Currey, a partner at Bird & Bird ('Currey')

Declaration of Edmond Saffuri, the second applicant and a director of the first applicant, Olympia Massage Chairs Pty Ltd ('Suffuri')

1. Suffuri states that Olympia Massage Chairs Pty Ltd ('OMC') was incorporated on 24 February 2023 to distribute massage chairs and portable massage devices. OMC commercialised its first therapeutic massage chair on 11 June 2023.
2. Suffuri states that the Trade Mark was chosen from a number of competing names because Mr Suffuri has Greek lineage and liked a name "with a nod to Greece". Massage chairs, made to order in China for OMC, appear to the main goods bearing the Trade Mark sold before the Relevant Date and those sales were from kiosks in suburban shopping centres and from OMC's website at www.olympiamassagechairs.com.au.

1. Mahdavi/Kurtoglu gives evidence of the history of the Olympic Games, their televised broadcast, and of marketing and sponsorship partnerships in respect of Olympic insignia, names and branding. Currey provides various dictionary definitions, prior trade mark registrations and legislation extracts.
2. The Opponent was founded in 1894 and is now responsible for the Summer, Winter and Youth Olympics. The Olympic Charter provides that the Opponent is the owner of all rights in "the Olympic symbol, flag, motto, anthem, identifications (including but not limited to 'Olympic Games' and 'Games of the Olympiad'), designations, emblems, flame and torches ...".
3. The modern Olympic Games have been held since 1896 and have been televised since 1930. The Opponent estimates that the television audience of the Olympic Games in Beijing (2008), London (2012), Rio (2016) and Tokyo (2020) was almost half the global population.
4. The XVI Olympiad was held in Melbourne in 1956, and the XXVII Olympiad was held in Sydney in 2000. Since 1896, over 4,000 Olympians have participated from Australia and have won 630 medals. In 2021 it was announced that the 2032 Summer Olympic Games would be held in Brisbane.
5. Mahdavi/Kurtoglu states that:

[a] significant aspect of the IOC's, and its affiliates', marketing and promotional activities involves entering into licensing and sponsorship arrangements with commercial partners for the promotion and advertising of their products by reference to Olympic-related insignia and marks. Such licensees and sponsors include, for example, Coca-Cola, Panasonic, Procter & Gamble, Samsung, Visa and Intel. These sponsors and licensees provide a diverse range of goods and services, including beverages, health products, accommodation services, electronics, watches and technology, and seek to associate themselves and their products with the Olympic Games and authorised Olympic-related marks, names and insignia. The level of global advertising, sponsorship and branding expenditure by the IOC, its affiliates and its commercial licensees and partners amounts to billions of US dollars annually and is, by any measure, enormous. Sponsorship and licencing deals entitles these commercial partners to various marketing rights across territories, product or service category exclusivity and entitlements to use the IOC's Olympic-related marks, branding and insignia. Importantly, revenue generated by commercial partnerships accounts for more than 40% of the Olympic revenues. The Olympics are simply not commercially viable without the financial contribution of commercial licensees and partners.

[t]he provision of sports massages, physiotherapy and medical care to athletes is an important part of all the Olympic Games. This is reflected in the Olympic Charter and Olympic Movement Medical Code. Athletes and non-athletes participating in the Olympics have access to a range of health-related equipment and services, including physiotherapy, wellness and massage services. For example, ... during the Sydney 2000 Olympic Games, 19,623 visits were made to the dedicated Polyclinic set up at those games between 2 September 2000 and 4 October 2000. In addition, a Sports Massage Centre, an Aromatic Massage Centre and day spa facilities operated as part of the Sydney Olympics.

1. For reasons which follow I have found that the Opponent has established its s 44 ground of opposition. However, in order to give context to that finding it is useful to first consider the s 60 ground of opposition and why it is unsuccessful.

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.

The trade mark/s had acquired reputation before the priority date of the trade mark being opposed. Together with a local organising committee, the Opponent is responsible for the organisation of each of the Summer and Winter Olympic Games (Olympic Games) held every 4 years. Further, the Opponent owns a number of trade mark registrations in Australia that contain the first six letters i.e., "OLYMPI", and a number of OLYMPI-formative common law marks (e.g. OLYMPIA, OLYMPIAD, THE OLYMPICS, OLYMPIQUE, OLYMPIC and OLYMPIC GAMES) (together, the Prior OLYMPIC Marks). Further, in certain languages, e.g., German and Hungarian, which are known to many Australians, "OLYMPIA" or "OLIMPIA" directly translates to "the Olympics".

Before the priority date of the Opposed Mark (Priority Date), the Prior OLYMPIC Marks had been extensively used by the Opponent and/or its licensees in Australia, including for the Olympic Games. By the Priority Date, the Prior OLYMPIC Marks had acquired a significant reputation in Australia. The Olympics Games are popular sporting and cultural events organised by the Opponent and the relevant local Organising Committee under or by reference to the Prior OLYMPIC Marks.

Given the Opponent's reputation in sports-related goods and services, and more generally in respect of the Prior OLYMPIC Marks, consumers would consider therapeutic massagers and chairs to be a naturalbrand extension of the Opponent. As a result, there is a high likelihood of deception or confusion resulting from use of the Opposed Mark. Consumers are likely to be caused to wonder whether the goods claimed by the Opposed Mark are associated with, endorsed or licensed by, or otherwise derived from, the Opponent.

1. In McCormick & Co Inc v McCormick ('McCormick'), Kenny J considered what is intended by the word 'reputation' as used in s 60 of the Act. Her Honour considered the definition provided in the Macquarie Dictionary and decided that reputation is "the recognition of the [trade mark] by the public generally".[6] Likewise, in Rodney Jane Racing Pty Ltd v Monster Energy Company, O'Bryan J observed that:

The reputation of a trade mark has quantitative and qualitative dimensions. ... The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[7]

... do not dispute that the Olympics are iconic and that the Opponent has a significant and global reputation in OLYMPIC, ... [but] the Opponent is not well known for its sponsoring and licencing arrangements, although no doubt as a commercial reality the Opponent engages in those arrangements. Far less is the Opponent known for the goods and services of its affiliated partners ...

There is no evidence to support the assertion that the reputation in 'OLYMPIC' extends to "beverages, healthcare products, consumer electronics, financial services and payment systems". ...

Those partnerships say nothing of a reputation extending to massage apparatus goods like the ... Goods. The highest the Opponent's evidence rises is the fact the Olympic Charter has provisions concerned with "measures relating to the medical care and health of athletes" and that athletes competing in the Olympic Games ... have "access to...massage services" during the games. However this is not evidence that reflects matters known to the public generally (for the purposes of establishing any reputation), nor is it evidence of reputation in connection with the ... Goods.

1. A trade mark's reputation must be amongst a "significant or substantial" number of Australian consumers, having regard to the relevant market[8] and the nature of the goods or services in question.[9] There is no question that the word OLYMPIC is well-known, nor any issue that at least in relation to sporting events it is uniquely associated with the Opponent. I agree with the Applicants that there is no evidence that the reputation in OLYMPIC extends to beverages, healthcare products, consumer electronics, financial services and payment systems, nor can a compelling inference of that kind be made without better evidence of the nature of the commercial relationship with the Opponent's affiliated partners.
2. In The Sydney Opera House Trust v Australia China Economics, Trade & Culture Association Incorporated,[10] there was no dispute over the claim that the Sydney Opera House is a world famous landmark, nor that under its governing legislation it was the venue for entertainment, cultural events and educational programmes. The evidence was that its revenue came principally from ticket sales for such events, along with the sale of merchandise, food and beverage, tours of the building, and so forth. Standing to one side of those activities was what the opponent's declarant described as "sponsorship and endorsement partnerships", elaborated upon as:

An important aspect of the Trust's activities involve raising sponsorship and endorsement funding with commercial partners. ... In exchange for financial and in-kind support, organisations who enter into sponsorship and endorsement arrangements with the Trust are granted the right to use the Trust's marks, image and branding (such as the Sydney Opera House Logo) and to identify themselves as official sponsors and partners of the Sydney Opera House.

...the Trust has entered into licence arrangements with various companies and businesses, which permit the licensee to use the image of the Sydney Opera House in their logos or in connection with their business. Further, ... the Trust has a number of sponsors who place great value on having access to brand association with the Sydney Opera House and through this relationship they obtain the right to use the Sydney Opera House image in connection with their goods and services.

1. The opponent's partners included Samsung, Adobe, Intel, Westpac, Etihad Airways, Google, Interband, MasterCard, AMP Capital, APN Outdoor, JCDecaux, Maserati, Dulux, Wilson Parking, Young & Rubicam Group, AirBnb and Café Sydney. The opponent's declarant stated that "[a]lmost all of these companies had entered into official sponsor and partnership arrangements with the [Opponent]" but what little evidence there was of how these commercial partners used the opponent's trade marks (absent any underlying agreements) pointed to a simple permission to use the trade marks. There were open questions as to whether the use was the type of thing that the Act recognises as trade mark use, or licensed use, or whether the public would ever associate the opponent with provison of those disparate goods and services under the trade marks.
2. Without better evidence, the position is much the same in these proceedings. There is no clear evidence of use of OLYMPIC as a trade mark in connection with health-related equipment and services, including physiotherapy, wellness and massage services. The claim is almost as bald as an assertion that OLYMPIC has been used as a trade mark in relation to accommodation services simply because the Olympic Villages house athletes and others during the Games. Certainly, there is nothing approaching a reputation in OLYMPIC in respect of the Goods or similar goods.

1. It follows then that the likelihood of deception or confusion between the trade marks requires consideration of the notional use of the Trade Mark in a normal and fair manner in respect of the Goods taking account of the reputation of the word OLYMPICS in connection with sporting events.[11] Further, it is not just the strength of the reputation and the nexus between that reputation and the Goods which I must consider, but also the degree of similarity between the marks.[12]
2. There is nothing in the evidence which further supports the assertion in the SGP that in some languages, such as German and Hungarian, "OLYMPIA or OLIMPIA directly translates to 'the Olympics'". Currey provides dictionary evidence that "Olympia" is a noun defined as "a plain in ancient Elis, Greece, where the Olympic Games were held", whereas the noun "Olympic" is defined as "the Olympics, the Olympic Games". It is only adjectivally that "Olympic" is defined to include "relating to the Olympic Games" and "relating to Olympia in Greece" and "relating to Mt Olympus in Greece".
3. Therefore, the influencing factors are an immense repuation in the Opponent's mark in relation to sporting events and, aside from the obvious similarities and differences in spelling and pronunciation, a conceptual link of a kind between the trade marks. Against those findings the Applicants cite what they describe as the paradigm case of Singtel Optus Pty Ltd v Optum Inc.[13] ('Singtel') where registration of Optum Inc's OPTUM mark was opposed by Singtel, on account of its very significant reputation in OPTUS for telecommunications services. Optum disputed that OPTUS had a reputation in relation to Optum's interest in "insurance, consulting advertising services and services in the healthcare sector". The Federal Court found that Singtel's evidence of its forays outside the provision of telecommunications did not establish a reputation in Optum's services of interest, and having regard to the visual, aural and conceptual differences between OPTUS and OPTUM, found that OPTUM was not likely to deceive or cause confusion and that s 60(b) was not satisfied.
4. The Applicants are keen to emphasise the Court's observation in Singtel that the strong reputation in the OPTUS mark in relation to telecommunications made confusion less likely. Distinctions can be drawn with the two marks at issue here which I am inclined to find are marginally more similar to one another in net impression. On the other hand, I find that there is greater divergence between sporting events and the Goods than between the respective services in Singtel.
5. The argument that a strong but narrow reputation can sometimes work against a s 60 case has been argued well before Singtel. In this case it is not necessary for me to add to that debate for the reason that, absent evidence of actual confusion, and allowing for notional use of the Trade Mark on even the most generically described of the Goods, there remains such a chasm separating the Opponent's reputational sphere from the Goods as to render the Applicants' use of the Trade Mark most unlikely to deceive or cause confusion.
6. I find that s 60(b) is not satisfied and the s 60 ground of opposition unsuccessful.

(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.

Note 1: For deceptively similar see section 10.

Note 2: For similar goods see subsection 14(1).

1. In the SGP, the Opponent nominates registrations numbers 1516723, 2383156, 2352219, 2260087 and 2455943 as the basis for its s 44 ground of opposition but in its submissions it only relied on the two prior registered marks detailed below:

Class 10: electric massaging apparatus, portable vibrators for medical use, low-frequency muscle stimulators for medical use

Class 35: retail and wholesale services in relation to massage apparatus

1. The Opponent must therefore establish that:
   • one of the Registrations has a priority date which is earlier than the Relevant Date and is held in a name other than that of the Applicants ('First Requirement');
   • the Goods are similar or closely related to the goods or services of the Registrations ('Second Requirement'); and
   • the Trade Mark is substantially identical or deceptively similar to one of the Registrations ('Third Requirement').
2. For reasons which follow, I need only consider Registration 1516723 which is owned by the Opponent and, as can be seen, has an earlier priority date that that of the Trade Mark, satisfying the First Requirement.
3. The Second Requirement hinges on s 14(1) which defines goods as being "similar" to other goods if they are the same as those other goods or if they are of the same description as those other goods. In assessing whether goods are of the same description account is taken of (a) the nature of the goods; (b) the respective uses and purposes of the goods; and (c) the trade channels through which the goods are bought and sold[15] but here that determination is unnecessary since it is clear that the Goods are the same as the goods of Registration 1516723.
4. The Third Requirement requires an assessment of whether OLYMPIA and OLYMPIC are substantially identical, with assistance usually drawn from Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd ('Shell'), where Windeyer J stated:

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.[16]

1. Thus, if a total impression of similarity emerges from a comparison of the two marks, the marks are substantially identical. If not, the question is one of whether the marks are deceptively similar. Section 10 states 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" and in Shell, Windeyer J wrote:

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].[17]

1. The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[18] conveniently restated the relevant principles for deceptive similarity, summarised in The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd[19] ('The Agency') 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. The Opponent's submissions are that the compared marks are strikingly similar because:
   • the marks are the same length and share the first six letters, "O L Y M P I", which is distinctive and memorable;
   • the marks have the same number of syllables with primary emphasis on "LYM" producing almost identical rhythm and cadence; and
   • both evoke the same associations with the Olympic Games since they have a common etymological stem that constitutes the "essential feature" of the marks.
2. The Applicants' submissions are more nuanced and point out that:
   • OLYMPIC has three syllables whereas OLYMPIA has four. The letter 'A' in OLYMPIA changes the stresses and pronunciation of the word: whilst OLYMPIC is pronounced (o-LIM- pik), OLYMPIA is pronounced (o-LIM-pee-uh). The final syllable of OLYMPIC is crisp and staccato, whereas the final two syllables of OLYMPIA are elongated vowel sounds;

• "OLYMPI - " is not a separately identifiable feature and does not form a shared essential feature; and
  • despite the common etymological root, it does not follow that because the ancient Olympic Games were held in Olympia the marks convey an identical meaning in modern day Australia. 'OLYMPIC' conveys notions of sports and the international sporting event. 'OLYMPIA' connotes a connection with Greece, possibly as a woman's name, or sharing a connection with 'Mount Olympus' said to be home of the gods in Greek mythology. By no means do they share a unique concept.

1. On balance, I find that a total impression of similarity does not emerge from a comparison of the two marks. I find that the marks are not substantially identical.
2. When, as it must, the reputation of the Opponent's mark is removed from the equation and notional use in respect of the exact same goods is factored in, s 10 asks me to determine whether the Trade Mark so nearly resembles OLYMPIC that it is likely to deceive or cause confusion. Taking account of the considerations set out in The Agency, the answer to that must be "yes" and so I find that the marks are deceptively similar. There is a tangible likelihood that consumers would be caused to wonder whether the respective goods originate from the same source. [32]
3. It follows that s 44(1) is satisfied on the basis of Registration 1516723. That would be the end of the matter but for the Applicants' submissions that, notwithstanding that finding, I should reject the s 44 ground by reason of the exceptions carved out for so-called "other circumstances", "honest concurrent use" and "prior continuous use" as circumscribed in ss 44(3)(b), 44(3)(a) and 44(4).

1. Section 44(4) enables a trade mark which would otherwise have been rejected under s 44 to be registered due to prior continuous use of the trade mark. For s 44(4) to be established, the Applicants must demonstrate continuous use of the Trade Mark in relation to the Goods from before the priority dates of the Registrations, until the Relevant Date.
2. As discussed below, it is asserted that Mr Suffuri developed products, packaging, and advertising and promotional materials under the Trade Mark from February 2022. The Applicants rely on this putative use as predating Registration 2383156, which has a priority date of 7 December 2022.
3. I need not further consider this argument because the s 44(1) outcome relied on Registration 1516723 which has a priority date of 16 September 2011, more than a decade earlier than the Applicants' claimed first use.

1. The Applicants claim honest concurrent use under s 44(3)(a) alongside Registration 1516723 and they bear the onus of establishing that claim[33] having regard to the criteria laid down by Kenny J in McCormick, being:

(ii) the extent of the use in terms of time, geographic area and volume of sales;

(iii) the degree of confusion likely to ensue between the marks in question;

(iv) whether any instances of confusion have been proved; and

(v) the relative inconvenience that would ensue to the parties if registration were to be permitted.[34]

1. Suffuri states that "the name OLYMPIA was not chosen lightly" and makes much of the steps taken to adopt the Trade Mark and the honesty of the Applicants' intention, but I find those claims hard to reconcile with my assessment that even casual due diligence by Mr Suffuri, a law graduate, should have brought the Opponent's Registration 1516723, in the same class 10 of interest, to the Applicants' notice. Indeed, before the Application was filed sometime after adoption and use of the Trade Mark, Suffuri states that further "brief" searches were made of the Register. The seriousness of those enquiries is in doubt.
2. There is no evidence of confusion but I must measure that against the facts that OMC was incorporated on 24 February 2023 and first commercialised therapeutic massage chairs bearing the Trade Mark on 11 June 2023. The Relevant Date is 14 March 2024, nine months later. Suffuri includes one sale invoice dated 11 July 2023 from that period.
3. On the same day OMC was incorporated, the domain name, , was created and the evidence shows that since 5 July 2023 it has resolved to what is now a mature website with increasing traffic. Likewise, Suffuri includes evidence of the Applicants' social media accounts and indications of their popularity.
4. The evidence points without doubt to Mr Suffuri's drive and enthusiasm to build the nascient business, but the Opponent's submission that "OMC was a relatively new business without any commercially significant trading or sales history at 14 March 2024" remains factually correct. Whilst the Applicants have, for example, established several sales kiosks at popular shopping centres in the Eastern States, there is for the purposes of the honest concurrent use claim, essentially no evidence of sales volume.
5. On balance, I find that it is not appropriate to apply s 44(3)(a).

1. Section 44(3)(b) requires me to consider whether acceptance of the Application is proper notwithstanding a real risk of deception or confusion.[35] The Applicants largely repeat their honest concurrent use submissions, adding that:
   • the parties are not commercial competitors, nor are they likely to be in the future;
   • there is no evidence the Applicants' use has caused the Opponent any harm; and
   • inability to use the Trade Mark would result in substantial future inconvenience to the Applicants.
2. The first two points are answered simply by the Opponent's free choice to use its trade mark in respect of its registered class 10 goods (or similar) at any time. The final point is answered by the seemingly harsh conclusion that the Applicants' predicament is of their own making. It is not enough that the Applicants didn't think the Opponent would want to make massage chairs (as submitted), or that this Office did not object to the (much later filed) Application based on the Registrations. Further, the question so far as s 44(3)(b) is concerned is whether the Trade Mark can still be registered in spite of the s 44(1) finding, not whether the Applicants are unable to use the Trade Mark, something which they can negotiate with the Opponent if they choose. Finally, to the extent that OMC reproduces the Trade Mark in it corporate name, something which has engaged judicial attention in the past,[36] this consideration is offset against the inconvenience the Opponent.[37] I do not consider this to be a determinative factor justifying registration of the Trade Mark in the face of the Opponent's longstanding reputation and registration for identical goods.
3. I am not satisfied that there are "other circumstances" justifying registration of the Trade Mark under s 44(3)(b).

1. The Opponent has established a ground of opposition it nominated in the SGP and therefore, in line with s 55, I refuse to register the Trade Mark.
2. If the Registrar is served with a notice of appeal before that time, disposition of the Application should be in accordance with the Court's order or direction.
3. The Opponent sought an award of costs in its SGP. I see no reason to depart from the general rule that costs follow the event and accordingly I award costs against the Applicants under s 221 in the relevant amounts under Schedule 8 of the Regulations.

[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] Comité International Olympique is known in English as the International Olympic Committee, commonly abbreviated to the IOC.

[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 Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelman JJ).

[5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [4] (Kitto J) ('Southern Cross').

[6] [2000] FCA 1335, [81] ('McCormick').

[7] [2019] FCA 923, [83].

[8] ConAgra (n 30), [15]; Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

[9] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).

[10] [2020] ATMO 172 (9 November 2020).

[11] Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43, [11] (Mason J).

[12] Rogers Seller & Myhill v Reece Pty Ltd [2010] ATMO 5; (2010) 85 IPR 647; Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124.

[13] [2018] FCA 575 (Davies J).