Grounds of opposition, onus and standard of proof

1. The SGP nominated grounds of opposition under ss 44 and 58A. The Opponent bears the onus of establishing one of the nominated grounds of opposition.[1] The standard of proof is the ordinary civil standard on the balance of probabilities.[2] I note here that since the Application was not accepted subject to the provisions of s 44(4), the ground of opposition under s 58A is inapplicable and nothing more need to be said if it.
2. The date at which the rights of the parties are to be determined is the Relevant Date, being both the filing date and priority date of the Trade Mark.

1. The Opponent lays claim to trade mark rights in the word STAPLE. Mr Liang states that the STAPLE mark has been established in Australia 2006 and in 2009 was registered for women's clothing. Albeit that s 60 is not relied upon in the SGP the Opponent submits that the STAPLE mark has "been continuously used in Australia since its registration and has established a strong reputation in the women's clothing industry ... [such that] ... use of the Applicant's Mark is likely to deceive or cause confusion".
2. The Opponent was formerly one of the registered owners of Australian trade mark registration no. 1283956 for STAPLE ('Registration'). Current details of the Registration follow:

1. Class 25: Women's clothing being t-shirts, tops, blouses, singlets, jackets, coats, jumpers, vests, overalls, bodysuits, skirts, dresses, pants, jeans, shorts and leggings

Section 44

1. For the purposes of s 44, the SGP (rectified on 25 March 2024) relies upon the Registration. Suitably redacted, the SGP states that:

"Our trade mark ... has been running for 15 years. ... The products in this brand contribute more than $3,000,000 revenue annually to our Australia business ... . STAPLE is labelled in all the all the products in this brand. STAPLE also has its own website, please see the website link as below. https://staplethelabel.com/ The trade mark "STAPLE SWIM", trade mark number 2339533 is under Class 25, which is the same as our trade mark "STAPLE", trade mark number 1283956. The similarity of trade mark "STAPLE SWIM" to our registered trade mark "STAPLE" will be devastating to our trade mark and brand under this trade mark financially and productively. Also ,it would confuse and mislead existing royal customers, and market position would be Shacked."

1. Section 44 was raised as a ground for refusal during examination of the Application. Section 44 prevents the registration of a later filed conflicting trade mark. The Registration was cited by the examiner. The s 44 ground for rejection was overcome during examination. These opposition proceedings require me to evaluate the matter afresh and I am not bound by, nor am I required to find error in, the examiner's reasoning.
2. Section 44 does not require an earlier filed conflicting trade mark to belong to the Opponent and it is not an obstacle to success under s 44 that the Registration is owned by Mink Pink Fashion Group Pty Ltd. To successfully oppose the Application the Opponent must establish that the Registration:
   • has a priority date earlier than that of the Trade Mark ('first requirement');
   • is for a mark which is substantially identical with or deceptively similar to the Trade Mark ('second requirement'); and
   • is in respect of similar goods to the applied-for goods, or closely related to the applied-for services ('third requirement').
3. The first requirement is manifestly satisfied. In relation to the third requirement, s14 provides that goods are similar to other goods (a) if they are the same as those other goods; or (b) if they are of the same description as that of the other goods. The Applicant concedes that the Registration is "for goods that are similar to, or the same as, some of the class 25 goods claimed by the Trade Mark." I go further and find that the applied-for class 25 goods are all similar to the goods of the Registration. Whether goods are of the same description is tested by consideration of (i) the nature of the goods; (ii) the respective uses of the goods; and (iii) the trade channels through which the respective goods are bought and sold. [4] Those factors are met identically in this case.
4. The Applicant made no submissions (nor concessions) in respect of the relationship between the applied-for services and the goods of the Registration. Section 14 does not define similarity between goods and services and, as set out above, the language of s 44 is that they be "closely related", an expression not further defined by the Act, but in Registrar of Trade Marks v Woolworths Ltd, Justice French noted:

The term "closely related" recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word "similar" does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as "closely related" ... it is a term of wider import than "similar" and can apply to the relationships between competing services as well as between goods and services.[5]

1. The class 35 specification of the Application covers "retail services" and a cornucopia of services which may or may not ever be provided by the Applicant. For the moment, all I need find is that the applied-for services include the retailing of clothing and that those services are closely related to the goods of the Registration. [6] Whatever else is to be said of the applied-for class 35 services is dealt with later in this decision.
2. The second requirement raises the question whether the compared marks are either substantially identical or deceptively similar. The Opponent's submissions are that they are one or the other. The test for determining "substantial identity" was articulated by Windeyer J in Shell Co 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.[7]

... the Applicant's Mark 'STAPLE SWIM' is substantially identical to the Opponent's Mark. The word 'STAPLE' is same in both marks and is the essential feature in both marks. Where the same word is used in the name, it is the dominant cognitive cue, or essential feature of the marks that will cause the viewer to see these marks substantially identical. The Opponent's Mark only has one word, being 'STAPLE'. The Applicant's Mark 'STAPLE SWIM' uses the essential feature of the Opponent's Mark and is therefore substantially identical to the Opponent's Mark. The addition of 'SWIM' after the first word gives an impression that this is swimwear collection of the Opponent's Mark and therefore indicates possible association with the Opponent's Mark.

1. The Applicant's position is that:
   • on a side-by-side comparison, there are clear differences which mean that a total impression of dissimilarity emerges from a comparison of STAPLE and STAPLE SWIM
   • the Trade Mark has one essential element: the phrase "STAPLE SWIM" (or, in the alternative, two, equally essential elements: the word "STAPLE" and the word "SWIM")
   • the phrase "STAPLE SWIM" acts as a catchy and memorable alliteration and, as such, it acts cohesively as a full phrase which is recalled by the customer
   • the word SWIM, while allusory of the word "SWIMWEAR", is not directly descriptive of the goods and services claimed. The word swim simply suggests the products are 'swim-related', but does not provide any direct reference to the nature of the goods and services.
2. I agree with the Applicant that SWIM suggests the products are 'swim-related'. I am not so convinced of the Applicant's propositions that STAPLE refers to "pieces of clothing" and "is a word used in the common vernacular in the fashion industry and by consumers" ... [such that] .... "the ordinary consumer would expect the word "staple" to be commonly used in the names of clothing businesses in Australia". There is no evidence of those claims, nor any evidence that the Opponent's goods are described as a range of staple classics, but I accept that the word "staple" is not a wholly arbitrary term when applied to clothing or the sale of clothing. That said, when applied to those goods or services, I find that the word "swim" sits towards the descriptive end of a continuum of meaning, whereas "staple" sits towards the allusive end. I labour to accept the Applicant's written submission that the Trade Mark comprises two, equally essential elements but, nonetheless, applying the Shell test, I find that the Trade Mark is not substantially identical to the mark of the Registration.
3. The second requirement of s 44 then hinges on deceptive similarity, defined by s 10 to mean a trade mark so nearly resembling another mark that it is likely to deceive or cause confusion. The determination of deceptive similarity requires a comparison of the impression persons of ordinary intelligence and memory would have, in recalling the earlier mark, to the impression they would get from the Trade Mark.[8] There must be a real, tangible danger of confusion, not just a mere possibility.5 The likelihood of confusion is established if a number of consumers would be caused to wonder whether the Applicant's goods or services come from some other source. It is enough if the ordinary person entertains a reasonable doubt. [9]
4. Returning to what I have written about the character of the constituent words of the Trade Mark, I find that the word, SWIM, would - as the Applicant itself says - be understood as shorthand for the descriptive word, "swimwear".[10] Moreover, in my assessment "STAPLE SWIM" has more of a trademark ring to it than does "SWIM STAPLE", a conclusion consistent with the evidence that the Applicant's house brand appears to be "FAYT The Label" and that the Trade Mark was launched in 2019 as - to use its words - a sub-brand. I find that it is almost certain that the use of the Trade Mark for clothing or the sale of clothing would lead to confusion.
5. With these findings all three requirements of s 44(1) are met with respect to all of class 25 and, I can presume, that which is of critical interest to the Applicant in class 35. However, the Applicant relies on s 44(3)(a) which provides an exception to ss 44(1) and 44(2) if the Registrar is satisfied that there has been honest concurrent use of the two trade marks.

1. The Applicant actually states that "[t]he requirement that a trade mark application be rejected for registration if it is found to be deceptively similar to an earlier registered trade mark in respect of the same or similar services under subsection 44(2) of the Act is subject to subsections 44(3) and (4) of the Act." (emphasis added). This invites the question whether the Applicant's submission is that the operation of s 44(3)(a) is to apply only to its class 35 services. I have given the Applicant the benefit of the doubt and read the submission to apply to all of the applied-for goods and services.
2. The Applicant bears the onus of establishing that there has been honest concurrent use of the Trade Mark.[11] In McCormick & Company Inc v McCormick, Kenny J stated that the criteria for determining whether registration of a trade mark should be permitted pursuant to s 44(3)(a) are:

(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;

(v) the relative inconvenience that would ensue to the parties if registration were to be permitted.[12]

1. As mentioned earlier, the Application was accepted subject to an endorsement that s 44(3)(a) had been applied. Following Office practice, the examiner summarised the evidence provided by the Applicant which led to that qualified acceptance. The examiner's summary notes state that the "[m]ajority of evidence demonstrates use in the marketplace of the trade mark as applied for through social media posts. Whilst evidence does reference the applicant's FAYT brand, there are many examples showing clothing and swimwear bearing the STAPLES SWIM trade mark. The evidence details the first use in 2019 and shows continuous use up until priority date of the application. Sales volume is substantial being in the millions."
2. I have reservations about the evidence. The Applicant's written submissions include the following:

"Ms Saunders is the Director and Founder of the Applicant, incorporated in June 2018, and has held this position for approximately 7 years. Ms Saunders is a popular Australian internet personality and content creator, ... [who] ... pivoted from a career of internet content creation to entrepreneurship which led to her forming the Applicant, FAYT The Label Pty Ltd. Ms Saunders has had an unusual and impressive career journey, from dropping out of high school as a teenager to launching her first brand by herself at 24 and creating an impressive portfolio of successful brands with no business background or guidance."

1. The Saunders Declaration claims that "the Applicant's brands, including STAPLE SWIM, have exploded into viral social media brands and we are now widely recognised across Australia and overseas". In my assessment, the high point of the evidence is that the Applicant has four stores in Eastern Australia. Otherwise, there is a case for saying that the evidence is unclear as to sales of goods strictly referable to the Trade Mark, and that claims of reputation in the Trade Mark are conflated with Ms Saunders personal popularity as an influencer.
2. The examiner noted that advertising seems to be essentially through social media channels including the website of the founder of the Applicant's business. There is almost no evidence of advertising expenditure of any substance with third party advertisers. Finally, and as might be anticipated, the evidence of use is in relation to the clothing goods, retailing, advertising and marketing of clothing, with little to no use of the Trade Mark in connection with any other services in class 35. However, the examiner considered that since the objection was raised in relation to clothing, retail and wholesale services, the evidence was sufficient.
3. I am drawn to the same conclusions, uncomfortable with the dominant reliance on social media hits as a barometer of reputation when an analogy might be counting passers-by who look at the displays in a department store window. On the evidence, I would not, for example, find a significant s 60 reputation in the Trade Mark in Australia , nor would I find any reputation abroad. On the other hand, I would find a significant degree of confusion likely to ensue between the marks. So far as s 44(3)(a) and honest adoption is concerned, the First Liang Declaration states that the STAPLE trade mark has been used continuously since 2009 across Australia and in respect of all the goods covered by the Registration. The sales data is covered by the confidentiality claim but I can say that revenue from the sale of STAPLE branded goods is far from insignificant even by 2019 when the Applicant claims first use of the Trade Mark. By 2023 when the Application was filed, the Opponent's sales figures are impressive.
4. The Opponent's written submission is that "since 2009 ... the brand has been distributed by major retailers including David Jones across Australia and internationally. The brand is referred to by various magazines in the fashion industry. It is inconceivable that the Applicant would have failed to notice the Opponent's Mark at all and can claim honest and concurrent use of the Applicant's Mark in the fashion industry."
5. In response to the Opponent's submissions, the Applicant wrote:

When the Applicant commenced marketing and supplying the Applicant's goods and services by reference to the Trade Mark in January 2019, the Applicant had no knowledge of any other business in the world using the Trade Mark to provide goods or services the same as or similar to the Applicant's goods and services.

It is unrealistic and uncommercial to suggest that individuals should automatically be aware of every and any profitable clothing brand in Australia - particularly in a situation like this one:

(a) in an industry as heavily saturated as the clothing industry;

(b) where the Opponent's Mark at issue is realistically prima facie descriptive; and

(c) where the Opponent does not operate in the marketplace under the Opponent's Mark, but rather operates under the name "STAPLE THE LABEL" which is even more visually, aurally and otherwise different to "STAPLE SWIM".

1. I note here that in January 2020 the Applicant made an earlier attempt to register the Trade Mark. It received an adverse report and the application lapsed. The 7 May 2020 examination report cited the Registration. It was seemingly ignored. The evidence is such as to raise a reasonable inference that the Applicant was aware of the STAPLE mark or should have been so but for wilful blindness. That said, use of a trade mark may be honest even though it commenced with the applicant's knowledge of a prior trade mark[13] , but as stated in Shanahan, "that circumstance will generally make it more difficult to establish honesty"[14]. Burrell and Handler are more explicit, writing that, "the honesty of the applicant's use is the most significant factor [in honest current use], in that it acts as a threshold requirement ... honesty needs first to be established".[15] Furthermore, there is also no evidence that enquiries were undertaken so as to ascertain whether someone had prior rights, something which has been the undoing of applicants in other claims to honest concurrent use, affirmed most recently in FanFirm Pty Ltd v Fanatics, LLC [2024] FCA 764. On the balance of the evidence, I do not find the adoption the Trade Mark to have been honest.
2. Finally, there is almost no contest when it comes to weighing the relative inconvenience that would ensue to the parties if registration were to be permitted. The marks are confusingly similar and the likely damage to the Opponent's business is manifest. All the Applicant has said is that "to re-brand after having invested in the Trade Mark in relation to its goods and services since 2019, it would incur significant costs" which, without putting too fine a point to it, would seem only to be a result of inadequate due diligence or, bearing in mind the Applicant's actual knowledge of the Opponent since mid-2020, indifference to the Opponent's rights.
3. Exercising my discretion, I decline to apply s 44(3)(a) and with that decision the Opponent's ground of opposition under s 44 is established in the main, leaving only that much of the class 35 services outside the conflict zone of the sale of clothing. In that regard I note once more that the Trade Mark was accepted under s 41(4), concerned with the distinctiveness of the Trade Mark. The examination is not altogether clear on the matter, but I reason that this objection was raised in relation to clothing, retail and wholesale services since this is the reference in [34] arising from the honest concurrent use evidence summary.
4. It is difficult to see that s 41(4) could be raised against class 35 services such as "advertising; business management, organisation and administration; office functions; business management assistance; personnel management consultancy", by way of example. There is no evidence of use of the Trade Mark in respect of those services, nor would I think any is needed.
5. In Apple Inc v Registrar of Trade Marks Yates J stated that:

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

1. In circumstances where an opposition has been established in respect of some, but not all of an applicant's goods or services the Registrar may proceed to reject the application in its entirety, under the principles outlined above, but also has a discretion to offer an amendment to an applicant, allowing it to amend the application to remove goods and services for which a ground of opposition has been established.
2. I find it appropriate to offer the Applicant the opportunity to request amendment of the Application as follows:

Class 35: Retail services, wholesale services, retail services provided online, wholesale services provided online, online retail store services, retail of goods, wholesale of goods, none related to the sale of clothing, swimwear, footwear or headwear; distribution of goods; advertising; business management, organisation and administration; office functions; business management assistance; sales promotion; procurement services for others (purchasing goods and services for other businesses); marketing; providing online market for buyer and seller of goods and services; personnel management consultancy; administrative processing of purchase orders; retail and online marketing and sales promotions including sales promotions at point of sale or purchase, sales promotions by means of display, presentation and demonstration; direct mail marketing; loyalty related services in this class including customer loyalty reward programs; media promotion services; content creation for advertising; preparation and production of advertisements, publicity materials and advertising materials; online advertising and promotion; creation and distribution of advertising and marketing materials; media relations services; social media marketing; brand ambassador marketing; branding services, namely, consulting, development, strategy, marketing and management of brands; providing marketing consulting in the fields of social media, social media marketing analysis, preparation of custom advertisements, preparing and placing advertisements and social media marketing campaigns, preparing advertisements for others in the nature of audio visual and interactive presentations, and preparing promotional and merchandising material; arranging, compiling and publishing merchandising catalogues and other promotional material; providing business information via a website; promotional services; retail services for virtual goods in the form of downloadable digital files; provision of information, consultancy and advisory services in relation to all the aforementioned services; all of the aforesaid services also provided via an online communications network.

1. On 19 August, 2025, I provided the Applicant with an opportunity to so amend the Application within a set time. The amendment was requested in a timely manner.

(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 accept trade mark number 2339533 in respect of the qualified class 35 services set out at [43] above.
2. If the Registrar is served with a notice of appeal, I direct that registration shall not occur until the appeal has been decided or discontinued and the disposition of the application should otherwise be in accordance with the Court's order or direction.

1. The Opponent has partly established a ground of opposition. Costs follow the cause and since both parties have had a measure of success I make no award regarding costs.

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

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