Trade Marks Act 1995 (Cth) - opposition under section 52 - sections 42(b), 44, 60 and 62A pursued - none established - trade mark to proceed to registration

1. This is an opposition filed in accordance with section 52 of the Trade Marks Act 1995 (Cth) ('Act'), and the issue to be determined is whether rights held by W Sternoff LLC ('the Opponent') in the trade marks BODY GLIDE, BODYGLIDE, FOOTGLIDE and SKINGLIDE ('the Opponent's Marks') should prevent registration of the trade mark Glide & Go ('the Opposed Mark'), in respect of anti-chafing balm for athletes.

1. The Opponent filed an opposition to the registration of the trade mark application detailed below ('the Application'), applied for in the name of Grainne Ann O'Hare ('the Applicant'):

Goods: Class 3: Cosmetic preparations, namely anti-chafing balm for athletes ('the Applicant's Goods')

1. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Act or the Trade Marks Regulations 1995 (Cth) ('Regulations'), respectively.
2. Following advertisement of the Application's acceptance, the Opponent filed a Notice of Intention to Oppose followed by a Statement of Grounds and Particulars ('SGP') on 8 October 2024. The SGP raised grounds of opposition under sections 42(b), 44, 60 and 62A. The Applicant filed a Notice of Intention to Defend on 5 November 2024.
3. Once the evidence stages of the proceedings were complete, the parties were provided with an opportunity to file written submissions and be heard. Mr Meskin of IP Guardian Pty Ltd filed written submissions on behalf of the Applicant ('Applicant's Submissions') but chose not to attend the hearing. Mr Wach of James & Wells Intellectual Property filed written submissions on behalf of the Opponent ('Opponent's Written Submissions') and made oral submissions at the hearing ('Oral Submissions'), which was held before me, a delegate of the Registrar of Trade Marks, by video conference on 6 March 2026.

1. The evidence filed in this opposition is comprised of the following:

• Declaration of William R Sternoff dated 7 February 2025 with exhibits WRS-1 to WRS-3 ('Sternoff Declaration')
• Declaration of Kathryn Elizabeth McLardy dated 10 February 2025 with exhibits KEM-1 to KEM-17 ('McLardy Declaration')

• Declaration of Barry Meskin dated 13 May 2025 with annexures BM1 to BM10 ('Meskin Declaration')

• Declaration of Hayleigh Katherine Hine Nui Barrett dated 21 July 2025 with exhibits HB-1 to HB-3 ('Barrett Declaration')

1. William Sternoff is the founder of the Opponent and has been its CEO since 1997. The Sternoff Declaration includes:
   • details of the Opponent's Australian and international trade mark registrations for the Opponent's Marks;
   • a statement that the Opponent has, since 2003, sold and continues to sell non-medicated skin care preparations and medicated skin care preparations bearing the Opponent's Marks in Australia;
   • exhibit WRS-2, which is described as 'Body Glide Australia Sales during the period 2003-2025' ('WRS-2');
   • annual gross revenue figures for products bearing the BODY GLIDE trade mark for the periods 2003-2013 and 2020-2024;
   • a copy of a letter of demand sent by the Opponent's UK lawyers to the Applicant on 10 September 2024 ('WRS-3').
2. Kathryn Elizabeth McLardy is a New Zealand barrister and solicitor employed by James & Wells Intellectual Property. Ms McLardy declares that between 30 January 2025 and 5 February 2025 she undertook internet searches for past public use of the Opponent's Marks in Australia.
3. The McLardy Declaration annexes screenshots, mostly obtained using the Wayback Machine, depicting use of one or more of the Opponent's Marks over each of the years 2013-2024. Those are variously taken from the websites of third party retailers as well as bodyglide.com.au, the Body Glide Australia and New Zealand Facebook page and the Body Glide Instagram account. The McLardy Declaration indicates that from at least 14 June 2017 until 28 October 2022, the bodyglide.com.au website was disabled for technical reasons.
4. Barry Meskin is a registered Australian trade mark attorney of IP Guardian Pty Ltd, which is representing the Applicant. The Meskin Declaration annexes:
   • the results of a search of the Australian Trade Marks Register conducted on 12 May 2025 for registered and pending trade marks in Class 3 containing the word 'GLIDE';
   • details of the Applicant's UK and EU registrations for GLIDE & GO and the Opponent's UK and EU registrations for various trade marks containing GLIDE;
   • dictionary definitions for the word GLIDE.
5. Hayleigh Katherine Hine Nui Barrett is a senior IP assistant employed by James & Wells Intellectual Property. The Barrett Declaration provides extracts from the US trade mark application file for GLIDE & GO which was applied for by the Applicant.

1. The Opponent bears the onus of proving their case and the standard is the balance of probabilities.[1] The date at which the rights of the parties are to be determined is 8 February 2024, being both the filing date and priority date of the Application.[2]

1. Subsections 44(2), 44(3) and 44(4) are not relevant to this opposition. Subsection 44(1) provides:

Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

(a) the applicant's trade mark is substantially identical with, or deceptively similar to:

(i) a trade mark registered by another person in respect of similar goods or closely related services; or

(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

1. All of the Opponent's Marks are registered and the SGP references registration numbers: 736961 for BODYGLIDE, 1136904 for FOOTGLIDE, 1482403 for SKINGLIDE, 1895887 for BODY GLIDE and 1913162 for BODY GLIDE, each of which includes Class 3 ('Registrations'). Details are shown in Annexure 1 to this decision, and the Opponent will succeed in its opposition under section 44 if it can establish that one or more of its Registrations:
   1. has a priority date that is earlier than the priority date of the Application;
   2. covers goods that are the same, or of the same description, as the Applicant's Goods; and
   3. is for a trade mark that is substantially identical with, or deceptively similar to the Opposed Mark.
2. The Registrations all have an earlier priority date than the Application and cover either "skin care products", "skin care preparations" or "non-medicated skin care preparations" generally. The Applicant's Goods are "cosmetic preparations, namely anti-chafing balm for athletes", which is a product designed to protect skin against chafing. Anti-chafing balm is not usually medicated, so it falls within the scope of the description "non-medicated skin care preparations". As that is the narrowest description of goods covered by the Registrations, anti-chafing balm falls within the scope of all the Registrations. In other words, all the Registrations cover goods that are the same as the Applicant's Goods.
3. In light of this, the remaining question is whether GLIDE & GO is substantially identical with, or deceptively similar to any, or all, of the Opponent's Marks.

Substantial Identity - Consideration and Conclusion

1. In Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd, Windeyer J formulated the following test for substantial identity:[3]

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.

1. The Opponent's submission that GLIDE & GO and each of the Opponent's Marks are substantially identical was based largely on a claim that they share a key essential feature. While essential features are relevant to this assessment, the requirement of a side by side comparison necessarily means that all features are important. Further, use of the word 'identical' in 'substantially identical', requires a very close similarity.
2. Comparing GLIDE & GO with each of the Opponent's Marks, there are obvious differences. These arise from the inclusion of '& GO' in the Opposed Mark and the words 'BODY', 'FOOT' and 'SKIN' in each of the Opponent's Marks.
3. The common word GLIDE means that there is a degree of similarity between the trade marks. However, that is insufficient to conclude that, when compared side by side, there is a total impression of similarity. Consequently, the Opposed Mark is not substantially identical to any of the Opponent's Marks.

1. Section 10 states that "[f]or 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".
2. In Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd ('Self Care'),[4] the High Court made it clear that reputation should not be taken into account when assessing deceptive similarity. While that was in the context of infringement, it applies equally to deceptive similarity under section 44.
3. The High Court in Self Care noted, inter alia, that: the marks must be judged as a whole, taking into account both their look and their sound; the notional buyer is to be understood by reference to the nature and kind of customer who would be likely to buy the goods covered by the registration; the test assumes that the notional buyer has an imperfect recollection of the mark as registered; a mere possibility of confusion is not enough; there must be a real, tangible danger of deception or confusion occurring.[5]
4. The High Court also quoted from Australian Woollen Mills Ltd v F S Walton & Co Ltd:[6]

In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. 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, then similarities both of sound and of meaning may play an important part.

1. In essence, the task requires assessing whether the notional purchaser, who has an ordinary imperfect memory, will be caused to wonder whether products or services traded under the respective marks come from the same source.
2. This involves considering the impressions conveyed by the respective trade marks. Those impressions influence how the marks are likely to be recalled, and the assessment of whether there is a real and tangible danger of the notional purchaser being relevantly caused to wonder.

1. The nature of the goods and their market provide the context for making an assessment of deceptive similarity. Evidence of the Opponent's use demonstrates sales through sports, athletics and outdoor activity stores. Further to that, the Opponent's Written Submissions state: "Trade Channels: Non-medicated skincare preparations are notionally sold in the same retail channels as cosmetic preparations. Chemists, big box retailers, online through websites directed to consumers looking to purchase these types of goods".
2. Concerning the relevant consumer, I accept the Opponent's Written Submissions, which state: "Specific anti-chafing products, while used by athletes, are likely to be used by any member of the general public who exercises regularly", meaning that the consumer market is persons undertaking regular physical activity.
3. Whether the common element is being used by various traders for similar goods is relevant to considering consumer perceptions of the trade marks. Relatedly, the Applicant's Submissions placed a heavy reliance upon what might be termed 'state of the Register' evidence, namely, evidence of the coexistence of trade marks on the Register in Class 3 containing the word 'GLIDE'. The Opponent argued that this is irrelevant and of no value.
4. As 'state of the Register' evidence is routinely submitted in opposition proceedings, and is often regarded as irrelevant, given the parties' submissions in this case, I will consider whether such evidence is ever of any relevance.

Evidence of the State of the Register - Section 44

1. Evidence of what is on the Register is not evidence of concurrent use or coexistence in the marketplace. It does not establish anything about use of the registered and/or pending trade marks, or about whether there is any absence (or likelihood) of confusion. It is simply evidence of what trade marks have previously been filed and permitted registration. As a consequence, it is often of no relevance and will often be properly disregarded.
2. The principal authority usually quoted concerning state of the Register evidence is the judgment of Wilcox J in Ocean Spray Cranberries Inc v Registrar of Trade Marks ('Ocean Spray'),[7] which references British Sugar Plc v James Robertson & Sons Ltd ('British Sugar').[8] Those decisions concerned inherent registrability rather than deceptive similarity.
3. In Ocean Spray, Wilcox J recognised that "consistency in public administration is desirable", although his Honour noted that it should not extend to perpetuating errors.
4. In a more recent decision concerning deceptive similarity, Stewart J recognised Ocean Spray and British Sugar as precedents for the view that a "comparison with other marks on the register is in principle irrelevant" before stating:[9]

The significance of the evidence of the registrations and the limited sales of the limited products is not in relation to the knowledge or understanding of the ordinary consumer of existing trade marks and therefore of their capacity for confusion. It is rather in its support of the notion that the word or prefix VAG or the prefix VAGI- are likely to be understood by the ordinary consumer to be references to the vagina, and are therefore descriptive. The fact that many traders seek to register VAG or VAGI in relation to particular types of feminine healthcare products is indicative of that likely understanding.

1. On appeal, the Full Court**[10]** overturned the primary decision. The Full Court's principal criticism was that when comparing the marks VAGISAN and VAGISIL, Stewart J concluded that "it was necessary to discount the first letters VAGI in their entirety for the purposes of analysis".[11] In relation to evidence of the state of the Register, the Full Court noted that "[h]is Honour appeared to accept that such evidence was not relevant to the assessment of deceptive similarity_"_[12] and next noted[13] the paragraph reproduced above, without subsequently directing explicit criticism to those comments.
2. While this is no endorsement of the view expressed, neither does it totally dismiss it. Notably, Stewart J does not say that the evidence is directly relevant to establishing a likelihood of confusion, but rather that it may be indicative of something. Namely, it raises the possibility, or may support the notion, that the common word or element has a degree of non-distinctiveness.
3. Every case will depend on its own circumstances, but if the common word or element is something that a significant number of different traders have had an intention to use, at least to the point of applying for registration, in relation to relevant goods or services, this may suggest it that has some meaning or idea that those traders consider desirable to convey to consumers.
4. Under the Trade Marks Act 1955 (Cth), applicants were required to enter disclaimers in respect of non-distinctive words in a trade mark. For various reasons, it was decided that those should no longer be imposed or required under the Act. However, this did not mean that a word in a composite mark that would previously have been the subject of disclaimer suddenly became distinctive. Similarly, it did not mean that monopolies in those words were now being granted by such registrations, or that all other marks containing such a word would necessarily conflict.
5. Evidence of the state of the Register can never establish that two trade marks are, or are not, deceptively similar. However, in appropriate cases, such evidence may be indicative of the distinctiveness of the common word or element.
6. Often evidence of the state of the Register will be of no value. Further, when it is, it will only be of very limited value because it is not of direct assistance in determining whether the concurrent use of two trade marks is, or is not, likely to cause confusion. At best, such evidence may be peripherally relevant. That is, in an appropriate case, it may support (without itself establishing) a view, independently supported by other relevant factors or evidence, concerning the distinctiveness of the word or element shared by the trade marks.
7. If a view on the distinctiveness, or lack thereof, of the common word or element is reached, that word or element is not to be disregarded in assessing deceptive similarity, but its distinctiveness is something that may be taken into account when making an assessment.

1. Both parties submitted evidence of overseas registrations and applications. Evidence that a party owns overseas registrations is not relevant to an Australian opposition and, in most cases, neither is evidence of coexistence on overseas registers.

Consideration of Deceptive Similarity - Visuals, Phonetics and Meanings

1. The legal tests for deceptive similarity recognise that how trade marks are perceived visually, how they are pronounced, and what they mean, strongly impact upon their recollection and the potential for confusion.
2. The visual and phonetic similarities between GLIDE & GO and each of the Opponent's Marks arise from the word GLIDE. Distinguishing features include '& GO' in the Opposed Mark, and the words BODY, FOOT and SKIN in the Opponent's Marks.
3. The first part of a trade mark is not always, but can be, the most important for the purposes of distinction,[14] and in the present case, that is the word GLIDE in the Opposed Mark, and the words BODY, FOOT and SKIN in the Opponent's Marks.
4. The Opponent's Written and Oral Submissions focused on the importance of the word GLIDE which, according to its claims, is the dominant element in all of the trade marks. It is well-established that each trade mark must be considered and compared in their entirety, so while sharing an essential feature can lead to a likelihood of confusion, to do so that feature needs to dominate the impression conveyed by, and the recollection of, both trade marks.
5. In support of its claims that GLIDE is the dominant element in GLIDE & GO, the Opponent submits:

As with "BIG" in BIG MAC / BIG JACK, GO is a laudatory and/or descriptive word as it implores the consumer to consider the ease of use of the goods, and indicates a movement or an action to be taken by the consumer after or during use of the goods.

1. In relation to its own marks, the Opponent submits:

BODY, SKIN, and FOOT are all descriptive parts of the Opponent's respective marks, given the goods provided by the Opponent are for use on the body and in relation to various body parts, including on the skin and the feet.

1. I am of the view that the Opponent's claims place too much emphasis upon GLIDE and too little emphasis upon the other words in the trade marks. The word GLIDE is not so unique and striking that its presence in the respective parties' trade marks overrides the meaning, effects and impressions conveyed by the other elements.
2. The distinctiveness of the common element is relevant when it is used in combination with other words. This is because the memorability of the combination will be affected by whether there is one word or element that is particularly distinctive and memorable, or whether it is the combination that gives the mark its memorability. More often it is the latter. For example, in Community First Credit Union Limited v Bendigo and Adelaide Bank Limited,[15] COMMUNITY BANK was not deceptively similar to COMMUNITY FIRST and in The Agency Group Australia Ltd v H.A.S. Real Estate Pty Ltd,[16] THE NORTH AGENCY was not deceptively similar to THE AGENCY (stylised).[17]
3. While the word GLIDE may not be directly descriptive of anti-chafing balm, and it has a higher degree of distinctiveness than the shared words in the cases just referenced, it nevertheless refers to or connotes a desirable attribute of those products. This is because the function of an anti-chafing product is to provide a lubricating barrier that reduces friction between adjacent moving surfaces, enabling them to slide or glide with low friction, rather than rub and cause irritation.
4. The word GLIDE may also be suggestive of the way anti-chafing products are applied. The Opponent's evidence includes depictions of its products being used. They primarily show rub-on stick balms and for the user, a desirable attribute would be to apply it in a gliding motion that avoids rubbing and irritation. Consequently, GLIDE is a word that is apt to connote or refer to, if not directly describe, the way in which anti-chafing products are ideally applied and function.
5. It is reasonable to expect that the ordinary consumer of anti-chafing balms, whose perception, impression and recollection is relevant, will understand the meaning of the word GLIDE, and will appreciate the connotations that it has in relation to anti-chafing products. Concerning this, the courts have recognised that the decision maker is entitled to use their "own common sense".[18]
6. While the Applicant's 'state of the Register' evidence establishes nothing about whether there is any concurrent use of the word GLIDE in other trade marks, the fact that a number of different traders have had an intention to use trade marks containing the word GLIDE, at least to the point of applying for registration, in relation to products applied to the skin where the concept of a low friction glide is desirable, provides some support for the view, reached independently, on the relevance of its meaning.
7. The Opponent has justifiably criticised that evidence on the basis that a significant number of the registrations listed do not cover anti-chafing balm and a number do not relate to skin care products; however, a reasonable number do cover products applied to the skin. The Opponent also referred to the decision of the Registrar's delegate in Instagram LLC v Instagoods Pty Ltd,[19] where state of the Register evidence was disregarded. As indicated previously, often such evidence will be of no value, and it may simply be disregarded, as it was in that case.
8. When state of the Register evidence is considered at all, its value is low. Consequently, while it may support my view, independently reached, concerning the character of the word GLIDE, its weight is low, and had it been disregarded, that would make no difference to this decision.

1. In Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd,[20] when comparing the trade marks RAINMASTER and RAIN KING, the High Court viewed the concurrent use of those marks as not likely to deceive because:

[T]he prefix of the two words is the same word "Rain", but the suffix "master" differs from the suffix "King" in appearance and in sound. This makes the two marks as a whole quite distinct and the marks must be judged as a whole. "Rainmaster" does not look like "Rain King" and it does not sound like it.

1. The High Court continued to add: [21]

The fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them, although this fact could be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive.

1. In the present case, there are both differences in look and sound, and differences in meaning.
2. On its own, GLIDE conveys the meaning of something moving smoothly. The most common ideas and imagery associated with that word relate to the movement of something through the air, or across water. This is because smooth movement in those environments is common. When viewed on an anti-chafing balm, it may additionally be seen as having some reference to a desirable attribute of that product.
3. Considering each of the Opponent's Marks, while it is correct to say that the words BODY, FOOT and SKIN have significance in relation to products applied to the body, foot and skin, it is not correct to say that those words should be completely disregarded. When the word BODY, FOOT or SKIN is added to the word GLIDE, the consumer is immediately confronted by different concepts and imagery. In the case of BODY GLIDE/BODYGLIDE, it may be an image of a person gliding or something gliding over a body. In the case of FOOTGLIDE, it may be an image of a foot gliding or something gliding over a foot, and in the case of SKINGLIDE, it will probably be the image of something gliding over skin. In each case, the additional word affects the meaning, impression and recollection of the combination.
4. In the Opposed Mark, GLIDE stands alone and is not qualified by any adjective or adverb. In the combination GLIDE & GO, it conveys the meaning and impression of gliding and then moving on. Even when GLIDE is recognised as suggesting something about the nature of the Applicant's Goods, the concepts conveyed by the words "& GO" are distinct from any conveyed by the Opponent's Marks.
5. Visually and phonetically the Opponent's Marks are strongly affected by their inclusion of the words BODY, FOOT and SKIN, which are the first part of each trade mark, while the Opposed Mark is significantly visually and phonetically affected by the element '& GO'.

1. While consumers have imperfect recollection, a consideration of each trade mark in its entirety shows that there are major visual, phonetic and meaning differences that will influence consumer perceptions and recollections. In combination, the distinguishing factors mentioned mean that consumer recollections of the respective trade marks will be significantly different. Consequently, the fact that the trade marks share the word GLIDE is not sufficient to justify the conclusion that there is a real and tangible danger of consumers being caused to wonder whether products bearing the Opposed Mark come from the same source as products bearing any of the Opponent's Marks.

1. The opposition under section 44 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.

Therefore, the Opponent, which claims reputation in each of the Opponent's Marks, needs to establish: (i) a reputation in another trade mark as at the priority date of the Application; and (ii) because of that reputation use of the Opposed Mark would be likely to deceive or cause confusion.

1. In Taylor v Killer Queen LLC ('KATIE PERRY'), the High Court considered section 60. Gordon ACJ and Beech-Jones J explained the meaning of reputation and noted, inter alia: [22]

• "Reputation" refers to the "recognition of [the mark] by the public generally" and includes the credit, image and values projected by the trade mark;
• the prior mark must have acquired a reputation in Australia in respect of particular goods or services;
• it has been held to be "commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product".

1. Their Honours further explained the nature of the inquiry and what is required to establish a likelihood of deception or confusion noting, inter alia:

• "deceive" implies the creation of an incorrect belief or mental impression, "cause confusion" may merely involve "perplexing or mixing up the minds";
• whether the opposed mark is likely to deceive or cause confusion depends on whether or not a reasonable number of people may be caused to wonder if a trade connection exists between the marks;
• there must be a real, tangible danger of deception or confusion - a mere possibility of deception or confusion is insufficient;
• evidence of actual confusion is not required although it may be persuasive if present;
• the inquiry required by s 60(b) involves comparing the reputation of the prior mark based on actual use of that mark against a notional normal and fair use of the opposed mark. "Notional normal and fair use" refers to how a registered mark could be used in a hypothetical, typical market, rather than actual use. The concept of notional normal and fair use requires consideration of "all legitimate uses to which [the] mark might be put by its owner";
• the inquiry should be conducted by reference to the notional buyer, who is understood by reference to the nature and kind of customer who would be likely to buy the goods or services proposed to be covered by the registration. The notional buyer is aware of the prior mark to an extent that is consistent with the content and extent of its reputation;
• where the goods in question are sold to the general public, it is appropriate for the court to consider not only any evidence of other members of the public that has been adduced but also to use its own common sense in answering the question of whether there would be a likelihood of deception or confusion.[23]

1. Therefore, the threshold question to be asked is whether the Opponent has established a reputation in any, some or all of the Opponent's Marks, among a reasonable number of persons in the relevant market, as at the priority date of the Application. Unless it does this, its opposition under section 60 fails at the first hurdle.

Does the Opponent's Evidence Establish Reputation?

1. The prior mark must have acquired a reputation in Australia in respect of particular goods and/or services, and it must be such that a reasonable number of people may be caused to wonder if a trade connection exists between the marks.

1. I have accepted the Opponent's Written Submissions that the consumer market is persons undertaking regular physical activity and as noted above, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions_._ While reputation can also be established by other means, such as evidence of high repute, for the present purposes those are unnecessary to consider because the Opponent's claims are based on its Australian sales.

1. The Sternoff Declaration states that the Opponent "has sold since 2003 and continues to sell products bearing the BODY GLIDE / BODYGLIDE, SKINGLIDE and FOOTGLIDE Marks in Australia in relation to non-medicated skin care preparations and medicated skin care preparations". In support it provides WRS-2 and gross revenue figures for the periods 2003-2013 and 2020-2024.

1. WRS-2 is described as "a PDF of Body Glide Australia Sales during the period 2003-2025" and the Sternoff Declaration states "[e]very product listed in these sales figures, and indeed every product sold by W. Sternoff LLC, uses the principal BODY GLIDE trade mark and the applicable secondary marks (i.e., FOOTGLIDE or SKINGLIDE) on the product packaging".

1. WRS-2 consists of a table with the headings "Invoice No.", "Day of Invoice Date", "Customer", "Product ID" and "Qty" and the dates range from 28 March 2003 to 2 October 2024. However, it does not contain any product names. Under the Product ID heading, the table contains various codes, the meanings of which are unexplained. As such, the table is of no assistance in ascertaining what products were sold and when.

1. While no details of advertising expenditures have been provided, having regard to the following, I find that the Opponent had sufficient reputation in the BODY GLIDE trade mark in respect of anti-chafing balm, by 8 February 2024, to cross the required threshold:

• Mr Sternoff's declaration that every product sold uses BODY GLIDE;
• Mr Sternoff's declaration that BODY GLIDE products have been sold in Australia since 2003 in combination with the list of invoices (2003-2025), which Mr Sternoff declares to be sales of products using BODY GLIDE;
• evidence of historical online advertising over each of the years 2013-2024, provided in the McLardy Declaration, including evidence of distribution by the major retailers Rebel Sport and Paddy Pallin; and
• Mr Sternoff's declaration concerning confidential Australian revenue for the periods 2003-2013 and 2020-2024. While I do not have any information concerning the size of the market for anti-chafing balm in Australia, the 2020-2024 figures seem to be significant in light of evidence that the Opponent's products retail for around $15-$25.

1. While there are significant issues with the Opponent's evidence, I am prepared to accept that it enables the Opponent to cross the threshold. However, while it supports a finding of threshold reputation, it does not support a finding of a strong reputation. Further, I cannot accept the Opponent's claims that it is able to cross that threshold in relation to the FOOTGLIDE and SKINGLIDE trade marks. This is because the evidence provides no means of identifying the extent of sales or advertising of those products, and provides no other basis for determining reputation in those trade marks. While the McLardy Declaration provides examples of online advertising showing depictions of products upon which SKIN GLIDE and FOOT GLIDE appear in a stylised script, there is nothing that details use or substantiates reputation in either of those trade marks.

Consideration - Is Use of GLIDE & GO Likely to Deceive or Cause Confusion?

1. Sections 44 and 60 ask a similar question, namely, is there a likelihood of confusion? In section 44, this arises from the fact that section 10 defines trade marks as being deceptively similar if there is a likelihood of confusion. While section 60 contains no requirement for the trade marks to be deceptively similar, or for the goods and/or services to be similar or closely related, it requires a likelihood of confusion due to the reputation of the other trade mark. If there is no likelihood of confusion because the trade marks are not deceptively similar, the outcome will be the same under sections 44 and 60, unless the reputation in the opponent's trade mark, and market considerations, justify an alternate conclusion.

1. Making this assessment based on the Opponent's reputation in the BODY GLIDE trade mark, I have regard to and note:

• the factors mentioned above in relation to establishing threshold reputation, including my finding that while the reputation established crosses the threshold, it is not strong. I also note the statement in KATIE PERRY that the "notional buyer is aware of the prior mark to an extent that is consistent with the content and extent of its reputation";[24]

• there is no evidence of any other trader using a trade mark containing the word GLIDE in relation to anti-chafing balm, or common use of that word descriptively;

• the Opponent's reputation is in respect of the same goods as those for which the Applicant seeks registration;

• the evidence does not support any claims of reputation in any of the Opponent's Marks, other than BODY GLIDE;

• While BODY GLIDE has been used in plain script in written references to the Opponent's products and in the domain name bodyglide.com.au, the most prominent uses of BODY GLIDE appear in advertising and on products. To the extent that they can be ascertained from the evidence, over the period of about 5 years before the priority date of the Application, they show use of BODY GLIDE in a stylised lower-case script: .

• Although there is some inconsistency in the evidence, BODY GLIDE typically appears on the Opponent's products in a stylised script above words such as BODY, FOOT and SKIN, as shown below, which tends to emphasise the stylised font:

1. KATIE PERRY states that what needs to be considered is _"_notional normal and fair use"[25] by the Applicant. As pointed out by Jagot J, "normal and fair use, does not extend to an improper or illegitimate use or a use in bad faith".[26] Consequently, normal and fair use does not include use in a script corresponding to that used by the Opponent.

1. Under section 44, I found that concurrent notional use of the trade marks BODY GLIDE and GLIDE & GO is not likely to deceive or cause confusion because of the strong visual, phonetic and conceptual differences that influence their impression and recollection. These factors give rise to same conclusion under section 60. The Opponent has established a threshold, but not strong, reputation in the words BODY GLIDE, and a significant part of that reputation resides in its stylised representation, which will be encountered by consumers when selecting the product or viewing advertising. This is insufficient to alter the outcome under section 44.

1. The Opponent needs to establish that because of its reputation there is a real tangible danger of deception or confusion, not just a mere possibility. Given the distinct differences between the trade marks, I am of the view that the Opponent is unable to discharge its onus. Assuming notional normal and fair use of the Opposed Mark, the Opponent's reputation in BODY GLIDE does not give rise to a real and tangible danger of confusion.

1. The opposition under section 60 is unsuccessful.

1. Section 42(b) provides that "[a]n application for the registration of a trade mark must be rejected if its use would be contrary to law".

1. The Opponent claims that use of the GLIDE & GO would be contrary to Australian Consumer Law and would amount to passing off. These claims are based on the same submissions as those made in respect of its opposition under section 60.

1. Where an opposition has failed under section 60, if relying on the same facts, it will usually fail under section 42(b). This is because the requirement to establish that use would be contrary to law sets a higher bar. Irrespective of the need to consider the surrounding circumstances, and the evidentiary hurdles relevant to assessing actual use, under Australian Consumer Law the use needs to be 'likely to mislead or deceive', which is a higher bar than 'likely to cause confusion'. Similarly, the requirements for establishing passing off set a higher threshold.

1. In the circumstances, having found that the opposition under section 60 fails, it follows that the opposition under section 42(b) also fails.

1. Section 62A provides that "[t]he registration of a trade mark may be opposed on the ground that the application was made in bad faith".

1. In DC Comics v Cheqout Pty Ltd ('DC Comics'),[27] Bennett J referred to the decision of Dodds-Streeton J in Fry Consulting v Sports Warehouse Inc (No 2)[28] and summarised the principles that should be considered when determining an opposition under section 62A. At paragraph 62, her Honour stated as follows:

• Bad faith is a serious allegation and the more serious the allegation, the more cogent the evidence required to support it.
• Bad faith does not require dishonesty.
• Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person's behaviour fell short of acceptable commercial standards.
• The question is whether the conduct falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area. It is whether the knowledge of the applicant was such that the decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.
• It is difficult to see how a person who applies to register, in his own name, a mark he has previously recognised as the property of a potential overseas principal can be said to be acting in accordance with acceptable standards of commercial behaviour. Combining the mark with the applicant's own name is no answer to that criticism.
• The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading.
• All the circumstances surrounding the application to register the mark are relevant.
• An act of bad faith cannot be cured by an action after the date of application.

1. Determinations of bad faith are strongly fact dependent. In the present case, the Opponent relies principally upon WRS-3 and alleges that "the Applicant is continuing a pattern of behaviour established through previous corporate entities, to trade off the name and reputation of the Opponent".

1. WRS-3 is a letter of demand sent by the Opponent's UK lawyers to the Applicant on 10 September 2024 objecting to UK and EU registrations for GLIDE & GO. It alleges bad faith, based largely on a previous dispute concerning use and registration of the trade mark Runglide, which the Opponent alleges infringed upon its rights and resulted in legal proceedings. In relation to the filings for GLIDE & GO the letter alleges:

[B]y the time you filed for the Trade Marks, our client had established a global portfolio which included the Glide family of mark [sic] and also enjoyed established goodwill in the signs "Body Glide" and the family of Glide marks.

As such you were in full knowledge of our client's use of the Glide brand in respect of anti-chafing products at the time of filing the Trade Marks not least because you were connected to the previous parallel infringement and cancellation actions between our client and the various Runglide entities.

1. WRS-3 is not evidence of what it alleges. However, the previous dispute was not denied and the Applicant's Submissions claim that "[t]he existence of a prior dispute does not render a subsequent Australian filing in bad faith" and that "mere knowledge of the Opponent's marks, especially given their descriptive nature and coexistence in other markets, does not amount to bad faith".

1. The Opponent also referred to depictions of labels attached to the Meskin Declaration. It claims that they show improper motive on the part of the Applicant because the word "Glide" is emphasised. Those are referred to in the Meskin Declaration as "examples of artwork showing the trade mark" that were provided by the Applicant. A sample is shown below:

1. The existence of a previous dispute concerning a different trade mark does not establish bad faith. Neither does it constitute an established pattern of behaviour that warrants a finding of bad faith.

1. As stated in DC Comics, bad faith is a serious allegation that involves assessing whether the conduct falls short of the standards of acceptable commercial behaviour. Following a dispute, a business may need to adopt a new trade mark. If, as in this case, normal and fair use of that new trade mark is not likely to cause confusion, it is difficult to see how that conduct falls short of the standards of acceptable commercial behaviour.

1. Regarding potential use of GLIDE & GO in the label depicted above, without expressing any view on whether that is normal and fair use of GLIDE & GO, I do not view it as establishing bad faith. The get up of the label is distinctly different from that used by the Opponent. Notably: (i) the label does not use a stylised font similar to the font used by the Opponent; (ii) the paper plane glider image, and imagery, is different from any used by the Opponent; and (iii) the tagline 'Move Without Limits' is a further distinguishing feature.

1. Consequently, I find that the Opponent has not established its opposition under section 62A.

1. As the Opponent has failed to establish any ground of opposition, the Opposed Mark may proceed to registration not less than one month from the date of this decision.

1. If the Registrar is served with a notice of appeal, I direct that registration of the Opposed Mark shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the Application shall be in accordance with the Court's order or direction.

1. Both parties have both sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle. Therefore, I award costs against the Opponent in the amounts specified in Schedule 8 of the Regulations.

Class 3: Skin care products, including balms, lotions, creams and solutions in this class

Class 5: Topically applied therapeutic products, including analgesics; solar products, including suntans, sunscreens and sunblock preparations; vitamins and nutritional food supplements in this class

1 Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelman JJ).

[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2] (Kitto J).

[3] [1963] HCA 66, [12].

[4] [2023] HCA 8, [36] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) ('Self Care').

[5] Ibid [26]-[32] (citations omitted).

[6] [1937] HCA 51; (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ).

[7] [2000] FCA 177, [35].

[9] Dr August Wolff GmbH & Co. KG Arzneimittel v Combe International Ltd [2020] FCA 39, [73]-[74].

[10] Combe International Ltd v Dr August Wolff GmbH & Co. KG Arzneimittel [2021] FCAFC 8 (McKerracher, Gleeson and Burley JJ).

[14] London Lubricants (1920) Ltd's Appn (1925) 42 RPC 264, 279 (Sargant LJ).

[15] [2019] FCA 1553 (Markovic J).

[16] [2023] FCAFC 203 (Yates, Markovic and Kennett JJ).

[17] See also Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157 (Yates, Abraham and Rofe JJ) where CORNER, CORNER HOTEL and THE CORNER HOTEL were held not to be deceptively similar to THE JAZZ CORNER HOTEL and JAZZ CORNER HOTEL

[18] Taylor v Killer Queen LLC [2026] HCA 5, [56] (Gordon ACJ and Beech-Jones J).

[19] [2021] ATMO 53 (Delegate Worth).

[20] [1952] HCA 15, [3] (Dixon, Williams and Kitto JJ).

[22] [2026] HCA 5, [53] (citations omitted) ('KATIE PERRY').

[25] Ibid [55] (Gordon ACJ and Beech-Jones J).

[27] [2013] FCA 478.

[28] [2012] FCA 81.