Class 32: bottled drinking water; sports drinks; powders used in the preparation of sports drinks

(collectively the goods of the McJenks Applications are referred to as the 'McJenks Goods')

1. The McJenks Applications were examined as required under s 33 and following the advertisements of acceptance for possible registration, WHAV filed Notices of Intention to Oppose followed by an SGP in each case. The Applicant subsequently filed Notices of Intention to Defend the oppositions.
2. The parties then had the opportunity to file evidence in accordance with the Regulations. The following evidence was filed:

Nathan James Bailey, sole director and company secretary of WHAV ('Bailey 3')

NB-01 to NB-43 (including Confidential Annexures NB-02 to NB-05, NB-19 to NB-21, NB-24 and NB-41)

GJ-01 to GJ-25 (including Confidential Annexure GJ-07B)

NB-42 to NB-54 (including Confidential Annexures NB-45 and NB-46)

NB-01 to NB-44 (including Confidential Annexures NB-02 to NB-05, NB-19 to NB-21, NB-24 and NB-41)

NB-42 to NB-53 (including Confidential Annexures NB-45, NB-46 and NB-48 to NB-51)

1. The final matter is Propel's oppositions under s 52 to registration of the trade marks the subject of the applications detailed below in the name of WHAV ('WHAV Applications'):

Class 5: Various medical, dietary and nutritional supplements[5]

Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.

Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.

1. The WHAV Applications were examined in accordance with s 31 and advertised as accepted for possible registration. In each case, Propel filed a Notice of Intention to Oppose followed by its SGP. WHAV then filed Notices of Intention to Defend.
2. The following evidence was subsequently filed:

NB-01 to NB-33 (including Confidential Annexures NB-02 to NB-05, NB-18 to NB-20, NB-23 and NB-30)

1. Once the evidence stages had ended in each proceeding, the parties were given the opportunity to request a hearing. Both parties requested an oral hearing. I am a delegate of the Registrar of Trade Marks ('Registrar') and these matters have been allocated to me to determine. I heard these matters together on 4 September 2025. Prior to the hearing, the parties filed written summaries of their submissions. At the hearing, Edward Thompson of Counsel instructed by Ian Aldridge, Jacob Grumetza and Seren Everingham of Progressive Legal Pty Ltd appeared for WHAV. Mark Metzeling and Jacob Schulz of Macpherson Kelley (observed by Grant Jenkins and Elisha McDonald of Propel/McJenks) appeared for Propel and McJenks. I make my decision based on the aforementioned materials and oral and written submissions of the parties.

1. Much of the evidence submitted by both parties overlaps across the proceedings. Where evidence was filed in only one matter, I consider it reasonable and appropriate to have regard to it for all related proceedings in accordance with regulation 21.15(4) which is consistent with the manner in which the parties treated the evidence. Some evidence, including key agreements, is confidential. I have preserved confidentiality where possible, but have discussed essential details as needed for this decision.
2. To briefly summarise the parties' positions, WHAV contends that it purchased the WONDER FOODS business, including the registered and unregistered marks containing or consisting of WONDER FOODS, which had been used by the vendor, Kova Brendale Pty Ltd (formerly Prema Life Pty Limited, ('Vendor') in Australia for health supplements and related goods for about 40 years. Since purchasing the WONDER FOODS 'business', WHAV has carried on the business in substantially the same way as the Vendor, selling health products and supplements ('WHAV's Goods') under the WONDER FOODS brand. Shortly after WHAV purchased the marks, Propel/McJenks (who had also bid on the Vendor's WONDER FOODS assets) commenced use of WONDER FOODS, adopting similar packaging and get-up to that used by the Vendor and WHAV. WHAV alleges Propel/McJenks have engaged in various other acts of bad faith including the removal of the vendor's stock that WHAV purchased and changing the login for the Vendor's Facebook account.
3. Propel/McJenks claim that the Vendor had abandoned the WONDER FOODS mark and therefore, they were entitled to apply for registration. Propel/McJenks do not dispute that WHAV purchased the Challenged Mark but argue that WHAV did not purchase the whole of the Vendor's WONDER FOODS business and therefore, could not have purchased the unregistered mark WONDER FOODS for health foods and supplements. Propel/McJenks deny that they acted in bad faith and attribute most of the conduct complained of by WHAV to Employee 1[6], a former employee of the Vendor who Propel subsequently employed, and who was terminated by Propel for misconduct.

1. Bailey 3 declares that the trade mark WONDER FOODS was first used by Mr Glendon Whalley Gillard in around 1982 for a whey drink he developed as an alternative to milk, which is still available today.
2. In 2002, Kova Brendale Pty Ltd was incorporated with Mr Gillard and his daughter[7] appointed as directors at various times from incorporation. Since then, the Vendor used the WONDER FOODS mark for its health supplements business. In addition, the Vendor was also the contract manufacturer, distributor and seller for a number of other businesses and health products, including SUN RAY, NPM, ROSA NATURAL and BIO RESEARCH.[8]
3. On 23 February 2023, the Vendor went into receivership and Grant Thornton ('Receivers') were appointed as Receiver managers. On 2 March 2023, the Receivers informed Mr Bailey that the Vendor was in receivership but would continue operating as usual.[9] Mr Bailey immediately started negotiations with the Receivers to acquire the Vendor's assets and on 7 March 2023, signed a non-disclosure agreement with the Receivers. In March 2023, Mr Bailey received access to the Vendor's data room and inspected the Vendor's premises, stock and equipment. As multiple parties showed interest in the Vendor's assets, the Receivers set a deadline of 5pm on 11 May 2023 for interested parties to submit final purchase offers for the Vendor's assets. WHAV was the successful bidder and its final offer was accepted on 15 May 2023.
4. As the successful bidder, WHAV claims it acquired the Vendor's Wonder Foods business including all associated goodwill, the unregistered mark WONDER FOODS, the Challenged Mark, related intellectual property, the website at www.wonderfoods.com.au ('Vendor's Website'), the social media accounts at www.facebook.com/wonderfoodsaustralia ('Vendor's FB Account') and www.instagram.com/wearewonderfoods and the Vendor's WONDER FOODS product formulations, customer and supplier information. A copy of the Asset Sale Agreement signed by the Receivers on behalf of the Vendor and WHAV dated 15 June 2023 is provided ('Asset Sale Agreement').[10] On 16 June 2023, WHAV purchased all remaining stock that related to the Vendor's Wonder Foods business. The Receivers provided WHAV with:
   • multiple current product formulations, 'under development' formulations and archived formulations;
   • inventory spreadsheet of all raw materials and stock;
   • costs guidelines and brand guidelines;
   • customer database through access to the Vendor's MailChimp account;
   • social media account logins except for the Vendor's FB Account (which log in had been changed by the time the logins were provided); and
   • all remaining stock

(collectively the 'Purchased Assets'). 5. The assignment of the Challenged Mark to WHAV was recorded by the Trade Marks Office in July 2023 and a copy of the Confirmatory Assignment Deed is provided ('Assignment Deed').[11] 6. According to Bailey 3, the mark WONDER FOODS has been continuously used since 1982 in word form and in various logo forms as shown below: * 1982-2005: * 2005 to 2011: * 2011 to 2018: Challenged Mark * 2018: to present: (collectively 'Vendor's Marks') 7. Bailey 3 attests that to the best of his knowledge, the Vendor legally retained control over the Vendor's Marks in relation to their goods until WHAV acquired the Purchased Assets. Since then, WHAV has legally retained control over the Vendor's Marks and continuously used and promoted the Vendor's Marks for the same goods. Bailey 3 declares that WHAV never relinquished ownership of the marks to McJenks or any other third party, nor were the Vendor's Marks abandoned before or after the sale of the Purchased Assets. 8. WHAV's Goods are sold through over 150 physical stores throughout Australia, online and through distributors including Go Vita with over 100 stores throughout Australia and Chempro with over 100 stores throughout Queensland. Confidential Annexure NB-04 of Bailey 3 sets out the income generated from sales of WHAV's Goods under the Challenged Mark from 2019 to 2024 and approximate advertising expenditure for promoting those products from 2020 to 2024. Also annexed to Bailey 3 are: * invoices for the sale of WHAV's Goods from 2017 to 2024; * various examples of promotional materials from 2014 to 2017 including product catalogues issued in 2016, 2017 and 2019; * screenshots of various third party websites and distributors' websites illustrating WHAV's Goods for sale. Annexure NB-10 of Bailey 3 includes screenshots of distributors' websites dating from 2011; and * screenshots of the Vendor's Website obtained using the Wayback Machine from 2014 to 2024. 9. Bailey 3 attests that the Vendor's Marks have been promoted on social media since 2014 Examples of use of WONDER FOODS on a new Facebook account set-up by WHAV and the other social media accounts acquired from the Vendor are provided together with examples of promotion of WHAV's Goods on the social media accounts of its stockists and distributors.

1. Bailey 3 annexes current company extracts from the Australian Securities and Investments Commission for McJenks and Propel showing:
   1. Mr Andrew Robert McDonald and Ms Elisha Carmen McDonald have been directors of McJenks since its incorporation on 17 December 2020;
   2. Ms McDonald has also been a director of Propel since its incorporation on 11 May 2023; and
   3. Mr and Ms McDonald have been the sole directors of McJenks Co Pty Ltd since its incorporation on 17 December 2020 and that company has been the sole shareholder of Propel since 12 September 2024.
2. On 11 May 2023, the McJenks Applications were filed and according to WHAV, Propel started using the mark WONDER FOODS without WHAV's authorisation, for goods which are the same or similar to WHAV's Goods and using identical or highly similar get-up and promotional materials to those of the Vendor and WHAV. Various examples are annexed to Bailey 3.
3. Bailey 3 declares that at some time between the filing of the McJenks Applications and 25 July 2023, Propel obtained access to the Vendor's FB Account, renamed the account and changed the handle to www.facebook.com/wonderfoodsaus. This account still features the Vendor's historical posts. Also, Propel proceeded to email the Vendor's contacts and other people in the health food and health supplement industry with McJenks' marketing materials.
4. Bailey 3 claims that McJenks' use of the mark WONDER FOODS has led to consumer confusion and annexes examples.
5. Around 1 August 2023, WHAV became aware of McJenks' unauthorised use of the Purchased Assets. On 9 August 2023, Mr Jenkins contacted Mr Bailey to advise that McJenks and/or Propel had been a competing bidder for the Assets. Details of that telephone call as recalled by Mr Bailey are set out in Bailey 2.
6. On 23 August 2023, WHAV's lawyers sent a letter of demand to McJenks' lawyers and the parties engaged in subsequent correspondence.
7. On 18 September 2023, McJenks/Propel's lawyers sent a letter to many of the Vendor's distributors and customers which Bailey 3 says misrepresents ownership of the Purchased Assets and makes 'aggressive and slanderous remarks' about WHAV.
8. Mr Bailey declares that he is still in contact with an ex-employee of the Vendor who claims that she witnessed her manager 'walking out with substantial WONDER FOODS stock' on the day that the Receivers' notice was received by the Vendor. Bailey 2 details the problems that Mr Bailey had obtaining the whole of the stock he purchased and attests that he received only a small proportion of the stock actually bought, despite the Receivers attempts to locate the missing stock. Mr Bailey declares that he contacted the Receivers about the issues with Propel and McJenks who informed him that Employee 1 had access to the Vendor's premises in order to 'empty the air conditioner or cool room overflow bucket each day' and had actively discouraged other interested parties from bidding on the Assets.
9. Bailey 2 also explains that Mr Bailey initially filed redacted copies of the Asset Sale Agreement and other documents because of the 'turbulent history' between WHAV and Propel/McJenks. Bailey 2 attests that after sharing its current packaging and brand guidelines in these proceedings, Propel started to adopt additional features of WHAV's packaging and get-up for its own products.

1. With respect to use of the Challenged Mark, Bailey 1 claims that WHAV purchased the Challenged Mark in order to promote and provide the Registered Services. According to Bailey 1, WHAV has provided the Registered Services under the Challenged Mark and intends to continue doing so.
2. In August 2023, WHAV started approaching potential customers on the Vendor's customer list to offer the Registered Services. An example of a follow up email sent to a potential customer is annexed to Bailey 1. Mr Bailey declares that WHAV intends to continue cold calling potential customers of the Vendor who had expressed interest in contract manufacturing and/or marketing health foods and supplements, in order to provide the Registered Services 'to a select number of customers per year'. Mr Bailey attests that WHAV wants to become a 'one-stop shop where a customer provides an idea or a name and [WHAV] creates the full branding package, develops and manufactures the products(s) and uses its fulfilment partners to ship the customer's products throughout Australia. [WHAV's] customers would only need to worry about marketing the brand to their customers and followers'.
3. Bailey 1 claims that in August 2023, WHAV developed the brand AINA FOODS including a logo as well as related marketing and advertising concepts to sell the brand to a third party. On 13 August 2024, WHAV filed Australian trade mark application number 2473802 in classes 3, 5, 29, 30 and 32 on 13 August 2024 to 'further prepare for the sale of this branding package'.
4. Bailey 1 declares that he had meetings with a customer throughout August 2023 regarding the provision of a branding package and signed an engagement letter with the customer in early September 2023. In September 2023, WHAV created the brand WHOLEY MOLEY FOOD CO with related marketing and advertising concepts for sale to the customer and filed Australian trade mark application 2404592 in classes 5, 29, 30 and 32 on 10 November 2023. Bailey 1 attests that upon completion of the sale, all assets including the trade mark application (or registration) will be assigned to WHAV's customer.
5. Annexed to Bailey 1 is the income generated from providing the Registered Services and advertising expenditure by WHAV for promoting the Registered Services under the Challenged Mark.
6. Bailey 1 also declares that to the extent that the Challenged Mark was not used during the relevant three year period, such non-use was due to the Vendor suffering financial problems before going into receivership in February 2023.

1. Jenkins declares that McJenks owns the trade mark WONDER FOODS and licenses its use to Propel, which he describes as the 'trading arm' of McJenks.
2. Jenkins attests that on about 4 May 2023, he became aware that the Vendor had appointed external administrators and would be selling its assets. Having decided to diversify the fitness business (operated with his wife, Ms McDonald) into nutritional supplements, Jenkins declares that he was interested in potentially acquiring the assets of the Vendor who sold 'a few different brands of supplement products'.
3. Exhibited to Jenkins is a post on the Vendor's FB Account on 23 April 2023 stating that 'Remaining stock has been further discounted by up to 60% with NVA continuing to trade to close of business Friday 28th April' ('Vendor's FB Post').
4. On 4 May 2023, Elisha McDonald of McJenks exchanged emails with the Receivers and Mr Driscoll of the Receivers asked Ms McDonald to call him.
5. Jenkins declares that McJenks engaged Macpherson Kelley ('MK') to assist and advise them in negotiating with the Receivers and evaluation of the intellectual property of the Vendor.
6. On around 4 or 5 May 2023, Ms McDonald spoke with Mr Driscoll of the Receivers and Ms McDonald sent a follow up email summarising the conversation in which she noted:

I would just like to explore the options available for Permalife.

I understand the business has now closed and there's no value left in the name. ('McDonald Statement').

1. Mr Driscoll promptly responded to Ms McDonald but made no comment about the McDonald Statement. Jenkins attests that later that day, Ms McDonald sent a further email to Mr Driscoll seeking to purchase 'physical company assets and registered intellectual property, subject to conducting due diligence re same'.
2. On 10 May 2023, McJenks submitted its offer to the Receivers and their lawyers, Minter Ellison ('ME'), to purchase the Vendor's business, relevant assets and common law rights. The next day this offer was withdrawn and immediately replaced with a corrected offer including extra intellectual property such as customer lists, recipes, suppliers, ordering platforms and know-how and additional physical assets.
3. McJenks declares that later on 11 May 2023, he was advised by MK in a phone call that:

(a) Considering GT's representations, as the administrator of Kova, as at 11 May 2023 Kova had abandoned its common law rights as:

i. if the common law rights still existed there must still be value in the name in respect of goodwill, but GT had said there was no value left in the name; and

ii. to transfer the common law rights, the business must be sold as a going concern, but GT had said the business has ceased trading and was not for sale (only the assets of the business), which means the business at common law had ceased to exist.

(b) Given the Kova Registration was registered in relation to irrelevant services, and Kova had expressly represented it had abandoned its common law rights, this meant that at latest on 11 May 2023 (and more likely earlier), there was no longer a first common law user.

Accordingly, the first entity to commence using the trade mark or in the alternative to file an application for a registered trade mark would become the true owner of the trade mark and be the only entity entitled to use it.

(c) The status of the Kova Registration was publicly available and the status of the common law rights of Kova, could be confirmed by any interested third party by way of due diligence into the validity and enforceability of Kova's intellectual property.

(d) As at 11 May 2023, McJenks could file a trade mark application for WONDER FOODS seeking registration in relation to goods and services of a similar kind to the Kova Products and Services, and that any such application would be made in good faith.

1. Based on the above advice, McJenks filed the McJenks Applications and proceeded to incorporate Propel.
2. Ms McDonald had also received an email on 5 May 2023 from a former employee of the Vendor confirming the date that the business ceased trading. On 12 May 2023, McJenks received a response to its offer from ME in which ME advised 'That business [h]as ceased trading' ('ME Response').
3. Jenkins declares that he became aware in early June 2023 that a third party had acquired the Vendor's assets. On 19 July 2023, Ms McDonald received an email from Mr Bidwell of the Receivers in response to her enquiries about the possible purchase of plant, equipment and stock from another of the Vendor's premises which advised that 'for the avoidance of any doubt, the sale entered into by the Receivers and Managers was a sale of specific assets and not the business of the Company as a whole (this sale did include some intellectual property, namely the Wonder Foods Brand)' ('Receiver's July Email'). These emails are exhibited to Jenkins.
4. Jenkins attests that he did not wish the Vendor's employees to be unemployed and because McJenks could utilise their knowledge of the supplements industry, in May 2023, he employed Employee 1[12] and seven other former employees.
5. According to McJenks, on 5 May 2023, Employee 1 messaged Ms McDonald to advise that Ms Blake of the Receivers had told Employee 1 that 'all that can be done is an offer for the IP and left over inventory'. In July 2023, Employee 1 claimed she had purchased Wonder Foods products which she sold to Propel. Propel created a Shopify website to sell that stock.
6. Jenkins declares that Employee 1's employment contract was subsequently terminated for misconduct and that Mr Jenkins had called the Receivers on 5 April 2024 to advise that as a result of Employee 1's actions, he believed McJenks was in possession of property belonging to the Vendor. Jenkins sent an email confirming the conversation but heard nothing further from the Receivers.
7. At some point Propel became aware of the WHAV Applications and obtained written advice from MK on 4 August 2023. A redacted copy of that advice is exhibited to Jenkins ('MK's Advice').[13] On 9 August 2023, Mr Jenkins telephoned Mr Bailey to try to resolve the matter. Jenkins details his recollection of that conversation.
8. In relation to whether the Vendor had an intention to use the Challenged Mark, Jenkins exhibits 4 letters from various people previously employed by or connected to the Vendor claiming the Vendor never had an intention to use the Challenged Mark for the Registered Services.
9. Jenkins 2 outlines why Propel/McJenks holds the view that WHAV did not purchase the unregistered WONDER FOODS mark.

1. In its SGP, WHAV nominates grounds of opposition under ss 42(b), 58, 59, 60 and 62A. The s 59 ground of opposition was not pressed at the hearing.
2. The date at which the rights of the parties are to be determined is the filing date of 11 May 2023 ('Relevant Date') which is also the priority date for the purposes of s 60.
3. WHAV, as the opponent, bears the onus of establishing at least one of the grounds of opposition.[14] The standard of proof is the ordinary civil standard of the balance of probabilities.[15]

1. Section 58 allows opposition to a trade mark registration if the applicant is not the true owner. Ownership is determined by first use or first application in Australia. To succeed, WHAV must show:
   • the McJenks Mark is identical or substantially identical to WHAV's marks; [16]
   • the goods are the same or similar; [17] and
   • someone other than McJenks (here, WHAV or its predecessor) used the mark first in Australia. [18]
2. WHAV relies on the Vendor's use of the Vendor's Marks since 1982. It is not in dispute that the McJenks Mark is identical or substantially identical to each of the Vendor's Marks.
3. WHAV claims that the Vendor used the Vendor's Marks for all of the McJenks Goods, or the same kind of thing, except for 'bottled drinking water'. In support of this claim, the evidence relied on by WHAV includes:
   • Extracts from the Vendor's website obtained using the Wayback Machine[19] dating from 2013, 2014, 2016, 2018, 2019, 2020, 2021 illustrating use of WONDER FOODS for dietary, nutritional and mineral supplements, herbal remedies such as alfalfa powder, ground bee pollen, brewers yeast, L-Glutamine, wheatgrass, ocean minerals with wheatgrass castor oil, epsom salts and slippery elm powder; and powders for making beverages such as FigaFibre (for weight management/meal replacement), Flex-Greens (for alkaline balance and energy) and Wonder Whey (low allergenic milk alternative), NicerWeigh (high protein, fibre rich drink powder) and Tangy Vitamin C (citrus tasting drink powder).
   • Invoices issued by the Vendor to customers from 2017 to 2023[20] for a range of goods including stevia drops and powder, castor oil, CranAloe (described as 'antioxidant fruit punch'), Tangy Vitamin C, Inulin (fibre powder which functions as a prebiotic), bee pollen, Vegan Protein Supreme, Wonder Whey, Magnesium Orotate, Mircodistilled Aloe Vera, Wonder Vitamin B, cholorophyll, Multiplex Minerals, Green Barley Grass Powder, FigaFibre, Partially hydrolzed guar gum (a soluble dietary fibre)
   • Wonder Foods Product Catalogues[21] from 2016[22], April 2017 and September 2019 illustrating the aforementioned products and Sprint 'amino active anti-oxidant sports and superfood', Stamina Blend & Joint Food 'to assist in the fitness, stamina and recovery of athletes and sports active people' and protein powders.
   • undated promotional flyers[23] showing use of the Challenged Mark (which Bailey attests was used from 2011 to 2018) for stevia drops, Wonder Whey, FigaFibre, Tangy Vitamin C, various protein powders, Charcoal Max (for digestive health) and Hesperidin & Mineral Powder and the mark for various nutritional, dietary and mineral supplements; and
   • social media posts of the Vendor and third party retailers before the Relevant Date.[24]
4. In relation to whether goods are 'the same kind of thing', the goods in relation to which the earlier mark has been used must be 'essentially the same' as the applicant's goods, though they may differ in size, shape and name.[25]
5. In my view, it is clear that the Vendor used the Vendor's Marks before the Relevant Date for goods which are the same as the class 5 goods of McJenks' application number 2356038. In addition to the above materials clearly establishing use of the Vendor's Marks over a decade before the Relevant Date, many of those materials also refer to Mr Gillard and the Vendor having distributed WONDER FOODS whey drinks and Tangy C Vitamin supplements since the 1980s and 1990s.
6. In relation to the class 32 goods of McJenks application 2441563, I consider that WHAV's protein powders and whey powders for making drinks, as well as products such as Sprint and Stamina Blend & Joint Food are all powders used in the preparation of sports drinks or the same kind of thing.
7. Accordingly, I am satisfied that the Vendor's Marks were used by the Vendor before the Relevant Date for goods which are the same or the same kind of thing as the McJenks Goods except 'bottled drinking water'.
8. There is no evidence that McJenks used the mark WONDER FOODS before the Relevant Date. As noted above, the Vendor was the first to use the Vendor's Marks before the filing of the McJenks Applications. However, McJenks claims that the Vendor's use of WONDER FOODS was not continuous and/or that the Vendor had abandoned the Trade Mark.
9. WHAV argues that abandonment of a trade mark is not established by mere non-use or a temporary suspension of trading activities but rather evidence of intentional abandonment is required.[26] In WHAV's submission, it 'is impossible to see' how the Vendor or Receivers could have had an intention to abandon the Vendor's longstanding rights in the absence of any evidence that they had such an intention and in the face of evidence both before and after the Relevant Date indicating a clear intention on the part of the Vendor/Receiver to sell and assign those rights. Abandonment of the Vendor's rights in the Vendor's Marks would be inconsistent with the Receivers' role to realise value in the Vendor's assets. Further, the Receivers sold WHAV the remaining WONDER FOODS stock for a reasonable amount of money as evidenced by an invoice dated 16 June 2023[27] which WHAV argues is a commercial dealing by reference to the WONDER FOODS mark.
10. McJenks acknowledges that the Vendor used the Vendor's Marks until 28 April 2023 but alleges that after that date, the Vendor's Marks were abandoned. McJenks relies on a social media post and the McDonald Statement that on 5 May 2023, Mr Driscoll of the Receivers confirmed that the Vendor's business had closed and there was no value left in the name. Further, the Applicant claims that subsequent correspondence after the Relevant Date from ME to MK confirms this. Also, MK's Advice refers to MK having 'correspondence from the liquidator confirming that the business and common law rights were abandoned before any sale of the registered trade mark occurred' and that WHAV was unable 'to acquire the real business and/or the common law rights relating to this trade mark [WONDER FOODS] as the liquidators/receivers confirmed they were unable to sell this, as it no longer existed'.
11. The social media post relied on by McJenks is shown below:[28]

1. This post makes no mention of WONDER FOODS but instead refers to the closing of NVA (which I understand to be a reference to the Queensland business Natural Vitality Australia), a separate business to WONDER FOODS. In any event, even if the WONDER FOODS business ceased taking orders on 28 April 2023, a period of about 3 weeks non-use in the face of four decades of prior use is not sufficient to amount to abandonment. Moreover, any orders received before 28 April 2023 still had to be fulfilled after that date.
2. Regarding the email exchange between Ms McDonald and Mr Driscoll of the Receivers, McJenks alleges that because WHAV did not dispute McJenks' claim that Mr Driscoll had confirmed the Kova business had closed and there is no value left in the name, that I should treat that evidence as accepted under the principles in Jones v Dunkel.[29] In my view, there was no need for WHAV to dispute this claim because McJenks' own evidence shows that contrary to McJenks' claim in evidence and the submissions, the Receivers never stated that 'there's no value left in the name' and did not confirm the McDonald Statement. Ms McDonald made the McDonald Statement and the Receivers did not reply to that statement. Instead, the Receivers only responded to Ms McDonald's interest in purchasing the remaining inventory, stating they needed to conduct a stocktake and informing her that they would soon offer the French Avenue property for sale. I do not share McJenks' view that the failure by the Receivers to comment on or correct the McDonald Statement means that they shared Ms McDonald's view that there was no value left in the name. It is not even clear from the McDonald Statement which name Ms McDonald is referring to given that her email refers to the Prema Life business generally which was comprised a number of businesses operating under different brands. Further, in response to Mr Driscoll's reply, Ms McDonald made an offer on the Vendor's Intellectual Property as well as certain warehouse items. If MK or McJenks/Propel have other correspondence confirming an intention to abandon the Trade Mark, as claimed in the MK Advice, it is not in evidence.
3. Since both Ms McDonald and WHAV were dealing with the same person at the Receivers, it is assumed (and the most logical explanation) that Ms McDonald received the same information as WHAV namely that because there were multiple interested parties in various parts of the Vendor's business, the Receivers required final offers to purchase the Vendor's assets by 5 pm on 11 May 2023. This explains the subsequent offers submitted on behalf of McJenks on 10 and 11 May 2023.[30]
4. The Applicant argues that no one wanted to buy the Vendor's business as a whole, so the Receivers were selling the assets separately. The Vendor's business included not only the WONDER FOODS business but also at least four other businesses under different marks and multiple premises. It is unclear whether the Receivers initially hoped to sell the entire Vendor's business with all its brands but the evidence suggests that the Receivers decided to sell the assets of the different businesses separately and separately from the premises. However, this does not mean that a bidder could not submit an offer for the entire WONDER FOODS business and/or any of the Vendor's other businesses. Ms McDonald's offer of 10 May 2023 is an offer to purchase multiple brands, businesses, and premises, including those of other related companies. In ME's Response, advising that the Vendor's business had ceased, it was made clear to Ms McDonald that she would need to engage with the Receivers if she wished to purchase any part or premises of the WONDER FOODS business. The ME Response made it clear that they 'were not currently appointed to Wonder Foods Retail Pty Ltd'. Presumably, ME was not aware that the Receivers' deadline for final offers on the Vendor's business had closed the previous day.
5. The evidence shows that sales of WONDER FOODS products continued up until at least 19 April 2023.[31] The fact that the Vendor had ceased trading shortly before the tender process closed is not evidence that the Receivers (who were responsible for the business at the time and not the Vendor) had abandoned the Vendor's Marks. Due to the requirement that a business not trade whilst insolvent, it is common for a business to cease trading before being sold. Furthermore, as Burchett J noted in Rael Marcus v Sabra International Pty Ltd:

It is not the law that all rights with respect to a trade mark vanish at once upon a mere discontinuance of its use. The connection in the course of trade denoted by it will not immediately be forgotten.[32]

1. Even after a period of non-use of a trade mark, goodwill associated with the trade mark, and hence ownership of the mark. may still be held to exist.[33] Moreover, as pointed out in Shanahan's Australian Law of Trade Marks & Passing Off, a company does not abandon a trade mark simply by going into liquidation as there may be residual goodwill even after liquidation.[34] As noted by the delegate in Clifftop Retreats Pty Ltd v Clifftop at Hepburn Pty Ltd,[35] '[A]bandonment of property is effective it if can be objectively shown the former owner of that property has executed some act of abandonment, while having an intention to abandon'. In my view, McJenks/Propel have produced no evidence of a positive act of abandonment by the Vendor or Receivers.
2. WHAV attests that it purchased the remaining WONDER FOODS stock from the Vendor/Receivers and provides an invoice dated 16 June 2023 with a schedule of the stock purchased. WHAV claims that this sale is a dealing in the relevant goods by reference to the Vendor's Marks. McJenks claims that there is no evidence that the purchased stock bears the WONDER FOODS mark and argues that the Full Federal Court found in Fanatics LLC v FanFirm Pty Ltd[36] ('Fanatics') that use of a mark on an invoice is not use in the course of trade of the mark for the goods. Firstly, I note that Fanatics is not authority for that proposition, which is also contrary to s 9, but rather the court held that use of a trade mark on goods or invoices for the sale of goods does not constitute use of the mark for retail services. Secondly, there seems to be no sound basis for doubting Mr Bailey's assertion that he purchased the remaining stock of WONDER FOODS products. The schedule to the invoice, being a list of the stock sold to WHAV, includes descriptions that are consistent with a number of the WONDER FOODS products (eg. FigaFibre) shown in other annexures to the various declarations of Mr Bailey.
3. The Vendor has used the WONDER FOODS mark for decades in relation to the goods covered by the McJenks Applications, and there is no logical basis for the Receivers to abandon the goodwill built up in the WONDER FOODS mark. The Vendor ceasing trading shortly before the tender process closed does not prove that the Receivers, who were responsible for the business at the time, had abandoned the Vendor's Marks. In my view, the Receivers remained in control of the Vendor's business and assets at the Relevant Date. At the time the McJenks Applications were filed, the Receivers were actively engaged in trying to sell the Vendor's business (including the intellectual property, property, plant, and equipment), which included the WONDER FOODS brand as well as businesses operated under different brands, and the premises from which those businesses had operated. There is no evidence that either the Vendor or the Receivers had an intention to abandon the WONDER FOODS brand.
4. The Vendor was still in existence and after 40 years use of the WONDER FOODS mark, I am satisfied that goodwill existed in that mark at the Relevant Date and that the Vendor was the owner of the WONDER FOODS mark at that time. Neither the Vendor nor the Receivers had abandoned the WONDER FOODS mark. Accordingly, McJenks was not the owner of the McJenks Mark at the time of filing the McJenks Applications and WHAV has established a ground of opposition under s 58 in respect of all of the goods claimed in the McJenks Applications except 'bottled drinking water'.

1. In its SGP, Propel nominates grounds of opposition under ss 42(b), 44, 58, 58A, 60 and 62A. The s 60 ground of opposition was not pressed.
2. The date at which the rights of the parties are to be determined is the filing date of 3 October 2023. For the purposes of [81] to [128] of this decision, any reference to the 'Relevant Date' is a reference to 3 October 2023.
3. Propel bears the onus of establishing at least one of the grounds of opposition[37] on the balance of probabilities.[38]
4. Having dealt with the issue of whether the Vendor had abandoned its rights in the Vendor's Marks, in my assessment of the Propel Oppositions, in order to succeed in these oppositions, Propel must first establish that WHAV did not acquire rights in the unregistered Vendor's Marks.

1. The parties agree that the law in Australia is that an unregistered trade mark cannot be assigned unless it is transferred with the goodwill of the underlying business of the assignor which had used the unregistered mark.[39] However, there is a difference of opinion on what constitutes the underlying business.
2. Propel argues that WHAV did not purchase the Vendor's business which was no longer a 'going concern'. In this regard, Propel refers to the following comment of the majority of the High Court in Commissioner of State Revenue (WA) v Place Dome Inc:

Going concern value, on the other hand, is the ability of a business to generate income without interruption even where there has been a change in ownership.[40]

1. In support of its contention that the Wonder Foods business was not sold as a going concern, Propel relies on the McDonald Statement and Receiver's reply to that email, ME's Response to Propel/McJenks' offers of 10 and 11 May 2023 and the Receivers' July Email. I reiterate that I do not consider the Receiver's failure to comment on the McDonald Statement to be evidence of abandonment of the WONDER FOODS mark nor do I regard that email exchange as evidence that the WONDER FOODS' business was not available for sale.
2. Further I do not agree with Propel's interpretation of ME's Response which Propel argues is evidence that there was no goodwill which could be transferred because the business had ceased trading. Firstly, ME makes it clear that aspects of Propel/McJenks' offer required clarification because it related to assets of different entities and businesses. Secondly, it is apparent that the Receivers, and not ME, were handling the sale of assets related to WONDER FOODS. Thirdly, the statement that the Kova business (ie. Vendor) has ceased trading cannot be interpreted as indicating that the business is not available for sale in circumstances where ME makes it clear that this is the responsibility of the Receivers and when the deadline for submitting bids to purchase the Wonder Foods assets to the Receivers had closed.
3. In relation to the Receiver's July Email, I consider that Propel has misinterpreted the statement: '[for] the avoidance of any doubt, the sale entered into by the Receivers and Managers was a sale of specific assets and not the business of the Company as a whole (this sale did include some intellectual property, namely the Wonder foods brand)'. In my opinion, the reference to the 'business of the Company' is a reference to the business of the Vendor. I believe this indicates that the Vendor, which consisted of a number of businesses operating under different brands, was not sold as a whole. The statement simply informs Propel that the assets of the Wonder Foods business, including the Wonder Foods brand, were sold but not the other businesses of the Vendor such as SUN RAY, NPM, ROSA NATURA and BIO RESEARCH. This interpretation is consistent with the terms of the Asset Sale Agreement as discussed below.
4. The relevant definitions in the Asset Sale Agreement are:

Assets means the Vendor IP properly corresponding to the Business, but does not include the Excluded Assets.

Business means the health food business that was conducted by the Vendor known as Wonder Foods.

(b) the businesses conducted by the Vendor known as: (i) Natural Vitality Australia; (ii) Bio Research; (iii) Sun Ray; and (iv) NPM, and the associated intellectual property including related registered and unregistered trade marks, product and customer information;

(c) the Vendor's cash in hand, on deposit or at bank;

(d) the assets of the Business other than the Assets;

(e) any right of action against the directors or other officers of any company comprising the Vendor or any proceeds or recoveries arising from any such right of action;

(f) any Insurance Policy and the benefit of any claim arising under such an Insurance Policy;

(g) any assets used in the Business not owned by the Vendor and other equipment on the Premises not owned by the Vendor; and

(h) anything else specifically excluded by this agreement. Trade Marks means the registered and unregistered trade marks used by the Vendor in the Business. The parties acknowledge and agree that the only registered trade mark used in the Business is 1836264 (Wonder Foods). It includes drawings, logos, designs, design rights, copyright and similar industrial or intellectual property rights.

(c) the product information sold under the brand Wonder Foods including formulations of the products known to the Vendor; and

(d) the Vendor's customer and supplier information held and assignable by the Vendor, and all associated goodwill.

Websites means the Vendor's interest in the website (www.wonderfoods.com.au) and facebook and instagram pages used by the Vendor in connection with the Business www.facebook.com/wonderfoodsaustralia and www.instagram.com/wearewonderfoods)

1. Propel submits that it is clear from the terms of the Asset Sale Agreement that WHAV only purchased the 'Assets' and 'the mere fact that the definition of Excluded Assets excludes other assets of the Business...demonstrates that the whole of the Business wasn't purchased. This is further reinforced by the absence of plant and equipment, know how, employees, ingredients, the premises, etc'.
2. WHAV notes that:
   1. At a factual level, the goodwill and assets of a business will take 'take on different shapes and have different dimensions depending on the nature of the business'. It may consist of 'multiple sources, each being identifiable assets of the business, which contribute to bringing customers back to the business.'[41]
   2. Where a company conducts several business, it is not necessary for the whole of the business to be assigned. It is only necessary that for the goodwill in the relevant business to be assigned for the transfer to be effective.[42]
3. WHAV argues that whether the WONDER FOODS business was sold is a question of construction of the terms of the relevant agreement and notes:

The rights and liabilities of parties under a provision of a contract are determined objectively, by reference to its text, context (the entire text of the contract as well as any contract, document or statutory provision referred to in the text of the contract) and purpose.

In determining the meaning of the terms of a commercial contract, it is necessary to ask what a reasonable businessperson would have understood those terms to mean. That inquiry will require consideration of the language used by the parties in the contract, the circumstances addressed by the contract and the commercial purpose or objects to be secured by the contract.

Ordinarily, this process of construction is possible by reference to the contract alone. Indeed, if an expression in a contract is unambiguous or susceptible of only one meaning, evidence of surrounding[43] circumstances (events, circumstances and things external to the contract) cannot be adduced to contradict its plain meaning.[44]

1. Contrary to the submission by Propel, WHAV submits that the court in Kraft Foods did not hold that an unregistered trade mark can only be assigned through the purchase of the whole of a business but rather 'as a matter of Australian law, rights in relation to an unregistered trade mark can only be assigned as an assignment of the goodwill of the underlying business.' Further, there is no finding in Kraft Foods that the agreement must take any particular form.
2. I agree with WHAV that the question is to be answered by reference to the terms of the relevant documents purporting to transfer rights in an unregistered mark and it is not relevant whether those documents are called a business sale agreement, asset sale agreement or by some other name.
3. WHAV's submissions further point out that 'a purchase of goodwill will often times receive less than the entirety of a business, particularly on a sale from the liquidator or trustee in bankruptcy.'[45] In support of this proposition, WHAV refers to Hammond & Co v Malcolm Brunker & Co[46] which concerned a transfer of trade mark rights and associated goodwill as a result of the assignor entering into bankruptcy which involved a transfer instrument and Deed of Assignment executed by the trustee transferring goodwill in a specific department of the assignor's business. In this case, the court dismissed an argument that there was no longer any goodwill capable of being assigned because the trade mark owner had ceased business at the time of the assignment and found that the trade mark relating to the particular part of the business which was purchased was validly assigned.
4. WHAV contends that the terms of the Asset Sale Agreement make it clear that the Vendor sold WHAV a range of IP and other business assets associated with its Wonder Foods business including all registered and unregistered marks used in connection with that business, other business assets and rights used in connection with the business such as websites, product formulations, customer and supplier details, and all associated goodwill. The Deed of Assignment confirms that it was the intention of the parties for the Vendor to assign to WHAV, amongst other things, all unregistered WONDER FOODS trade marks, with the associated goodwill, relating to the Wonder Foods business. The Deed confirmed that effective 22 June 2023, the Vendor assigned the Assets (as defined in the Asset Sale Agreement) and all right, title and interest in the Intellectual Property including the goodwill in the Trade Marks, and Intellectual Property Rights to WHAV. The term 'Intellectual Property' is defined as including 'Business Names, Trade Marks, the Domain Name, the Social Media Handles, Works, all designs whether registered or not, inventions, labels, promotional material, packaging, manufacturing processes, formulae, trade secrets, know-how, Confidential Information, and all other information, documents or materials in whatever format relating to the Wonder Foods brand' and Intellectual Property Rights means 'all industrial and intellectual property rights of whatever nature in the Intellectual Property throughout the world conferred under statute, common law or equity, whether existing now or at any time in the future, and includes rights in respect of or in connection with copyright, inventions, patents, trade marks including the Trade Marks, designs, the right to keep Confidential Information confidential, and similar industrial and intellectual property rights, whether or not registrable and includes the right to apply for or renew the registration of such rights.' The Deed of Assignment also included a schedule of the unregistered marks which included the Vendor's Marks. Moreover, the Deed of Assignment included a further clause that to the extent that the Asset Sale Agreement did not already assign the relevant rights and goodwill in the Vendor's Marks to WHAV then the Deed of Assignment provides a further and subsequent assignment of any Intellectual Property (including unregistered trade marks rights) or other Residual IP (such as 'inventions, labels, promotional material, packaging, manufacturing processes, formulae, trade secrets, know-how ... relating to the Wonder Foods brand') to WHAV with effect from 14 December 2023.
5. In WHAV's submission, it is evident from the language of the terms of both the Asset Sale Agreement and Deed of Assignment that the intention of the parties, and what indeed occurred, was an assignment of the Vendor's common law trade mark rights and associated goodwill in the Vendor's WONDER FOODS business.
6. I concur with WHAV that the Asset Sale Agreement and Deed of Assignment transferred all right, title and interest in the Vendor's Marks to WHAV effective 22 June 2023. Propel's argument that there has not been an effective transfer of the rights because WHAV did not acquire the whole of the Vendor's business is inconsistent with the Full Federal Court's decision in Kraft Foods which rejected this proposition in saying:

Where a company carries on several discrete businesses (as in the present case, based on the approach taken by the primary judge), we do not see any reason why these principles should not apply to each separate business, such that an unregistered trade mark may be assigned together with the goodwill of the related business, rather than the business as a whole.[47]

1. It is clear that any reference by the Receivers (or any other third party) to the whole of the Vendor's business not being sold was a reference to the assets of the businesses associated with Natural Vitality Australia; Bio Research; Sun Ray; and NPM as noted in the 'Excluded Assets' of the Asset Sale Agreement and not a reference to the WONDER FOODS business.
2. I am satisfied that WHAV purchased all rights, title and interest in the assets and intellectual property of the WONDER FOODS business which were necessary for WHAV to carry on that business 'in substantially the same way and by substantially the same means'[48] as the Vendor. WHAV acquired current and past product formulations; the Vendor's customer database and supplier list; promotional materials and branding guidelines; websites and social media accounts; inventory, stock lists and raw materials; cost guidelines; branding guidelines and remaining stock. The fact that WHAV did not purchase the relevant premises, any equipment owned by the Vendor or retain the employees does not mean that the WONDER FOODS business was not purchased by WHAV. It is apparent from WHAV's evidence that it acquired the necessary assets to continue the WONDER FOODS business in substantially the same manner as the Vendor. WHAV's evidence shows that immediately following the acquisition, it was promoting WONDER FOODS products and using WONDER FOODS on the website, social media accounts and invoices. WHAV's evidence also includes proof of sale of WONDER FOODS products in July 2023, only weeks after acquiring the WONDER FOODS business.
3. I am satisfied that WHAV acquired all rights, title and interest in the Vendor's Marks and associated goodwill of the Wonder Foods business effective 22 June 2023 and I now turn to the grounds of opposition.

1. I refer to [61] above where I have outlined the general principles regarding this ground of opposition.
2. I have found at [80] that McJenks was not the owner of the mark WONDER FOODS as at 11 May 2023 but rather the Vendor was the owner of the WONDER FOODS mark and had not abandoned its rights, and at [102] that WHAV acquired rights in the Vendor's Marks effective 22 June 2023. Accordingly, Propel's opposition under s 58 fails.

(1) This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:

(b) a similar provision of the regulations made for the purposes of Part 17A.

(2) The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:

(a) first used the similar trade mark in respect of:

before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and

(b) has continuously used the similar trade mark in respect of those goods or services since that first use.

1. Neither Propel nor McJenks has established use of WONDER FOODS before the first use of that mark by the Vendor, whom I have found assigned its rights in the unregistered mark WONDER FOODS to WHAV with the goodwill in the Wonder Foods brand and business. Further, as I have found WHAV's opposition to the McJenks Applications to be successful, the provisions of s 44(4) do not apply. This ground of opposition fails.

1. Section 44 provides for opposition by the owner of a prior registration or application for a substantially identical or deceptively similar mark to that under opposition, covering the same or similar goods or services.
2. In support of this ground of opposition, Propel relies on application 2356038. As I have found that WHAV's Oppositions to the McJenks Applications is successful under s 58, application 2356038 no longer supports this ground of opposition. Consequently, the s 44 ground of opposition is not established.

1. Section 42(b) provides that an application for registration of a trade mark must be rejected if its use would be contrary to law.
2. Propel, as the opponent, bears the onus of establishing that use of the Trade Mark would (rather than could) be contrary to law.[49]
   1. In its SGPs, Propel claims that use of WHAV's Marks would breach the 'Competition and Consumer Act 2010' and constitute passing off.
   2. In its written submissions, Propel argues that use of WHAV's Marks would contravene s 18 of the Australian Consumer Law ('ACL'), being Schedule 2 of the Competition and Consumer Act 2010 (Cth), constitute passing off and amount to false representations regarding trade marks in breach of s 151 of the Act.
   3. Propel makes no mention of s 151 of the Act in its SGP and given it has not pleaded this in its SGPs, I consider that it is not appropriate to have regard to this matter.
   4. In relation to s 18 of the ACL, Propel submits that use of WHAV's Marks would mislead consumers into believing that Propel is the source of origin of those goods.
   5. The elements of passing off are:
      1. reputation in the relevant mark;
      2. misrepresentation leading to deception; and
      3. damage, or likelihood of damage, to the goodwill of the business relating to the relevant mark.[50]
   6. Accordingly, to succeed on this ground of opposition on the basis that use of WHAV's Marks will contravene s 18 of the ACL and/or constitute passing off, Propel must establish a reputation in the mark WONDER FOODS. Propel's evidence does not demonstrate a pre-existing reputation in WONDER FOODS such that consumers would understand WHAV's WONDER FOODS products to be those of Propel, rather than related to the Vendor. Any reputation in the WONDER FOODS mark resides with the Vendor, and then WHAV as its successor in title. In the circumstances, I am not satisfied that use of WHAV's Marks would contravene s 18 of the ACL or constitute passing off.
   7. The s 42(b) ground of opposition fails.

1. Pursuant to s 62(b) registration of a trade mark may be opposed on the basis that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars.
2. Propel particularised this ground of opposition as follows:

The Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars. The Applicant has filed evidence of use in relation to Trade Mark No. 2393413 [and 2393414], which is not evidence of use of the trade mark by the Applicant.

1. Propel's submissions on this ground are directed to the examination of the WHAV Applications and the evidence filed by WHAV to secure acceptance of those applications under s 44(4). Neither party has put into evidence the examination reports, evidence filed under s 44 or any other documents pertaining to prosecution of the WHAV Applications. It is not appropriate for Propel to make submissions on these matters without putting them in evidence. Propel bears the onus of establishing that the WHAV Applications were accepted on the basis of evidence or representations that were false in material particulars and it has done nothing to discharge this onus.
2. In any event, I have found that WHAV properly acquired the Vendor's Marks and associated goodwill in the Wonder Foods business and hence it was entitled to rely on the Vendor's use of the Vendor's Marks in support of the WHAV Applications.
3. The s 62(b) ground of opposition is unsuccessful.

1. Section 62A provides for the opposition to registration of a trade mark on the ground that the application was made in bad faith.
2. There have been two Federal Court decisions that substantively considered s 62A: Fry Consulting v Sports Warehouse Inc (No 2)[51] and DC Comics v Cheqout Pty Ltd[52] ('DC Comics'). The following propositions emerge from each of these two decisions relevant to the present opposition:

(a) Bad faith for the purposes of s 62A must be [as at the priority date] and must relate to the making of the subject of the application:[53]

(b) Section 62A does not require the opponent to establish that the trade mark's use would result in deception or confusion. However, evidence to that effect may be persuasive in considering whether the application to register a mark was in bad faith:[54]

(c) The onus of proving bad faith rests upon the opponent:[55]

(d) All of the circumstances surrounding the application to register the mark are relevant:[56]

(e) The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading:[57]

(f) While the seriousness of an allegation of bad faith that "impugns the character of an individual or collective character of a business" requires correspondingly cogent evidence, the standard of proof is the balance of probabilities, rather than that of beyond reasonable doubt[58]

(g) Conduct which falls "short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area" is sufficient. Dishonesty is not required. Bad faith requires both subjective and objective elements; it is a combined test[59]

(h) Subjective naivety does not exclude a determination of bad faith for the purposes of s 62A.

• On 11 May 2023, being 5 months prior to the filing of the Applicant's trade mark application, Trade Mark No. 2356038 was filed by the Opponent's licensor, and shortly thereafter, the use of it was licensed to the Opponent.

• In or about late May 2023 and on several occasions later (still prior to the priority date of the opposed trade mark), the Opponent, via its solicitor, notified the Applicant of the Opponent's use of Trade Mark No. 2356038 in relation to the subject goods, including Dietetic substances adapted for medical use; vitamins and vitamin supplements; dietary and nutritional products (meal replacements) and supplements; minerals and mineral supplements; nutritional supplements; herbal remedies; protein supplements.

• The Applicant, being wholly aware of the Opponent's Licensor's trade mark rights, and the considerable use of Trade Mark No. 2356038, the Applicant proceeded to file the current trade mark application on 3 October 2023 for a much wider set of goods, which wholly encompasses the goods of the Trade Mark No. 2356038.

• It is the Opponent's belief that the current trade mark application was filed in an attempt by the Applicant to attain registration without the Opponent being aware of same (i.e. to deceive the Opponent and usurp its trade mark rights).

• The Applicant has also filed evidence of use in relation to Trade Mark No. 2393414, which is not evidence of use of the trade mark by the Applicant. The reliance on false evidence, and the attempted misleading of the Australian Trade Marks office is conduct that is well below the standards of ordinary business practice, and also well below standards of acceptable commercial behaviour observed by reasonable and experienced persons in the supplements industry.

1. Propel again relies on the argument that the Vendor ceased trading, abandoned its rights in the Vendor's Marks and did not assign any rights in the unregistered Vendor's Marks. Further, WHAV was aware at the time of filing the WHAV Applications that Propel/McJenks were using the WONDER FOODS mark and McJenks owned an accepted application for WONDER FOODS in class 5. Accordingly, Propel claims that the WHAV Applications were filed in bad faith.
2. I have already found that the Vendor/Receivers did not abandon the Vendor's Marks and validly assigned rights in those marks to WHAV. Regardless, WHAV believed that they had acquired rights in the Vendor's Marks and were entitled to apply for registration. Such conduct is not underhanded or unscrupulous but in accordance with ordinary commercial standards of business.
3. I am satisfied that the WHAV Applications were not filed in bad faith and the s 62A ground of opposition fails.

Discussion- WHAV's opposition to the Removal Application

1. Part 9 of the Act governs the removal of trade marks from the Register for non-use. The Removal Application nominated grounds for removal under both ss 92(4)(a) and 92(4)(b). Section 92 relevantly provides:

(4) An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:

(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

(ii) to authorise the use of the trade mark in Australia; or

(iii) to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services to which the non‑use application relates and that the registered owner:

(v) has not used the trade mark in good faith in Australia;

in relation to those goods and/or services at any time before the period of one month ending on the day on which the non‑use application is filed;

(b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:

(ii) used the trade mark in good faith in Australia;

in relation to the goods and/or services to which the application relates.

1. Sections 92(4)(a) and 92(4)(b) provide distinct and alternative grounds for removal. Due to the specifics of these provisions, paragraph (a) is considered to effectively merge with paragraph (b) once a trade mark has been registered for five years.[60] As the Challenged Mark has been registered for more than five years as at the filing date of the Removal Application, I need only consider the application for removal under s 92(4)(b).
2. For the purposes of s 92(4)(b), the relevant period is the three year period ending on 27 February 2024 ('Relevant Period').
3. WHAV bears the onus of rebutting an allegation made under s 92(4)(b)[61] on the balance of probabilities.[62]
4. In Woolly Bull Enterprises Pty Ltd v Reynolds,[63] Drummond J observed that the expression 'use in good faith' has a well understood meaning in terms of s 92, namely it is 'real, as opposed to token, use in a commercial sense'. Provided the use is in good faith, 'a single bona fide use of the mark' may be enough to rebut an allegation of non-use.[64] Little weight is to be given to assertions of use which are not supported by documentary evidence.[65] In Nodoz Trade Mark, Wilberforce J said that if a registered owner relies on one single act of use of the trade mark, then that single act ought to be established by 'if not conclusive proof, at any rate overwhelmingly convincing proof'.[66]
5. Under s 101, if the grounds for partial removal are established, I may decide to remove or partially remove the Trade Marks from the Register in respect of any or all of the services identified in the Removal Application, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark from the Register.
6. WHAV argues that it, or the Vendor, used the Challenged Mark in Australia for the Registered Services during the Relevant Period. If there was any non-use, WHAV attributes this to the Vendor's financial difficulties before WHAV acquired the mark. WHAV also submits that, given it purchased the mark to use for these services, discretion should be exercised not to remove the registration.
7. In support of its claim to have used the Challenged Mark, Mr Bailey declares in Bailey 1 that he telephoned existing WHAV customers to offer the Registered Services. He also provides advertising expenditure and revenue figures for the Registered Services provided by reference to the Challenged Mark. Further, WHAV points to the following instances of use of the Challenged Mark (or a mark with additions or alterations not substantially affecting the identity of the Challenged Mark) for the Registered Services:
   1. Email of 31 August 2023 from WHAV to a potential client (sent to two Gmail accounts with details redacted) with the subject heading 'Brand Development' which refers to 'creating a brand and range of health food products for you' and an attachment outlining the process and timeframe and seeking the client's confirmation it wishes to proceed;[67]
   2. Letter of Engagement signed on 4 September 2023 for branding and marketing services from 7 September 2023 to 7 March 2024 to create the WHOLEY MOLEY Food Co brand (with the customer details redacted);[68] and
   3. A progress invoice dated 7 September 2023 in respect of the brand creation of WHOLEY MOLEY Food Co (with customer details redacted) for 'Brand Development 1/6'.[69]
8. Propel claims that because the aforementioned materials are redacted, it is impossible to verify the existence of an actual customer or customers. Further, based on the revenue figures and amount outlined in the Letter of Engagement, WHAV appears to have been paid in full but trade mark registration 2404592 for WHOLEY MOLEY Food Co. (fig) remains in the name of WHAV despite the Letter of Engagement providing that it would be assigned to the customer on completion.
9. In Bailey 2, Mr Bailey confirms that the 31 August email was sent to an existing customer who then engaged WHAV to provide the Registered Servies and signed the Letter of Engagement on 4 September 2023 leading to the progress invoice being issued on 7 September 2023. Mr Bailey declares that the customer asked for its identifiable personal details to be redacted. Further, Bailey 2 continues to explain that documents have been redacted because WHAV believes that Propel has inappropriately used some of the confidential information and evidence shared by WHAV in the proceedings and Bailey 2 provides examples.
10. Firstly, I note that WHAV's evidence shows use of the 413 Mark rather than the Challenged Mark. In my opinion, the 413 Mark is substantially identical to the Challenged Mark. Neither the 413 Mark nor the Challenged Mark have a colour limitation and accordingly, the only difference between the two marks is inclusion of the non-distinctive word 'australia' in the 413 Mark and a minor difference in the device element which appears in two colours in the Challenged Mark and only one colour in the 413 Mark. These differences are additions or alterations not substantially affecting the identity of the Challenged Mark.
11. I find WHAV's evidence to be credible. It is common for customer details to be redacted in evidence particularly in opposition proceedings where` the parties are offering competitive products. Hence, it is understandable that WHAV would not wish to share these details with Propel. This explanation is more plausible than WHAV fabricating its evidence.
12. In relation to Propel's submission that the WHOLEY MOLEY mark is still in the name of WHAV, whilst Propel has commented in its evidence on the AINA FOODS Logo being registered in the name of WHAV, it makes no such comment in relation to the WHOLEY MOLEY mark. Hence Mr Bailey has not explained in his evidence the delay in assigning the mark to the customer. However, in response to Propel's submissions on this point at the hearing, WHAV argued that there could be any number of reasons for the delay. Bailey 2 also explains that WHAV has delayed promoting and more actively pursuing use of WONDER FOODS for the Registered Services because of these proceedings.
13. Having considered the above, I am satisfied on the balance of probabilities that WHAV used the Challenged Mark (or a mark with additions or alterations not substantially affecting the identity of the mark) in good faith for the Registered Services during the Relevant Period.

1. I have found that WHAV has established a ground of opposition under s 58 for all of the goods covered by the McJenks Applications except 'bottled drinking water'.
2. 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.[70]

1. Under the principles outlined above, the Registrar may proceed to reject an application in its entirety where an opposition has been established for some but not all of an applicant's goods or services, but also has a discretion to offer an amendment to an applicant, allowing it to remove the goods and services for which a ground of opposition has been established.
2. In this case, WHAV has established a ground of opposition for all of the claimed goods except for one item. In all the circumstances, I do not consider it appropriate to offer McJenks an opportunity to amend the goods of application 2441563 to 'bottled drinking water'.
3. Accordingly, I refuse to register applications 2356038 and 2441563.
4. Both parties have sought an award of costs. As costs generally follow the event, I award costs against McJenks in the opposition to application 2356038 under s 221 in accordance with the amounts specified in Schedule 8 of the Regulations. In relation to the opposition to application 2441563, I award costs against McJenks to be taxed in the same manner as indicated in Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd ('Hume Industries').[71]

1. Propel has failed to establish any of the nominated grounds of opposition it pursued. I direct that applications 2393413 and 2393414 may proceed to registration not less than one month from the date of this decision.
2. I award costs against Propel for the opposition to application 2393413 under s 221 in accordance with Schedule 8 of the Regulations. In relation to the opposition to application 2393414, I award costs against Propel to be taxed in the same manner as indicated in Hume Industries.[72]

1. I have found that WHAV has used the Challenged Mark, or a mark with additions or alterations not substantially affecting the identity of the Challenged Mark, during the Relevant Period for the Registered Services. Accordingly, I refuse to remove registration 1836264 and the Challenged Mark may remain on the Register.
2. I award costs against Propel under s 221 in accordance with Schedule 8 of the Regulations.
3. If the Registrar is served with a notice of appeal in any of the aforementioned matters within one month from the date of this decision, I direct that the disposition of the applications and registration of the Challenged Mark be in accordance with the court's direction or order.

Class 5: Acai powder dietary supplements; Albumin dietary supplements; Alginate dietary supplements; Antibiotic food supplements for animals; Antioxidant supplements; Antioxidants (dietary supplements); Bee glue (propolis) dietary supplements; Brewer's yeast dietary supplements; Carbohydrate based dietary supplements; Casein dietary supplements; Collagen based medicated supplements; Colostrum supplements; Dietary food supplements; Dietary nutritional supplements; Dietary protein supplements; Dietary supplements; Dietary supplements for animals; Dietary supplements for human beings; Dietary supplements for infants; Dietary supplements with a cosmetic effect; Dietetic food supplements adapted for medical purposes; Edible fish oil (cod liver oil) being dietary supplements; Enzyme dietary supplements; Fibre supplements; Flavonoid substances for use as a dietary supplement; Food supplements (dietary supplements); Food supplements for animals (minerals); Food supplements for animals (trace elements); Food supplements for animals (vitamins); Food supplements for medical purposes; Ginseng (dietary supplements); Ginseng capsules (dietary supplements); Ginseng extract (dietary supplements); Glucose dietary supplements; Herbal dietary supplements; Lactose (nutritional supplement); Lecithin dietary supplements; Linseed dietary supplements; Linseed oil dietary supplements; Maltodextrins (nutritional supplements); Medicated food supplements; Medicated preparations for use as supplements for food; Medicated supplements for animal feedstuffs; Medicated supplements for food; Medicated supplements for foodstuffs for animals; Medicated supplements for foodstuffs for human consumption; Medicinal food supplements; Medicinal food supplements for animals; Milk calcium concentrate (nutritional supplement); Milk sugar (nutritional supplement); Mineral dietary supplements; Mineral dietary supplements for animals; Mineral dietary supplements for humans; Mineral preparations for use as supplements to drinking water; Non-carbohydrate dietary supplements; Nutritional animal feed supplements; Nutritional drinks being dietary food supplements; Nutritional feed supplements for animals; Nutritional supplement energy bars; Nutritional supplement protein bars; Nutritional supplements; Nutritional supplements for animal feed; Nutritional supplements for animals; Nutritional supplements for medical use; Plant compounds for use as dietary supplements (medicinal); Plant compounds for use as dietary supplements (veterinary); Plant extracts (dietary supplements); Pollen (dietary supplement); Pollen dietary supplements; Powdered whey protein being dietary supplements; Powdered whey protein being nutritional supplements; Probiotic bacterial dietary supplements; Propolis dietary supplements; Protein dietary supplements; Protein supplements for animals; Protein supplements for humans; Royal jelly (nutritional supplement); Royal jelly dietary supplements; Supplements (trace element) for foodstuffs for animals; Supplements (trace element) for foodstuffs for human consumption; Vitamin preparations in the nature of food supplements; Vitamin supplement patches; Vitamin supplements; Vitamin supplements for animals; Vitamin supplements for foodstuffs for animals; Vitamin supplements for foodstuffs for human consumption; Vitamin supplements for use by lactating women; Vitamin supplements for use by pregnant women; Wheat germ dietary supplements; Whey protein being dietary supplements; Whey protein being nutritional supplements; Whey protein concentrates being dietary supplements; Whey protein concentrates being nutritional supplements; Whey protein dietary supplements; Whey protein isolates being dietary supplements; Whey protein isolates being nutritional supplements; Yeast dietary supplements; Vitamin C preparations

Class 5: Acai powder dietary supplements; Albumin dietary supplements; Alginate dietary supplements; Antibiotic food supplements for animals; Antioxidant supplements; Antioxidants (dietary supplements); Bee glue (propolis) dietary supplements; Brewer's yeast dietary supplements; Carbohydrate based dietary supplements; Casein dietary supplements; Collagen based medicated supplements; Colostrum supplements; Dietary food supplements; Dietary nutritional supplements; Dietary protein supplements; Dietary supplements; Dietary supplements for animals; Dietary supplements for human beings; Dietary supplements for infants; Dietary supplements with a cosmetic effect; Dietetic food supplements adapted for medical purposes; Edible fish oil (cod liver oil) being dietary supplements; Enzyme dietary supplements; Fibre supplements; Flavonoid substances for use as a dietary supplement; Food supplements (dietary supplements); Food supplements for animals (minerals); Food supplements for animals (trace elements); Food supplements for animals (vitamins); Food supplements for medical purposes; Ginseng (dietary supplements); Ginseng capsules (dietary supplements); Ginseng extract (dietary supplements); Glucose dietary supplements; Herbal dietary supplements; Lactose (nutritional supplement); Lecithin dietary supplements; Linseed dietary supplements; Linseed oil dietary supplements; Maltodextrins (nutritional supplements); Medicated food supplements; Medicated preparations for use as supplements for food; Medicated supplements for animal feedstuffs; Medicated supplements for food; Medicated supplements for foodstuffs for animals; Medicated supplements for foodstuffs for human consumption; Medicinal food supplements; Medicinal food supplements for animals; Milk calcium concentrate (nutritional supplement); Milk sugar (nutritional supplement); Mineral dietary supplements; Mineral dietary supplements for animals; Mineral dietary supplements for humans; Mineral preparations for use as supplements to drinking water; Non-carbohydrate dietary supplements; Nutritional animal feed supplements; Nutritional drinks being dietary food supplements; Nutritional feed supplements for animals; Nutritional supplement energy bars; Nutritional supplement protein bars; Nutritional supplements; Nutritional supplements for animal feed; Nutritional supplements for animals; Nutritional supplements for medical use; Plant compounds for use as dietary supplements (medicinal); Plant compounds for use as dietary supplements (veterinary); Plant extracts (dietary supplements); Pollen (dietary supplement); Pollen dietary supplements; Powdered whey protein being dietary supplements; Powdered whey protein being nutritional supplements; Probiotic bacterial dietary supplements; Propolis dietary supplements; Protein dietary supplements; Protein supplements for animals; Protein supplements for humans; Royal jelly (nutritional supplement); Royal jelly dietary supplements; Supplements (trace element) for foodstuffs for animals; Supplements (trace element) for foodstuffs for human consumption; Vitamin preparations in the nature of food supplements; Vitamin supplement patches; Vitamin supplements; Vitamin supplements for animals; Vitamin supplements for foodstuffs for animals; Vitamin supplements for foodstuffs for human consumption; Vitamin supplements for use by lactating women; Vitamin supplements for use by pregnant women; Wheat germ dietary supplements; Whey protein being dietary supplements; Whey protein being nutritional supplements; Whey protein concentrates being dietary supplements; Whey protein concentrates being nutritional supplements; Whey protein dietary supplements; Whey protein isolates being dietary supplements; Whey protein isolates being nutritional supplements; Yeast dietary supplements

[1] Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) ('Act') or the Trade Marks Regulations 1995 (Cth) ('Regulations'), respectively.

[2] Hereinafter a Statement of Grounds and Particulars is referred to as an 'SGP'.