Section 44**

1. Section 44 relevantly provides (several notes omitted):

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

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

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

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

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

Note 1: For deceptively similar see section 10.

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

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

(a) it is substantially identical with, or deceptively similar to:

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

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

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

Note 1: For deceptively similar see section 10.

Note 2: For similar services see subsection 14(2).

(a) that there has been honest concurrent use of the 2 trade marks; or

(b) that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

(a) beginning before the priority date for the registration of the other trade mark in respect of:

(i) the similar goods or closely related services; or

(ii) the similar services or closely related goods; and

(b) ending on the priority date for the registration of the applicant's trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2: For predecessor in title see section 6.

Note 3: For priority date see section 12.

1. The SGP nominates the following three registrations in the name of the Opponent ('Opponent's Marks') details of which appear below:

Class 6: Tool boxes, tool cabinets and tool chests

Class 3: Abrasives, including abrasive preparations, abrasive materials, abrasive boards, abrasive cloths and abrasive compounds; discs of abrasive materials and blocks of abrasive materials; compounds in this class, including abrasive compounds, grinding compounds and other compounds for use in grinding, abrading, sanding and/or polishing

Class 6: metal tanks, storage chests and storage apparatus of metal; tool boxes and tool chests of metal (empty); parts, fittings and accessories in this class for all the aforesaid goods

Class 7: Machines, including abrading machines, grinding machines, bench grinding machines, sanding machines, polishing machines, metal marking machines and auger machines; machine tools; sanding belts and sanding disks for use with machines; abrasive wheels and abrasive bits for machines; welding electrodes; compressors, including air compressors and compressors for fluids and gases; compressed air machines and tools; pneumatic tools; air powered tools, including for drilling, inflating and spraying; welding apparatus, machines and equipment, including electric and gas welding apparatus, machines and equipment; welding torches; vacuum cleaners, including wet and dry vacuum cleaners, high pressure washers and cleaners; pumps, including water pumps, fluid pumps, air pumps and pneumatic pumps; electric power supplies, uninterruptable power supplies and generators in this class; air hose reels; non-metallic hoses for use in hydraulic systems in machines; drill bits and auger bits for machines; parts, fittings and accessories in this class for all the aforesaid goods

Class 8: bits, including drill bits and auger bits, for hand tools; bench vices; abrasive wheels and abrasive bits for hand tools; parts, fittings and accessories in this class for all the aforesaid goods

Class 9: electric and electronic motor controls, electrical control apparatus for welding machines; welding apparatus, instruments and equipment in this class, including electric and electric arc welding apparatus, instruments and equipment; welding helmets and welding masks; eyewear including protective eyewear; power sources, power supplies, uninterruptable power supplies, batteries and chargers for batteries and other power sources and supplies, including for welding apparatus, instruments and equipment; protective and safety equipment and clothing, including helmets, masks, visors and shields for welding; parts, fittings and accessories in this class for all the aforesaid goods

Class 20: Water storage tanks of plastic; tanks, not of metal or masonry; parts, fittings and accessories in this class for all the aforesaid goods

Class 35: Export-import agency services; Import-export agencies in the field of energy; Import-export agency services; Import agency services; Business consultancy services relating to manufacturing

1. As a starting point, to successfully oppose the Application pursuant to s 44, the Opponent must establish that:
   • at least one of the Opponent's Marks has a priority date which is earlier than the Relevant Date and is held in a name other than that of the Applicant (the 'first requirement');
   • the Trade Mark is substantially identical with or deceptively similar to at least one of the Opponent's Marks (the 'second requirement'); and
   • the Subset Goods and Services are similar to the Opponent's goods or the Opponent's services or are closely related to the Opponent's goods or services (the 'third requirement').
2. I am satisfied that the priority date of each of the Opponent's Marks is earlier than the Relevant Date and that the Opponent's Marks are in a name other than the Applicant. Therefore, the first requirement is satisfied for the Opponent's Marks.
3. I move then to consider whether the Trade Mark is substantially identical with or deceptively similar to the Opponent's Marks. In this regard, the Opponent's Marks are all identical save that the 423 and 936 Marks are in colour. As the 423 and 936 Marks have no colour limitation, these marks are taken to be registered for all colours.[11] I therefore consider the Opponent's Marks to be identical for the purposes of determining substantial identity and deceptive similarity and for this purpose, I refer to the Opponent's Marks collectively as the 'Opponent's Mark'.
4. The SGP claims that the Trade Mark is similar to the Opponent's Mark. The Opponent's submissions only refer to the Trade Mark being deceptively similar to the Opponent's Mark and not substantially identical.[12] In the Opponent's oral submissions, the Opponent did not press that the Trade Mark was substantially identical. For the sake of completeness, I do not consider the Trade Mark to be substantially identical to the Opponent's Mark. Compared side by side as a whole,[13] the Trade Mark has obvious visual and aural differences to the Opponent's Mark and as a consequence, there is a total impression of dissimilarity.[14]
5. Next, I will consider whether the Trade Mark is deceptively similar to the Opponent's Mark.
6. Section 10 provides a definition of deceptively providing that 'a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion'.
7. Justice Windeyer outlined the following approach for the assessment of deceptive similarity in Shell:

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].[15]

1. The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[16] conveniently stated the relevant principles, which were summarised in The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd[17] ('The Agency') as follows:

(a) the resemblance between the two marks must be the cause of the likely deception or confusion;[18]

(b) in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[19]

(c) the marks should not be compared side by side;[20]

(d) the effect of spoken description must be considered; if a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods (or services), then similarities both of sound and of meaning may play an important part;[21]

(e) the focus is upon the effect or impression produced on the mind of potential customers of the goods (or services) in relation to which the two marks are used and in the case of the registered mark, allowing for 'imperfect recollection';[22]

(f) the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the marks prior to filing, or any reputation associated with the registered mark;[23]

(g) the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods or services covered by the registration), with the impression that the notional buyer would have of notional and normal fair use of the opposed mark;[24]

(h) 'deceived' implies the creation of an incorrect belief or mental impression; 'causing confusion' may merely involve 'perplexing or mixing up the minds' of potential customers; [25]

(i) the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected, having regard to the character of the customers who would be likely to buy the goods in issue;[26]

(j) it is not necessary to establish actual probability of deception or confusion, but a mere possibility of confusion is not enough. There must a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be 'a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source';[27]

(k) evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[28] and

(l) any intention to deceive or cause confusion may be a relevant consideration but is not required.[29]

1. Distinctiveness of the compared trade marks is a factor that can legitimately be taken into account when considering deceptive similarity.[30] It is also relevant to take into account whether elements of the rival marks have a descriptive character'.[31]
2. In the case of a composite mark, all the elements of the mark must be considered in their context including the size, prominence, and the stylisation of words and devices, and the relationship of all these elements to each other.[32]
   1. Justice French expressed the view in Woolworths Ltd v Registrar of Trade Marks ('Woolworths')[33] that the determination of whether, and to what degree, an applicant's goods or services are similar to, or closely related to, the relevant goods or services of the earlier trade mark owner is 'logically antecedent to' assessing the similarity of the parties' trade marks. In particular, French J explicitly approved the observation in Wilcox J's first instance decision in the Woolworths matter that, '[t]he closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive'.[34]
   2. In light of the authorities, I must decide whether there is a real tangible risk that the result of the use of the Trade Mark will be that a reasonable person will be caused to wonder whether it might not be the case that the Applicant's Subset Goods and Services bearing the Trade Mark are from the same source as goods and services bearing the Opponent's Mark. I must compare the respective wholes with regard to their essential or distinguishing features, and consider them visually and aurally, in the context of the relevant surrounding circumstances. I should account for imperfect recollection of the reasonable person.
   3. The Opponent submits as follows:
      • the dominant features of the Opponent's Mark are the prominent word WHITE with a W device in white on a geometric block background. The word INTERNATIONAL is in relatively smaller font and is a less distinctive component of the mark. The main impression on the consumer is WHITE with a W device;
      • the Trade Mark consists of the word WHITES with a W device in white on a block geometric background; and
      • a consumer of ordinary intelligence and memory, would not necessarily notice the slight differences in the two W devices, nor recall the difference between WHITE and WHITES. Based on imperfect recollection, there is a real and tangible danger that an ordinary consumer would consider the marks to be the same or at least related.
3. The Applicant submits as follows:
   • that the word WHITE in the Opponent's Mark is not inherently distinctive as it is a common surname in Australia and a search of the Australian Trade Mark Register reveals 233 pending and registered WHITE trade marks in Australia and 18 WHITES trade marks in the classes of the Subset Goods and Services.[35] Therefore the word WHITE in the Opponent's Mark should be read down and not characterised as an essential feature in the Trade Mark merely because it is the only word in a composite mark. The Applicant refers to Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd[36] and Crazy Ron's Communications Pty Ltd v Mobileworld Pty Ltd;[37] and
   • As the word WHITE is a common surname, the word WHITES is appreciably different and distinguishable from WHITE and taking into account the other features of the respective marks, the marks as a whole are distinguishable from each other.
4. In my view, the Trade Mark is deceptively similar to the Opponent's Mark. The ideas and impressions formed by the two trade marks are very similar, visually, aurally and conceptually, even bearing in mind that the letter W and the well known surname/colour WHITE/WHITES of the respective marks have low distinctiveness. The key visual and aural features of the respective marks are more than just a letter/surname combination. Both marks contain a stylised letter W and the word WHITE or WHITES. While the Opponent's Mark also contains the diminutive word INTERNATIONAL, and the word INTERNATIONAL cannot be ignored,[38] it is non distinctive so it can, to some extent, be discounted in comparing the respective marks.[39]
5. Both marks display the same letter W albeit in different stylisations on a geometric background, where the geometric background in the Opponent's Mark is a circle and the geometric background in the Trade Mark is a rhombus. The key features W and the word WHITE or WHITES are displayed in very similar configurations, namely the W left of the word WHITE or WHITES. The likely impression and connotation that consumers would form and recall of the Opponent's Mark is the word WHITES and the letter W in the same plane. The configuration of the word WHITES and the letter W are likely to fix in the consumer's eye. Consumers are unlikely to recall the exact geometric shape upon which the W resides nor the word INTERNATIONAL as they do not diminish the prominence and the main identifying element of the word WHITES and the letter W.
6. Considering the prominence and placement of the word WHITE and the letter W in the Trade Mark, and the similarities when compared to the Opponent's Mark, allowing for the imperfect recollection of consumers of ordinary memory and intelligence, I consider there to be a real, tangible danger that the trade marks are likely to be mistaken one for the other or one is associated with the other. The difference between the word WHITE and WHITES, the stylisation of the letter W and the differing geometric shapes do not create a point of distinction sufficient to mitigate the significant risk of confusion.
7. I am satisfied that there is 'a real, tangible danger' that a consumer 'might be caused to wonder' whether the Subset Goods and Services originate from the same source. I find that the two marks under comparison are deceptive similar. The second requirement is therefore satisfied.
8. I now turn to the third requirement, whether the Subset Goods and Services are similar to the goods and services of at least one of the Opponent's Marks or closely related to the goods and services of at least one of the Opponent's Marks.
9. Goods are 'similar to other goods' if they are the same or of the same description as the other goods.[40] The factors relevant to the consideration of whether goods are similar include their nature including their origin and characteristics, uses made of the goods including their intended purposes, source of manufacture, respective trade channels and whether the ordinary consumer of the goods would regard the goods as being from a single source.[41] These can be conveniently summarised as: whether the respective goods are of the same nature; whether they are used by the same people for the same purposes; and whether the trade channels are the same. No single consideration is conclusive in itself.[42]
10. A fuller explanation of trade channels as approved by the High Court in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd[43] considers whether the goods are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same classes of customers, and whether by those engaged in their manufacture or distribution they are regarded as belonging to the same trade.
11. The question is one of fact[44] and the phrase 'goods of the same description' ought not to be given too restrictive a construction so as to be limited to goods substantially analogous in kind, or commonly used as mere substitutes or alternatives, the one for the other.[45]
12. In Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd, Burchett J said:

[The object of s 23(2)][46] seems plainly to be the avoidance of confusion and deception in the market place, which would be likely to arise should a mark become available for use by two or more different companies, which are unrelated, upon goods of the same description. From that point of view, the expression "goods of the same description" is generally to be understood in such a sense that, if two different items are held not to fall within the expression, their sale under the same mark by different companies is not likely to lead to confusion or deception. That approach would seem to me to accord with the common sense business view recommended by Lord Evershed.[47]

1. In Goodman Fielder Pte Ltd v Conga Foods Pty Ltd, Burley J referring to the words 'goods of the same description' in the context of a s 92 removal action said:

Accordingly, courts in recent times have consistently found it to be of significance that the policy underlying the expression "goods of the same description" is the need to avoid any confusion and deception in the market place which would be likely to arise should a mark become available for use by two or more different companies upon goods of the same description. That policy, when considered in the context of modern shopping practices in large stores where multiple products can be displayed near each other, such as in supermarkets, tends to expand the likelihood that products that at first blush are of quite different character and which are manufactured differently will nonetheless be goods of the same description because there is an increased likelihood that goods will be placed in close proximity to each other in the same store.[48]

1. Services of the same description may be services that one might expect to be provided by one trader under the same trade mark or those whose providers consider that they belong to the same trade. Essentially the principles enunciated in Southern Cross[49] and J Lyons[50] regarding goods of the same description apply in relation to services.[51]
2. The Act does not define the words 'closely related'. In Registrar of Trade Marks v Woolworths, French J stated that the relationship between goods and services, 'may, and perhaps in most cases will, be defined by the function of the service with respect to the goods'.[52] The nature, function and circumstances of the trade, such as trade channels, are also relevant. The likelihood of consumer association of the services with the goods, because they are generally offered by the same people also may be a relevant factor.[53] It can also be relevant as to whether the services are performed directly upon or by the means of the goods and whether the goods and services are generally regarded by the ordinary consumer as originating in, or as being part of, the one industry or trade, or, a closely related industry or trade.[54]
3. In considering the Subset Goods and Services and the Opponent's goods and services, I should look to the ordinary meaning of the words and the notional normal and fair use, not restricting myself to how or in what goods or services the Opponent or Applicant actually trade.[55] I should consider the context in deciding whether ordinary consumers of the goods and services would see the goods and services as having the same trade origin[56] and judge the goods and services on the basis of business realities and common sense - and not on the basis of abstract reasoning.[57] I should also be aware that the nomination of a class for particular goods is not decisive as to the scope of a given registration.[58]
4. The Opponent argues that the Subset Goods and Services are of the same description as the goods and services of the Opponent's Marks.
5. The Applicant submits that at most there is only a limited degree of crossover in the respective goods and services and the Applicant should be given an opportunity to refine the Subset Goods and Services should it be held that some of the Subset Goods and Services are similar or closely related to the goods and services of the Opponent's Marks.
6. The Subset Goods and Services are in classes 7, 8, 9 and 35 and cover a wide variety of goods and services. It is necessary to break down the Applicant's Goods and Services and make a number of separate comparisons.

Class 7: Brushes being parts of motors and engines for motor vehicles; gaskets for internal combustion engines for motor vehicles; fuel filters for motor vehicles; air filters for motor vehicles; fuel pumps for land vehicles; motor mufflers for motor vehicles; exhausts for motors and engines for motor vehicles; pressure regulators being parts of machines for motor vehicles; engine timing components, namely, cam sprockets and chains for motor vehicles; starter motors for motor vehicles; kick starters for motorcycles; taps being parts of engines for motor vehicles; radiators for motors and engines for motor vehicles; gaskets for internal combustion engines for motor vehicles; radiators for motors and engines for motor vehicles; mechanical lifts and jacks for motor vehicles; loading ramps for motor vehicles; sensors being parts of internal combustion engines for motor vehicles; parts, fittings and accessories for the aforesaid

Class 7: Machines, including abrading machines, grinding machines, bench grinding machines, sanding machines, polishing machines, metal marking machines and auger machines; machine tools; sanding belts and sanding disks for use with machines; abrasive wheels and abrasive bits for machines; welding electrodes; compressors, including air compressors and compressors for fluids and gases; compressed air machines and tools; pneumatic tools; air powered tools, including for drilling, inflating and spraying; welding apparatus, machines and equipment, including electric and gas welding apparatus, machines and equipment; welding torches; vacuum cleaners, including wet and dry vacuum cleaners, high pressure washers and cleaners; pumps, including water pumps, fluid pumps, air pumps and pneumatic pumps; electric power supplies, uninterruptable power supplies and generators in this class; air hose reels; non-metallic hoses for use in hydraulic systems in machines; drill bits and auger bits for machines; parts, fittings and accessories in this class for all the aforesaid goods

1. Orally, the Opponent submitted that all the Applicant's class 7 goods were similar to the Opponent's goods in class 7.
2. The Opponent's goods in class 7 claim machines and parts and accessories for machines. A machine is defined in the Macquarie Dictionary Online as: 'noun 1. an apparatus consisting of interrelated parts with separate functions, which is used in the performance of some kind of work e.g. sewing machine. 2. A mechanical apparatus or contrivance; a mechanism. 3. Something operated by a mechanical apparatus, as a motor vehicle, a bicycle, or an aeroplane. 4.Mechanics a. a device which transmits and modifies force or motion. b. simple machines, the six (sometimes more) elementary mechanisms, that is, the lever, wheel and axle, pulley, screw, wedge and inclined plane'.
3. A machine is a device that can be operated mechanically, electrically, or electronically for performing a task. Therefore, a machine does not require the use of a cord, battery, compressed air or power source to be operational and some hand tools which are operated manually, for example, a hand drill can be considered a machine.
4. Given the broad definition of the word machine, vehicles, motorcycles, motors and engines, including those used in vehicles and motorcycles, are machines. The Applicant's goods cover a variety of parts and accessories for vehicles, motors and engines. Regardless of the Applicant's limitation of motors and engines to land vehicles, motor vehicles or motorcycles, I am satisfied that the Applicant's goods in class 7 are all parts and accessories for vehicles, motors and engines, and are therefore parts and accessories for machines, and they fall within the Opponent's claim to parts and accessories of machines. The Applicant's goods in class 7 are therefore similar to the goods of the Opponent's 423 Mark.

Class 8: hand tools and implements (hand-operated) for use with vehicles; hand tools for use with vehicles, namely, ball joint separators; hand-operated automotive repair tools, namely, brake cylinder hones; hand-operated automotive repair tools, namely, brake pad spreaders; hand-operated automotive repair tools, namely, brake spring removers; hand-operated automotive repair tools, namely, disc brake piston cubes; hand-operated automotive repair tools, namely, drum brake adjusting tools; hand-operated automotive repair tools, namely, engine cylinder hones; hand-operated automotive repair tools, namely, ring compressors; hand-operated automotive repair tools, namely, valve holders; hand-operated automotive repair tools, namely, valve spring compressors; hand-operated automotive repair tools, namely, valve spring depressors; hand-operated automotive repair tools, namely, magnetic pick-up tools; hand operated lifts and jacks for vehicles; chain breaker tools for use with motorcycle chains; chain rivet tools for use with motorcycle chains, hand operated motorcycle lifting jacks; parts, fittings and accessories for the aforesaid

Class 3: Abrasives, including abrasive preparations, abrasive materials, abrasive boards, abrasive cloths and abrasive compounds; discs of abrasive materials and blocks of abrasive materials; compounds in this class, including abrasive compounds, grinding compounds and other compounds for use in grinding, abrading, sanding and/or polishing

Class 6: Tool boxes, tool cabinets and tool chests; metal tanks, storage chests and storage apparatus of metal; tool boxes and tool chests of metal (empty); parts, fittings and accessories in this class for all the aforesaid goods

Class 7: Machines, including abrading machines, grinding machines, bench grinding machines, sanding machines, polishing machines, metal marking machines and auger machines; machine tools; sanding belts and sanding disks for use with machines; abrasive wheels and abrasive bits for machines; welding electrodes; compressors, including air compressors and compressors for fluids and gases; compressed air machines and tools; pneumatic tools; air powered tools, including for drilling, inflating and spraying; welding apparatus, machines and equipment, including electric and gas welding apparatus, machines and equipment; welding torches; vacuum cleaners, including wet and dry vacuum cleaners, high pressure washers and cleaners; pumps, including water pumps, fluid pumps, air pumps and pneumatic pumps; electric power supplies, uninterruptable power supplies and generators in this class; air hose reels; non-metallic hoses for use in hydraulic systems in machines; drill bits and auger bits for machines; parts, fittings and accessories in this class for all the aforesaid goods

Class 8: bits, including drill bits and auger bits, for hand tools; bench vices; abrasive wheels and abrasive bits for hand tools; parts, fittings and accessories in this class for all the aforesaid goods

1. The Opponent submits that the Opponent's 'abrasives' (class 3), 'abrading, grinding and polishing machines and machine tools' (class 7) and 'abrasive wheels and bits' (class 8) are of a similar nature and purpose to the Applicant's 'hand-operated automotive repair tools, namely, brake cylinder hones and hand-operated automotive repair tools, namely, engine cylinder hones' (class 8).
2. The Applicant submits that cylinder hones are specialised goods in the automotive industry. and do not necessarily fall within the Opponent's general purpose 'abrasives', 'abrading, grinding and polishing machines' and 'machine tools and abrasive wheels and bits'.
3. I understand that a cylinder hone is a tool which uses abrasive particles to refine the surface finish of a cylinder bore by creating a crosshatch pattern on the cylinder walls and can be used for any internal combustion engine, not only in the automotive industry.
4. An abrasive is defined on the Macquarie Dictionary Online as: 'noun 1. Any material or substance used for griding, polishing, lapping etc., as emery or sand'. In essence a cylinder hone is a tool for abrading and not a material or substance. A cylinder hone itself is not an abrasive and neither is it an abrasive wheel or a bit. As such, I do not agree with the Opponent that the Applicant's cylinder hones are similar to the Opponent's abrasives (class 3) or abrasive wheels and bits (class 8). There is no nexus between these goods.
5. The Opponent's 'abrading and grinding machines and machine tools' (class 7) are not limited in their application nor their mode of operation. In essence a cylinder hone is an abrasive tool or a tool for abrading. As such, I agree with the Opponent that the Applicant's cylinder hones (class 8) are similar to the Opponent's abrading and grinding machines and machine tools (class 7). Therefore, I am satisfied that the Applicant's 'hand-operated automotive repair tools, namely, brake cylinder hones and hand-operated automotive repair tools, namely, engine cylinder hones' are similar to the Opponent's 'abrading and grinding machines and machine tools'.
6. I am also not satisfied that the Applicant's cylinder hones are similar to the Opponent's 'polishing machines' (class 7). The purpose of a cylinder hone is not to polish, even though this may be an effect achieved by honing. You would not purchase a polishing machine to hone a cylinder. There is no nexus between these goods.
7. The Opponent submits that the Applicant's automotive tools (class 8) and regular workshop tools and workshop supplies have a large degree of overlap and are of similar natures and trade channels. For example, spanners are both workshop tools and hand-operated hand tools and implements for use with vehicles, and can be stored in the Opponent's tool boxes, tool cabinets and tool chests (class 6). Tools and tool boxes are hardware items sold via hardware trade channels.
8. The Applicant submits that spanners have much more general application than for use with vehicles and would not necessarily fall within the description of 'hand tools and implements (hand-operated) for use with vehicles' and it is a stretch to imply that because 'hand tools and implements (hand-operated) for use with vehicles' may be stored in 'tool boxes, tool cabinets and tool chests', that this makes the goods similar.
9. I am not persuaded by the Opponent's argument that the Applicant's 'hand tools and implements (hand-operated) for use with vehicles' are similar to 'tool boxes, tool cabinets and tool chests' merely because they can be stored in these products. The inherent nature and characteristics of the goods and the intended use of the goods differ.
10. The Opponent submits that the Opponent's 'machines, compressed air machines and tools, pneumatic tools and air powered tools' (class 7) include pneumatic lifts, which are similar in nature and purpose to the Applicant's 'hand-operated lifts and jacks for vehicles and motorcycle lifting jacks' (class 8). In addition, the Applicant's various 'hand operated tools and implements (hand operated) for use with vehicles' (class 8) are simply hand-operated versions of the Opponent's 'pneumatic tools and air powered tools'.
11. The Applicant submits that pneumatic lifts are not necessarily covered by the Opponent's 'machines, compressed air machines and tools, pneumatic tools and air powered tools' (class 7) and do not crossover with the Applicant's 'hand-operated lifts and jacks for vehicles and motorcycle lifting jacks'. The Applicant also submits that there is no supporting evidence that the Applicant's class 8 goods are hand-operated versions of the Opponent's air powered tools.
12. As stated above at paragraphs [55]-[56], a machine is a device that can be operated mechanically, electrically, or electronically for performing a task and some hand tools which are operated manually can be considered a machine. In my view, based on the nature and use of 'hand operated lifts and jacks for vehicles and hand operated motorcycle lifting jacks', they would be considered machines. As such they fall within the Opponent's claim to machines (class 7) and are similar goods.
13. This leaves consideration of the broad claim to 'hand tools and implements (hand-operated) for use with vehicles' in class 8 which the Opponent submits are simply hand-operated versions of the Opponent's claim to 'compressed air tools, pneumatic tools and air powered tools (class 7) which is broad and not limited to use with vehicles. While air powered tools and their hand operated versions have inherent differences in their power source, their uses would appear to be similar. For example, a hand operated drill and a pneumatic drill are both used for drilling and a hand operated pump and a pneumatic pump are both used for pumping. However, the Opponent has not demonstrated that such products are usually produced by the same manufacturers nor provided evidence that the trade channels through which the Opponent's and the Applicant's products are offered, bought, and sold are the same or similar nor how consumers would perceive the market for these goods. As such, I am not inclined on the evidence before me, to infer in the Opponent's favour.

Class 9: fuses; fuses for land vehicles; electrical switches; safety-warning lights for vehicles, namely, strobes, rotating lights and bar lights; signalling lights; light switches; flashing safety lights; computer hardware and data processing computers in motorcycles; vehicle on-board computer hardware, software and monitors for automotive application for use in reading driver-relevant data, namely, traffic and weather conditions, travel destination information, distance driven, range, fuelling and charging locations and parking information, as well as in providing safety and convenience information, namely, information about route planning assistance, emergency roadside assistance, emergency call functions, stolen vehicle recovery assistance, remote door unlock assistance, operator-assisted calls and concierge services; vehicle on-board computer hardware, software and monitors for automotive application for use in operating and controlling entertainment systems, communication systems, Internet access and navigation systems; vehicle on-board computer hardware and software for connecting to mobile devices to allow vehicle data to appear on the mobile device; rectifiers; voltage regulators; electric relays for motor vehicles; solenoid valves for motor vehicles; electric coils for motor vehicles; batteries for motor vehicles; tire pressure gauges; motorcycle helmets; motorcycle goggles; articles of protective clothing for wear by motorcyclists for prevention against accident or injury; parts, fittings and accessories for the aforesaid

Class 9: electric and electronic motor controls, electrical control apparatus for welding machines; welding apparatus, instruments and equipment in this class, including electric and electric arc welding apparatus, instruments and equipment; welding helmets and welding masks; eyewear including protective eyewear; power sources, power supplies, uninterruptable power supplies, batteries and chargers for batteries and other power sources and supplies, including for welding apparatus, instruments and equipment; protective and safety equipment and clothing, including helmets, masks, visors and shields for welding; parts, fittings and accessories in this class for all the aforesaid goods

1. The Opponent submits that the Applicant's class 9 goods overlap substantially with the class 9 goods of the 423 Mark. In written submissions, the Applicant stated that any overlap between the Applicant's class 9 goods and the Opponent's class 9 goods is restricted to batteries and protective clothing. However, in oral submissions, the Applicant stated that all 'electrical goods related to the control of vehicles or their motors' were similar goods.
2. I agree with the Opponent and the Applicant that there is an overlap in respect of batteries and protective clothing. The Applicant claims:
   • 'batteries for motor vehicles'. A battery is a power source and a supply of power. Therefore, these goods are similar to the Opponent's 'power sources, power supplies, uninterruptable power supplies, batteries and chargers for batteries and other power sources and supplies'.
   • 'motorcycle helmets; motorcycle goggles; articles of protective clothing for wear by motorcyclists for prevention against accident or injury'. These protective wear goods are similar to the Opponent's claim to 'protective and safety equipment and clothing'.
3. Further, the Applicant also claims 'electrical switches'. Electrical switches are electrical controls for many products including motors. Therefore, in my view these goods are similar to the Opponent's claim to 'electric and electronic motor controls, electrical control apparatus for welding machines'.
4. As to the remaining goods claimed by the Applicant, the Opponent's submissions and evidence do not assist in the determination of which, if any, of the Applicant's electrical goods are related to the control of vehicles or their motors on the basis of business realities and common sense.
5. I find the Opponent has failed to discharge the onus for the remaining goods in class 9 and in particular which of the remaining goods claimed by the Application are electrical goods related to the control of vehicles or their motors.

Class 35: wholesale, retail and distribution of motorcycle and automotive parts, fittings and accessories; the bringing together, for the benefit of others, a variety of motorcycle and automotive parts, fittings and accessories, enabling customers to conveniently view and purchase the goods; presentation of motorcycle and automotive goods on communication media, for retail purposes; discount services (retail, wholesale, or sales promotion services), in connection with motorcycle and automotive goods; export-import agency services in connection with motorcycle and automotive goods; advertising in connection with motorcycle and automotive goods; design of advertising materials in connection with motorcycle and automotive goods; graphic advertising services in connection with motorcycle and automotive goods; dissemination of advertising matter in connection with motorcycle and automotive goods; production of advertising material in connection with motorcycle and automotive goods; promotional advertising services in connection with motorcycle and automotive goods; marketing in connection with motorcycle and automotive goods; product marketing in connection with motorcycle and automotive goods; promotional marketing in connection with motorcycle and automotive goods; business promotion services in connection with motorcycle and automotive goods; sales promotion (for others) in connection with motorcycle and automotive goods; sales promotion services in connection with motorcycle and automotive goods

Class 35: Export-import agency services; Import-export agencies in the field of energy; Import-export agency services; Import agency services; Business consultancy services relating to manufacturing

1. The Opponent submits that the Applicant's export import agency services in connection with motorcycle and automotive goods overlaps entirely with the Opponent's class 35 'export-import agency services' and the Applicant agrees. There is a clear overlap between these services. I am satisfied that the Applicant's 'export-import agency services in connection with motorcycle and automotive goods' are the same or similar to the Opponent's unlimited claim to 'export-import agency services'.
2. There are no submissions concerning any nexus between the remainder of the Applicant's services and the Opponent's services. In my opinion, there is no nexus between these services and they are completely unrelated.

Class 35: wholesale, retail and distribution of motorcycle and automotive parts, fittings and accessories; the bringing together, for the benefit of others, a variety of motorcycle and automotive parts, fittings and accessories, enabling customers to conveniently view and purchase the goods; presentation of motorcycle and automotive goods on communication media, for retail purposes; discount services (retail, wholesale, or sales promotion services), in connection with motorcycle and automotive goods; export-import agency services in connection with motorcycle and automotive goods; advertising in connection with motorcycle and automotive goods; design of advertising materials in connection with motorcycle and automotive goods; graphic advertising services in connection with motorcycle and automotive goods; dissemination of advertising matter in connection with motorcycle and automotive goods; production of advertising material in connection with motorcycle and automotive goods; promotional advertising services in connection with motorcycle and automotive goods; marketing in connection with motorcycle and automotive goods; product marketing in connection with motorcycle and automotive goods; promotional marketing in connection with motorcycle and automotive goods; business promotion services in connection with motorcycle and automotive goods; sales promotion (for others) in connection with motorcycle and automotive goods; sales promotion services in connection with motorcycle and automotive goods

Class 3: Abrasives, including abrasive preparations, abrasive materials, abrasive boards, abrasive cloths and abrasive compounds; discs of abrasive materials and blocks of abrasive materials; compounds in this class, including abrasive compounds, grinding compounds and other compounds for use in grinding, abrading, sanding and/or polishing

Class 7: Machines, including abrading machines, grinding machines, bench grinding machines, sanding machines, polishing machines, metal marking machines and auger machines; machine tools; sanding belts and sanding disks for use with machines; abrasive wheels and abrasive bits for machines; welding electrodes; compressors, including air compressors and compressors for fluids and gases; compressed air machines and tools; pneumatic tools; air powered tools, including for drilling, inflating and spraying; welding apparatus, machines and equipment, including electric and gas welding apparatus, machines and equipment; welding torches; vacuum cleaners, including wet and dry vacuum cleaners, high pressure washers and cleaners; pumps, including water pumps, fluid pumps, air pumps and pneumatic pumps; electric power supplies, uninterruptable power supplies and generators in this class; air hose reels; non-metallic hoses for use in hydraulic systems in machines; drill bits and auger bits for machines; parts, fittings and accessories in this class for all the aforesaid goods

1. The Opponent submits that the Applicant's class 35 services are broad enough to include, for example, retailing or wholesaling of the Opponent's abrasive material and polishing machines for smash repair, or of compressed air machines and tools.
2. The Applicant submits that the references to the Applicant's promotion and sale of motorcycle and automotive goods does not expressly cover retailing or wholesaling of the Opponent's abrasive material and polishing machines or of compressed air machines and tools, and have no direct connection to motorcycle and automotive goods.
3. A majority of the Applicant's claims in class 35 are clearly not services closely related to any of the goods for which the Opponent's Marks are registered, namely:

advertising in connection with motorcycle and automotive goods; design of advertising materials in connection with motorcycle and automotive goods; graphic advertising services in connection with motorcycle and automotive goods; dissemination of advertising matter in connection with motorcycle and automotive goods; production of advertising material in connection with motorcycle and automotive goods; promotional advertising services in connection with motorcycle and automotive goods; marketing in connection with motorcycle and automotive goods; product marketing in connection with motorcycle and automotive goods; promotional marketing in connection with motorcycle and automotive goods; business promotion services in connection with motorcycle and automotive goods; sales promotion (for others) in connection with motorcycle and automotive goods; sales promotion services in connection with motorcycle and automotive goods

1. These services are all in the marketing, advertising and promotion fields. They are services offered by third party marketing and advertising companies. In my view, the natures, uses and trade channels of these services differ significantly from the goods of the Opponent Marks, such that they cannot be said to be related in any way, let alone be closely related.
2. This leaves the Applicant's claims to 'wholesale, retail and distribution of motorcycle and automotive parts, fittings and accessories; the bringing together, for the benefit of others, a variety of motorcycle and automotive parts, fittings and accessories, enabling customers to conveniently view and purchase the goods; discount services (retail, wholesale, or sales promotion services), in connection with motorcycle and automotive goods'.
3. I note the comments of Finkelstein J in Colorado Group Ltd v Strandbags Group Pty Ltd (No 2):

In my opinion, speaking generally it is only when retailing services consist of supplying the very goods in respect of which it is said the services are related that the services and goods will be closely related: see Warnaco US Inc v Estee Lauder Cosmetics Ltd (2000) 50 IPR 143, K Mart Corporation v Artline Furnishers Supermarkets Pty Ltd (1991) 23 IPR 149.[59]

1. While it is common for many manufacturers of some goods to also retail and wholesale those goods e.g. clothing and sporting goods, it is also just as common for goods to be wholesaled or retailed by an entity other than the manufacturer or brand owner. Therefore, the mere fact that a good may be sold through wholesale or retail channels does not necessarily render such good closely related to wholesale or retail services.
2. Further, I appreciate that over time there have been changes in business practices and/or technological developments that may affect the relationship between goods and services, and there has undoubtedly been an ever growing expansion in retailing services being offered online and through social media. While it is possible that some of the Opponent's goods and the Applicant's goods may be sold through a single retail outlet, such as Repco and Super Cheap Auto, my understanding is that the types of goods which are sold in these retailers are not usually manufactured by the retailer themselves but are usually sold under a manufacturer's brand. Consumers do not expect those retailers to be selling their own goods. Therefore, I am not satisfied that these services have a close relationship with the Opponent's goods and in particular the Opponent's abrasive material and polishing machines for smash repair, or of compressed air machines and tools, and there is no evidentiary basis for finding to the contrary.
3. In conclusion I am satisfied that the following of the Subset Goods and Services are similar or closely related to the Opponent's goods and services of the 423 and 936 Marks:

Class 7: Brushes being parts of motors and engines for motor vehicles; gaskets for internal combustion engines for motor vehicles; fuel filters for motor vehicles; air filters for motor vehicles; fuel pumps for land vehicles; motor mufflers for motor vehicles; exhausts for motors and engines for motor vehicles; pressure regulators being parts of machines for motor vehicles; engine timing components, namely, cam sprockets and chains for motor vehicles; starter motors for motor vehicles; kick starters for motorcycles; taps being parts of engines for motor vehicles; radiators for motors and engines for motor vehicles; gaskets for internal combustion engines for motor vehicles; radiators for motors and engines for motor vehicles; mechanical lifts and jacks for motor vehicles; loading ramps for motor vehicles; sensors being parts of internal combustion engines for motor vehicles; parts, fittings and accessories for the aforesaid

Class 8: hand-operated automotive repair tools; namely, brake cylinder hones, hand-operated automotive repair tools, namely, engine cylinder hones; hand operated lifts and jacks for vehicles; hand operated motorcycle lifting jacks

Class 9: electrical switches; batteries for motor vehicles; motorcycle helmets; motorcycle goggles; articles of protective clothing for wear by motorcyclists for prevention against accident or injury

Class 35: export-import agency services in connection with motorcycle and automotive goods

1. In conclusion, I have found that the third requirement has been satisfied for the 423 and 936 Marks in respect of the Conflicting Goods and Services and the s 44 ground has been made out. Nevertheless, it remains possible for the Application to be accepted under the provisions of ss 44(3) and/or 44(4) of the Act.
2. The Applicant argues both honest concurrent use under s 44(3)(a) and other circumstances under s 44(3)(b).

1. The Applicant submits that if I am satisfied that there is an earlier deceptively similar trade mark in relation to similar goods or services, the discretion of the Registrar to accept the application under s 44(3)(a) should apply, based on evidence of honest concurrent use of the Trade Mark.
2. The onus for establishing this is on the Applicant[60] and the date for determining honest concurrent use is the Relevant Date of the Application. While only circumstances from before the Relevant Date are relevant to the enquiry,[61] evidence of events after that date may be admitted solely for the purpose of illuminating the likelihood of confusion existing at the priority date.[62]
3. There are several factors to be considered here, including:
   • the honesty of the concurrent use;
   • the extent of the use in terms of time, geographical area, and volume of sales;
   • the degree of confusion likely to ensue between the marks in question;
   • whether any instances of confusion have been proved; and
   • the relevant inconvenience that would ensue to the parties if registration were to be permitted.[63]

1. As to the element of honesty, what is required to be established is not merely an absence of dishonesty, but the presence, objectively ascertained, of honesty.[64] The honesty of adoption and use by an Applicant has been said to be the essential and most important factor, if not at least a crucially important factor.[65]
2. Justice Romer in In Re Parkington & Co Ltd's Application ('Re Parkington') gives emphasis to the circumstances regarding adoption of a trade mark stating:

[t]he circumstances which attend the adoption of a trade mark in the first instance are of considerable importance when one comes to consider whether the use of that mark has or has not been a honest user.[66]

1. In Firstmac Limited v Zip Co Limited ('Firstmac'), Perram J stated:

Whilst the concept of honest use is in terms of a subjective inquiry, this Court has accepted that it has an objective element. In particular, it has been accepted by this Court that use will not be honest use within the meaning of the provision if the allegedly infringing party does not take steps that an honest and reasonable person would take to ascertain its ability to use the trade mark and has in effect taken a risk. So much was explained by Beach J in Flexopack SA Plastics Industry v Flexopack Australia Pty Ltd [2016] FCA 235; 118 IPR 239 ('Flexopack') at [111] in relation to s 122(1)(a) (honest use of a person's name) of the Act and there is no reason to think that this reasoning does not apply to ss 122(1)(f) or (fa) (honest use where registration would be granted).[67]

1. The honesty of concurrent use refers to 'commercial honesty, which differs not from common honesty'.[68]
2. In Tivo Inc v Vivo International Corporation Pty Ltd ('Tivo'), Dodds-Streeton J observed:

Honesty in this context has been held to mean "commercial honesty". Relevant authorities have taken into account a number of factors in determining whether the applicant adopted the trade mark without knowing of the earlier mark or in the honest belief that no confusion would arise or business be diverted by use of the name. They include:

(a) whether the words which make up the trade mark are common, everyday words. If they are, it is more likely that the use will be found to be honest than would be the case if the words are "invented" or are not such as to be obviously attractive to other traders;

(d) the applicant's knowledge of the opponent's mark; and

(e) whether the adoption of the mark, and the continued use of it, was surreptitious.[69]

1. Therefore, an absence of sufficient care and diligence can be sufficient to find the evidence relied upon is inadequate to establish either honesty or good faith.[70]
2. Important attributes of honesty include independent adoption without any intent to appropriate the reputation or goodwill of a third party and an honestly held belief that there would be no confusion as a result of adopting the same mark.[71] Further, some decisions have noted that a basic part of commercial honesty has involved the conducting or commissioning basic enquiries as to the earlier rights of other traders.[72] Some decisions also go further discussing the quality of enquiries such as the adequacy of a search[73] that have been made by relevant persons before the adoption of a trade mark.
3. I note the comments of O'Callaghan J in The Practice Pty Ltd v The Practice Business Advisers & Tax Practitioners Pty Ltd where the extent of the searches conducted was at issue:

In my view, a person in the respondent's position acting honestly and reasonably would have conducted far more extensive and thorough searches than [the witness] says he did to ensure that his chosen name did not conflict with a registered trade mark.[74]

1. On the question of honesty, the Applicant submits that the Applicant adopted the Trade Mark as a refreshed version of its WHITES trade mark used in Australia extensively in various forms and in various business divisions since at least 2015 and there is no reason to doubt the honesty of such adoption, especially in light of the Applicant's submissions in respect of the common use of WHITE/WHITES and the etymology of the WHITES mark going back to the founder of the business.
2. The Opponent submits that the Applicant had not adopted proper checks and searches prior to the adoption of the Trade Mark and the Opponent's Marks were on the Trade Marks Register when the Applicant chose to drop the words 'MOTORCYCLE PARTS' from some uses of its Trade Mark and to expand its range of goods to include some tools.
3. Larkin states that the Trade Mark is primarily used in respect of motorcycle products, which is the Applicant's target market.[75] In my view, given that the Application was filed in respect of a broad range of unqualified goods and services, much broader than any of the Applicant's Registrations, which included goods such as machinery, machine tools, motors and engines (except for land vehicles), hand tools and implements (hand-operated), lighting apparatus, motorcycles and discount services (retail, wholesale, or sales promotion services) amongst others, I am not satisfied that at the Relevant Date, the adoption of the Trade Mark was honest. While the Applicant considers the Trade Mark to be a mere refreshed version of trade marks previously used by the Applicant[76] for motorcycle and ATV parts and accessories and the retailing of such goods, and therefore the Trade Mark was adopted honestly, at the Relevant Date, the Applicant had an intention to use the Trade Mark on a broad range of goods not limited to the field of vehicles, motorcycles or ATVs.
4. Larkin also states that the marks WHITES, WHITES POWERSPORTS, WHITES MOTORCYCLE PARTS and WHITESMOTO were adopted in Australia by the Applicant as a natural expansion from the New Zealand market, and Mr Larkin was not aware of any other use of WHITES in the industry at the time of the Applicant's expansion into Australia. Mr Larkin was otherwise not aware of any confusion in the marketplace associated with the Applicant's use of these marks.[77] Notably, the Applicant has not declared the existence of any honest belief that there would be no confusion as a result of the Applicant adopting the Trade Mark in respect of the Applicant's goods and services at the date of filing and nor has the Applicant declared that any due diligence was undertaken by the Applicant before adopting the Trade Mark.
5. I am not satisfied that the Applicant adopted the Trade Mark honestly in respect of the Applicant's Goods and Services at the Relevant Date. While the Applicant submits that this is not a case where the Applicant has adopted the Trade Mark blindly, I disagree. The Applicant's evidence is silent as to whether the Applicant did anything to inform itself of its position in relation to any earlier trade mark rights either on the Trade Mark Register or in the marketplace. Where a new trade mark is being adopted, particularly one that is being adopted for a broad range of goods and services, if the applicant expects to rely on honest concurrent use, the applicant must provide a commercially reasonable explanation as to why it believed it could use a mark without infringing the rights of any third parties. I acknowledge the Applicant's belief that the Trade Mark was a refreshed version of earlier device trade marks,[78] but in circumstances such as these where the Applicant has filed the Application for goods and services much broader than the Applicant's Registrations and any claimed use of these registrations, an honest trader is expected to do more than what the Applicant did, which was essentially nothing, on the evidence before me.
6. In the end, I am not satisfied that the Applicant's adoption of the Trade Mark at the Relevant Date was honest.

1. Even had I been satisfied as to the requisite honesty of the Applicant's adoption of the Trade Mark, while the Applicant states that in early to mid 2021 the Applicant refreshed the trade mark to the Trade Mark (which is used with and without the words MOTORCYCLE PARTS), the Applicant also states that the trade mark was used prior to July 2021.[79] On the Applicant's own evidence and submissions, all of the use of the Trade Mark occurred after the Relevant Date.[80] This conclusion is also supported by the Applicant's evidence as a whole which only shows use of the Trade Mark after the Relevant Date.
2. In conclusion, I find that the Applicant has not made out a sufficient case to enable the application of the provisions of honest concurrent use.

1. Section 44(3)(b) provides for acceptance where 'because of other circumstances, it is proper to do so'. I consider proper to mean appropriate in the circumstances, fitting and right. Acceptance based on 'other circumstances' depends on a consideration of the commercial realities which, in the Registrar's opinion, make the acceptance of an application proper. Other circumstances may include the absence of confusion, and the length and extent of the use of the Trade Mark and may also include circumstances that came into existence after the Relevant Date. The discretion is to be exercised with regard to the circumstances as at the time the discretion is exercised, rather than at the priority date of the application.[81]
2. The Applicant argues that the Applicant has a longstanding and extensive reputation with respect to its WHITES trade mark and various WHITES formative trade marks and has operated in the Australian market without issue with the Opponent or the Opponent's Registrations and in light of this, considers it appropriate for the Trade Mark to be registered.
3. The Applicant also submits that reliance on the Opponent's Registrations oversteps the scope of protection that should be afforded to those marks, especially in light of the widespread registration and use of other WHITE/WHITES formative trade marks, and that the Applicant should be entitled to refresh its longstanding WHITES trade marks without issue.
4. The fact remains that the Trade Mark is deceptively similar to the Opponent's Marks and while the goods and services of the Application as filed were restricted after the SGP was filed, the Conflicting Goods and Services overlap with the goods and services of the Opponent's Marks.
5. Of the 'other circumstances' submitted by the Holder, I do not find these circumstances persuasive. While the Applicant may have a longstanding and extensive reputation with respect to its WHITES trade mark and various WHITES formative trade marks, this reputation is limited to motorcycle and ATV parts and accessories and the retailing of such goods. The Opponent submits that there is a major expansion of the goods and services compared to the Applicant's Registrations. As such, it is not surprising that the Applicant has thus far operated in the Australian market without issue with the Opponent or the Opponent's Registrations.
6. I am also not persuaded by the Applicant's submission that the Opponent's Registrations overstep the scope of protection that should be afforded to those marks and that the Applicant should be entitled to refresh its longstanding WHITES trade marks without issue. The Opponent's rights in its registrations are limited to their particular stylised forms as registered, and there is no exclusive right over the word WHITE or the letter W themselves.[82] Therefore there is no overstepping the scope of protection of the Opponent's Registrations. Further and by the Act, the Opponent is entitled to use its registrations to oppose any trade mark under the s 44 ground considered to be deceptively similar and covering similar goods and services.
7. I have considered the Applicant's submissions, the evidence and the totality of circumstances to determine whether it is proper to accept the Application for the Conflicting Goods and Services in the face of a real and tangible danger of confusion. In the matter at hand, I do not consider the Applicant has made out a compelling case which makes it appropriate to allow registration of a deceptively similar mark for the same or similar goods and services on the basis of 'other circumstances'. I am not satisfied that there are commercial realities which, in the Registrar's opinion, make the acceptance of this Application proper for the Conflicting Goods and Services and it is not appropriate to exercise my discretion under s 44(3)(b).

1. 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.[83]

1. In circumstances where an opposition has been established in respect of some, but not all of an applicant's goods or services, the Registrar may proceed to reject the application in its entirety, under the principles outlined above, but also has a discretion to offer an amendment to an applicant, allowing it to amend the application to remove goods and services for which a ground of opposition has been established.
2. Given the breadth of goods and services claimed in the Application, and the Applicant's submission that the Applicant should be given an opportunity to refine the Subset Goods and Services should it be held that some of the Subset Goods and Services are similar or closely related to the goods and services of the Opponent's Marks, I considered it appropriate to offer the Applicant the opportunity to delete the Conflicting Goods and Services and thereby allow protection of the Trade Mark for the remaining Subset Goods and Services. For clarity the remaining Subset Goods and Services are:

Class 8: hand tools and implements (hand-operated) for use with vehicles; hand tools for use with vehicles, namely, ball joint separators; hand-operated automotive repair tools, namely, brake pad spreaders; hand-operated automotive repair tools, namely, brake spring removers; hand-operated automotive repair tools, namely, disc brake piston cubes; hand-operated automotive repair tools, namely, drum brake adjusting tools; hand-operated automotive repair tools, namely, ring compressors; hand-operated automotive repair tools, namely, valve holders; hand-operated automotive repair tools, namely, valve spring compressors; hand-operated automotive repair tools, namely, valve spring depressors; hand-operated automotive repair tools, namely, magnetic pick-up tools; chain breaker tools for use with motorcycle chains; chain rivet tools for use with motorcycle chains; parts, fittings and accessories for the aforesaid

Class 9: fuses; fuses for land vehicles; safety-warning lights for vehicles, namely, strobes, rotating lights and bar lights; signalling lights; light switches; flashing safety lights; computer hardware and data processing computers in motorcycles; vehicle on-board computer hardware, software and monitors for automotive application for use in reading driver-relevant data, namely, traffic and weather conditions, travel destination information, distance driven, range, fuelling and charging locations and parking information, as well as in providing safety and convenience information, namely, information about route planning assistance, emergency roadside assistance, emergency call functions, stolen vehicle recovery assistance, remote door unlock assistance, operator-assisted calls and concierge services; vehicle on-board computer hardware, software and monitors for automotive application for use in operating and controlling entertainment systems, communication systems, Internet access and navigation systems; vehicle on-board computer hardware and software for connecting to mobile devices to allow vehicle data to appear on the mobile device; rectifiers; voltage regulators; electric relays for motor vehicles; solenoid valves for motor vehicles; electric coils for motor vehicles; tire pressure gauges; parts, fittings and accessories for the aforesaid

Class 35: wholesale, retail and distribution of motorcycle and automotive parts, fittings and accessories; the bringing together, for the benefit of others, a variety of motorcycle and automotive parts, fittings and accessories, enabling customers to conveniently view and purchase the goods; presentation of motorcycle and automotive goods on communication media, for retail purposes; discount services (retail, wholesale, or sales promotion services), in connection with motorcycle and automotive goods; advertising in connection with motorcycle and automotive goods; design of advertising materials in connection with motorcycle and automotive goods; graphic advertising services in connection with motorcycle and automotive goods; dissemination of advertising matter in connection with motorcycle and automotive goods; production of advertising material in connection with motorcycle and automotive goods; promotional advertising services in connection with motorcycle and automotive goods; marketing in connection with motorcycle and automotive goods; product marketing in connection with motorcycle and automotive goods; promotional marketing in connection with motorcycle and automotive goods; business promotion services in connection with motorcycle and automotive goods; sales promotion (for others) in connection with motorcycle and automotive goods; sales promotion services in connection with motorcycle and automotive goods

1. On 22 July 2025, I provided the Applicant with an opportunity to amend its application for Trade Mark No. 2185089 to remove the Conflicting Goods and Services, being the goods and services for which the s 44 ground of opposition has been established, which it did on 4 August 2025. The amendment has now been made. On that basis, trade mark application 2185089 may proceed to registration not less than one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the Applications should be in accordance with the Court's order or direction.

1. The Opponent sought its costs in this matter but as both parties have had a degree of success, I decline to award costs.

Class 7: brushes being parts of motors and engines for motor vehicles; gaskets for internal combustion engines for motor vehicles; fuel filters for motor vehicles; air filters for motor vehicles; fuel pumps for land vehicles; motor mufflers for motor vehicles; exhausts for motors and engines for motor vehicles; pressure regulators being parts of machines for motor vehicles; engine timing components, namely, cam sprockets and chains for motor vehicles; starter motors for motor vehicles; kick starters for motorcycles; taps being parts of engines for motor vehicles; radiators for motors and engines for motor vehicles; gaskets for internal combustion engines for motor vehicles; radiators for motors and engines for motor vehicles; mechanical lifts and jacks for motor vehicles; loading ramps for motor vehicles; sensors being parts of internal combustion engines for motor vehicles; parts, fittings and accessories for the aforesaid

Class 8: hand tools and implements (hand-operated) for use with vehicles; hand tools for use with vehicles, namely, ball joint separators; hand-operated automotive repair tools, namely, brake cylinder hones; hand-operated automotive repair tools, namely, brake pad spreaders; hand-operated automotive repair tools, namely, brake spring removers; hand-operated automotive repair tools, namely, disc brake piston cubes; hand-operated automotive repair tools, namely, drum brake adjusting tools; hand-operated automotive repair tools, namely, engine cylinder hones; hand-operated automotive repair tools, namely, ring compressors; hand-operated automotive repair tools, namely, valve holders; hand-operated automotive repair tools, namely, valve spring compressors; hand-operated automotive repair tools, namely, valve spring depressors; hand-operated automotive repair tools, namely, magnetic pick-up tools; hand operated lifts and jacks for vehicles; chain breaker tools for use with motorcycle chains; chain rivet tools for use with motorcycle chains, hand operated motorcycle lifting jacks; parts, fittings and accessories for the aforesaid

Class 9: fuses; fuses for land vehicles; electrical switches; safety-warning lights for vehicles, namely, strobes, rotating lights and bar lights; signalling lights; light switches; flashing safety lights; computer hardware and data processing computers in motorcycles; vehicle on-board computer hardware, software and monitors for automotive application for use in reading driver-relevant data, namely, traffic and weather conditions, travel destination information, distance driven, range, fuelling and charging locations and parking information, as well as in providing safety and convenience information, namely, information about route planning assistance, emergency roadside assistance, emergency call functions, stolen vehicle recovery assistance, remote door unlock assistance, operator-assisted calls and concierge services; vehicle on-board computer hardware, software and monitors for automotive application for use in operating and controlling entertainment systems, communication systems, Internet access and navigation systems; vehicle on-board computer hardware and software for connecting to mobile devices to allow vehicle data to appear on the mobile device; rectifiers; voltage regulators; electric relays for motor vehicles; solenoid valves for motor vehicles; electric coils for motor vehicles; batteries for motor vehicles; tire pressure gauges; motorcycle helmets; motorcycle goggles; articles of protective clothing for wear by motorcyclists for prevention against accident or injury; parts, fittings and accessories for the aforesaid

Class 11: lighting apparatus for vehicles; lighting fixtures for vehicles; vehicle headlights; LED light assemblies for vehicles; tail lights for vehicles; light bulbs for vehicles; tire warmers for vehicles; parts, fittings and accessories for the aforesaid

Class 12: motorcycle and automotive parts, fittings and accessories in this class, including motors, engines, structural parts for motorcycles and land vehicles, structural parts for land vehicles, storage boxes and containers adapted for permanent attachment to land vehicles, mats adapted (shaped) for use in land vehicles, trays adapted for land vehicles, axles, drive and transmission shafts, suspension ball joints, axle and wheel bearings, transmission seals, fork seals, brakes, brake discs, brake pads, brake callipers, brake levers, brake line, fuel lines, fuel tanks, brake cables, gear levers, clutch fuel line, clutch cables, clutch mechanisms, clutch levers, clutch linings, directional signals for vehicles, seats for vehicles, including gel seats, bumper guards, mud guards, spray guards, splash guards, fenders, handlebars, handlebar grips, brake hardware, headlight mounts, lighting mounts and brackets, gear shift levers, handlebar control levers, mirrors, wheel rims, shock absorbers, wheel sprockets, frames, inner tubes, tires, foot pegs, stands for holding stationary motorcycles in an upright position, fitted seat covers, alarm systems, anti-theft alarms for vehicles systems, reversing sensors and cameras, pads specially adapted for motorcycle gas tanks for rider protection, steering and suspension systems and parts for steering and suspension systems for vehicles; pumps for inflating vehicle tyres; fitted motorcycle covers; hubs for vehicle wheels; parts, fittings and accessories for the aforesaid

Class 22: tie downs; straps for handling loads; ropes; towing ropes; nets; unfitted motorcycle covers; parts, fittings and accessories for the aforesaid

Class 35: wholesale, retail and distribution of motorcycle and automotive parts, fittings and accessories; the bringing together, for the benefit of others, a variety of motorcycle and automotive parts, fittings and accessories, enabling customers to conveniently view and purchase the goods; presentation of motorcycle and automotive goods on communication media, for retail purposes; discount services (retail, wholesale, or sales promotion services), in connection with motorcycle and automotive goods; export-import agency services in connection with motorcycle and automotive goods; advertising in connection with motorcycle and automotive goods; design of advertising materials in connection with motorcycle and automotive goods; graphic advertising services in connection with motorcycle and automotive goods; dissemination of advertising matter in connection with motorcycle and automotive goods; production of advertising material in connection with motorcycle and automotive goods; promotional advertising services in connection with motorcycle and automotive goods; marketing in connection with motorcycle and automotive goods; product marketing in connection with motorcycle and automotive goods; promotional marketing in connection with motorcycle and automotive goods; business promotion services in connection with motorcycle and automotive goods; sales promotion (for others) in connection with motorcycle and automotive goods; sales promotion services in connection with motorcycle and automotive goods

Class 12: All motorcycle and powersports parts and accessories in this class

Class 35: Retail and wholesale of motorcycle parts and accessories; Retail and wholesale services for motorcycle and powersports parts and accessories; Distributorship services in the field of motorcycles and parts therefor; Wholesale distributorships featuring motorcycles and parts thereof; Online retail and wholesale store featuring motorcycle parts and accessories; Retailing of products (by any means); Wholesaling of products (by any means); Retail and wholesale distributorship services; Retail, wholesale and distribution of goods associated with motor sports; Sales promotion (for others); Retail and wholesale of apparel; Marketing and promotional services; Online advertising and promotion; Advertising services provided over the Internet; Providing business information via a web site; Business management and administration services supporting utilisation of a global computer network; Search engine optimisation for sales promotion; Production and dissemination of advertising materials and information; Advertising services provided via a data base; Collection of data; Compilation of information into computer databases; Business development services; Business referrals services; Market research

Class 35: Retail and wholesale of motorcycle parts and accessories; Retail and wholesale services for motorcycle and powersports parts and accessories; Distributorship services in the field of motorcycles and parts therefor; Wholesale distributorships featuring motorcycles and parts thereof; Online retail and wholesale store featuring motorcycle parts and accessories; Retailing of products (by any means); Wholesaling of products (by any means); Retail and wholesale distributorship services; Retail, wholesale and distribution of goods associated with motor sports; Sales promotion (for others); Retail and wholesale of apparel; Marketing and promotional services; Online advertising and promotion; Advertising services provided over the Internet; Providing business information via a web site; Business management and administration services supporting utilisation of a global computer network; Search engine optimisation for sales promotion; Production and dissemination of advertising materials and information; Advertising services provided via a data base; Collection of data; Compilation of information into computer databases; Business development services; Business referrals services; Market research

Class 35: Retail and wholesale of motorcycle parts and accessories; Retail and wholesale services for motorcycle and powersports parts and accessories; Distributorship services in the field of motorcycles and parts therefor; Wholesale distributorships featuring motorcycles and parts thereof; Online retail and wholesale store featuring motorcycle parts and accessories; Retailing of products (by any means); Wholesaling of products (by any means); Retail and wholesale distributorship services; Retail, wholesale and distribution of goods associated with motor sports; Sales promotion (for others); Retail and wholesale of apparel; Marketing and promotional services; Online advertising and promotion; Advertising services provided over the Internet; Providing business information via a web site; Business management and administration services supporting utilisation of a global computer network; Search engine optimisation for sales promotion; Production and dissemination of advertising materials and information; Advertising services provided via a data base; Collection of data; Compilation of information into computer databases; Business development services; Business referrals services; Market research

Class 12: Motorcycles; Motor tricycles; Sidecars for motorcycles; Land vehicles; Automotive vehicles; Motor land vehicles; Electric vehicles; All-terrain vehicles; Two, three and four-wheeled motor cycles; Motorcycle combinations; Apparatus for locomotion by land; Accessories, components, parts and fittings included in this class for the aforesaid goods

Class 12: Motorcycles; Motor tricycles; Sidecars for motorcycles; Land vehicles; Automotive vehicles; Motor land vehicles; Electric vehicles; All-terrain vehicles; Two, three and four-wheeled motor cycles; Motorcycle combinations; Apparatus for locomotion by land; Accessories, components, parts and fittings included in this class for the aforesaid goods

Class 12: Motorcycles; motorcycle and automotive parts, fittings and accessories in this class

Class 35: Wholesale, retail and distribution (not transport) services, including online, for motorcycle and automotive parts, fittings and accessories; the bringing together, for the benefit of others, a variety of motorcycle and automotive parts, fittings and accessories, enabling customers to conveniently view and purchase the goods; presentation of goods on communication media, for retail purposes; discount services (retail, wholesale, or sales promotion services); export-import agency services; advertising; design of advertising materials; graphic advertising services; dissemination of advertising matter; production of advertising material; promotional advertising services; marketing; product marketing; promotional marketing; business promotion services; sales promotion (for others); sales promotion services

Class 12: Motorcycles; motorcycle and automotive parts, fittings and accessories in this class

Class 35: Wholesale, retail and distribution (not transport) services, including online, for motorcycle and automotive parts, fittings and accessories; the bringing together, for the benefit of others, a variety of motorcycle and automotive parts, fittings and accessories, enabling customers to conveniently view and purchase the goods; presentation of goods on communication media, for retail purposes; discount services (retail, wholesale, or sales promotion services); export-import agency services; advertising; design of advertising materials; graphic advertising services; dissemination of advertising matter; production of advertising material; promotional advertising services; marketing; product marketing; promotional marketing; business promotion services; sales promotion (for others); sales promotion services

Class 12: Motorcycles; motorcycle and automotive parts, fittings and accessories in this class.

Class 35: Wholesale, retail and distribution (not transport) services, including online, for motorcycle and automotive parts, fittings and accessories; the bringing together, for the benefit of others, a variety of motorcycle and automotive parts, fittings and accessories, enabling customers to conveniently view and purchase the goods; presentation of goods on communication media, for retail purposes; discount services (retail, wholesale, or sales promotion services) in relation to motorcycle and automotive parts, fittings and accessories; export-import agency services; advertising; design of advertising materials; graphic advertising services; dissemination of advertising matter; production of advertising material; promotional advertising services; marketing; product marketing; promotional marketing; business promotion services; sales promotion (for others); sales promotion services.

Class 12: Motorcycles; Chains for driving motorcycles; Covers for motorcycle saddles; Kickstands for motorcycles; Motorcycle panniers; Wheels for motorcycles; Tyres for motorcycles; Sprockets for motorcycle drives; Saddles for motorcycles; Actuators for land vehicles; Aerodynamic attachments for vehicle bodies; Afterburners for land vehicle engines; Air pressure pumps (vehicle accessories); Air tubes for vehicle wheels; Alarm devices (for vehicles); All-terrain vehicles; Apparatus for towing vehicles; Apparatus for the propulsion of land vehicles; Armoured bodies for vehicles; Automatic gearboxes for land vehicles; Automotive vehicles; Axle assemblies for vehicles; Back support apparatus for vehicles; Bearing housings for vehicles; Bodies for motor vehicles; Body panels for vehicles; Body parts for vehicles; Brake components for vehicles; Brake discs for vehicles; Brake levers for vehicles; Brake pads for vehicles; Brake sets for vehicles; Brakes for vehicles; Bumpers for vehicles; Chains for driving land vehicle engines; Chassis for motor vehicles; Chassis parts for road vehicles; Clutch levers for land vehicles; Clutches for land vehicles; Cog wheels for land vehicle engines; Combustion engines for land vehicles; Couplings for land vehicles; Cranks (parts of land vehicles); Differential transmissions for land vehicles; Direction indicator signals for land vehicles; Drive belting for land vehicles; Drive motors for land vehicles; Drive shafts for land vehicles; Electric motors for land vehicles; Engines for land vehicles; Freewheels for land vehicles; Gear assemblies for land vehicles; Gear levers for land vehicles; Gears for land vehicles; Hand pumps for inflating vehicle tyres; Horns for vehicles; Housing covers for land vehicle engines; Hubs for vehicle wheels; Hydraulic control apparatus for vehicles; Internal combustion motors for land vehicles; Land vehicles; Mechanical power transmitting mechanisms for land vehicles; Mechanical gearings for land vehicles; Mirrors (rearview) for vehicles; Mud flaps for vehicles; Mudguards for vehicles; Petrol caps for vehicles; Power transmission belts for land vehicles; Rims for vehicle wheels; Seat covers for vehicles; Seats for vehicles; Shock absorbers for vehicles; Side view mirrors for vehicles; Sideguards for vehicles; Signal arms for vehicles; Spoke wheels for vehicles; Springs for vehicle suspension systems; Starter motors for land vehicles; Steering devices for vehicles (other than automatic); Steering columns for vehicles; Suspension systems for vehicles; Tires for vehicle wheels; Transmission belts for land vehicles; Transmission control apparatus (electronic) for land vehicles; Tubes for vehicle wheels; Tyres for land vehicles; Two-wheeled vehicles

Class 35: Online retail services; Retail services; Retailing of goods (by any means); Display services for merchandise; Export-import agency services; Discount services (retail, wholesale, or sales promotion services); Sales promotion services; Advertising; Production of visual advertising matter

[1] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth) ('Act') and each reference to a regulation is a reference to a regulation in the Trade Marks Regulations 1995 (Cth).

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

[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelmann JJ).

[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J) ('Southern Cross').