1. In the SGP the Opponent nominated grounds of opposition under ss 42, 44, 59 and 60.
2. The date at which the rights of the parties are to be determined is the filing date of 22 February 2022 ('Relevant Date'). The filing date is also the priority date for the purposes of ss 44 and 60.
3. The Opponent bears the onus of establishing at least one of the grounds of opposition.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3]

1. Established in 2012, the Opponent is an Australian manufacturer and supplier of various clothing brands and retailing services including under the brands BUTTER, BUTTER GOODS, LO-FI and CASH ONLY.

1. The Applicant did not file any evidence; however Evans has provided screenshots from the Applicant's website http://allfenxi.com dated 13 February 2025. The Applicant's website is an online retail store selling pilateswear and activewear apparel. The document title of the Applicant's website uses the following phrase: 'ALL FENIX, Cult Australian Pilateswear since 2015'.

1. In respect of this matter s 44 relevantly provides:

(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) it 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.

(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.

(3) 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.

1. In the SGP the Opponent particularises the ground of opposition under s 44 as follows:

The Opposed Mark is substantially identical with, or deceptively similar to, the Opponent's earlier trade mark set out in the table below, registered in respect of goods that are the same as, or similar, or closely related to, the Opposed Goods (BUTTER Mark) -

1. To satisfy the s 44 ground of opposition the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, in the name of a person other than the Applicant, and in respect of similar goods.
2. From the information set out in the SGP and verified on the Register of Trade Marks, it is evident that the Opponent's BUTTER Mark is held in a name other than that of the Applicant, has a priority date earlier than the Relevant Date, and is in respect of Apparel (Clothing, footwear, headgear) goods in class 25, which are the same as the Applicant's Goods.
3. I now turn to consider whether the Trade Mark is substantially identical or deceptively similar to the BUTTER Mark. The test for whether trade marks are substantially identical was set out by Windeyer J in The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited as follows:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. [4]

1. More recently, the Full Federal Court considered the test for substantial identity in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd[5] and Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd,[6] finding that the test requires that the trade marks are considered side-by-side while having regard to the essential features or dominant cognitive cues of the marks. For the purposes of comparison, I have reproduced the respective trade marks below:

1. On a side-by-side comparison I find that the respective trade marks are not substantially identical. Both trade mark share the essential element BUTTER, however, the Trade Mark is a compound word and consists of the word BUTTER and the word CORE. In comparison the BUTTER Mark is for the word BUTTER solus. The presence of the word CORE in the Trade Mark provides a significantly different visual impression. For these reasons, the total impression emerging from a side-by-side comparison is not one of resemblance.
2. I have found that the respective trade marks are not substantially identical. The remaining question is whether the Trade Mark is deceptively similar to the BUTTER Mark. The expression 'deceptively similar' is defined by s 10:

For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

1. The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J 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 [trade mark].[7]

1. The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[8] conveniently stated the relevant principles, which may be summarised as follows:

(a) the resemblance between the two marks must be the cause of the likely deception or confusion;[9]

(b) in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[10]

(c) the marks should not be compared side by side;[11]

(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;[12]

(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';[13]

(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;[14]

(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;[15]

(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; [16]

(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;[17]

(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";[18]

(k) evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[19] and

(l) any intention to deceive or cause confusion may be a relevant consideration but is not required.[20]

1. In this matter, the Trade Mark wholly incorporates the BUTTER Mark along with the element CORE to create a new word BUTTERCORE. The mere fact that the Trade Mark incorporates the BUTTER Mark is not sufficient to render the trade marks deceptively similar. The addition of the element CORE to the Trade Mark creates a different word. I consider that this new word is visually, aurally and conceptually different from the BUTTER Mark. The Trade Mark as a whole is an uncommon construction and consumers would view the Trade Mark as a single word that is of a different length, different pronunciation and provide a different overall impression. Moreover, in the context of the goods being clothing, I note that visual differences in the trade marks carry greater weight. Trade marks for clothing are generally displayed on a label or even on the clothing itself e.g. emblazoned on the front of the clothing or the side of a shoe. Clothing is also selected by customers from racks and shelves or from photographs online with little or no intervention from sales staff other than to request a size or to try on the product. As Burchett J said in Conde Nast Publications Pty Ltd v Taylor:

This aspect of the matter seems to me to have greater importance in a case, such as the present, where the goods sold under a trade mark are goods likely to be subjected to a careful visual examination by any intending purchaser, or even by any person whose interest in them is at all aroused. The appearance of ladies' clothing and men's casual wear is very important. Consumers will not purchase these items over the telephone, or otherwise by a spoken reference to the mark, but will examine them and very often try them on in boutiques or shops. Recognition of the mark will be visual.[21]

1. A consideration of deceptive similarity is not concerned with the mere possibility of deception or confusion between trade marks but a real, tangible danger of it occurring.[22] I have considered the differences between the trade marks and, despite the fact that the Trade Mark wholly incorporates the BUTTER Mark, I find that there does not exist a real, tangible danger of deception or confusion between the two. I find that a notional use of the Trade Mark in relation to the goods in class 25 would be unlikely to result in deception or confusion. Therefore, the Opponent has not established the third requirement and I find that the Trade Mark is not deceptively similar to the BUTTER Mark.
2. The ground of opposition under s 44 has not been established.

Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a) another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b) because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

1. In the SGP the Opponent particularises the ground of opposition under s 60 as follows:

The Opponent's BUTTER Mark has acquired a substantial reputation in Australia by reason of the Opponent's extensive use and promotion of the BUTTER Mark in relation to apparel (clothing, footwear and headgear) and other goods since at least 2008.

Because of the reputation of the BUTTER Mark, the use and registration of the Opposed Mark, which is visually, aurally and conceptually similar to the BUTTER Mark, in relation to the Opposed Goods would be likely to deceive or cause confusion.

1. To satisfy s 60, the Opponent must establish that the trade mark upon which it relies had a reputation in Australia at the priority date of the Trade Mark. The Opponent must then establish that because of that reputation, use of the Trade Mark would be likely to deceive or cause confusion.
2. In McCormick & Co Inc v McCormick, Kenny J asked what is intended by the word 'reputation' in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was 'the recognition of the [trade mark] by the public generally'12F9F[23] and quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television, or radio or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum, and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner...[24]

1. Kenny J also referred to the Hugo Boss decision, where the Registrar's delegate observed:

[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sale or turnover of goods sold under the trade mark and contemplation of the advertising and promotional figures.

As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum sale, advertising and promotion contributes to the 'recognition' component of the trade mark's reputation. The credit, image and values projected by a trade mark attaches to the 'esteem' component of the reputation as do the public events and other trader's marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorship, cross-promotions, 'contra deals' and so forth.

It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sale may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an association of the trade marks with the goods or services themselves.14F11F[25]

1. What constitutes a significant or substantial number of persons in the relevant market must be considered. Heerey J in Le Cordon Bleu BV v Cordon Bleu International Ltee provided some guidance:
2. What is "significant" or "substantial" will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.F12F[26]
3. In the SGP the Opponent nominates its BUTTER Mark, and turning to the Opponent's evidence in this matter, Evans states that in or around 2008, inspired by skateboarding culture, founders Garth Mariano and Matthew Evans, launched the BUTTER brand in Australia in respect of various apparel and accessories, and the retailing of those goods. In 2012 the Opponent was incorporated, and Garth Mariano and Matthew Evans were listed as directors.
4. Evans states that the Opponent's goods are available for sale via the Opponent's online BUTTER store https://buttergoods.com ('Website'). The Opponent's goods are also sold via numerous stockists in 31 countries, including Australia. Throughout Australia alone, the Opponent's goods are sold by around 25 different stockists.[27]
5. Evans provides details of approximate units sold of BUTTER branded apparel in Australia, and approximate annual sales revenue for the financial years ending 2019 to 2024.[28]
6. Evans attests that the Opponent promotes its goods featuring the BUTTER Mark via its Website. Tab 4 of Exhibit ME-1 to Evans comprises extracts from the Internet Achieving Service Wayback Machine dated between November 2011 to January 2025. The pages show use of the BUTTER Mark used on beanies, caps, hoodies, t-shirts, jackets, shirts, sweatshirts, overshirts, knit sweaters, vests, socks, shoes, pants and shorts.
7. Evans declares that in addition to the Website the Opponent promotes its goods featuring the BUTTER Mark via Facebook, Instagram and YouTube.[29] Evans states that the Opponent also pays for advertising through its account with Meta on Facebook and Instagram to promote the BUTTER Mark.[30] Evans also provides confidential advertising expenditure for the financial years ending 2019 to 2024.[31]
8. Evans attests that the Opponent has marketed its goods under the BUTTER Mark by brand collaborations, including with sports brands PUMA, DC Shoes, Umbro, Disney and Kangol.[32]
9. Evans declares that the BUTTER Mark has also been featured in numerous articles relating to the Opponent's goods including articles published by TransWorld SKATEboarding, The Skateboarder's Journal, The Australian, Australian Financial Review, Hype and HYPEBEAST.[33]
10. In my assessment of the evidence, I am satisfied the BUTTER Mark, based on its sale and advertising figures, promotional activities and third party recognition, had before the Relevant Date, acquired a significant reputation in Australia in relation to its clothing goods.
11. It is not sufficient that the Opponent merely establishes that its BUTTER Mark has a reputation, I must also be satisfied that because of that reputation the use of the Trade Mark would be likely to deceive or cause confusion. There is no requirement that the trade mark upon which the Opponent relies is deceptively similar to the Trade Mark, nor that the goods of the parties are similar. Nonetheless, resemblance between the parties' trade marks remains a relevant factor, as noted in _Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd_12F wherein Hearing Officer Lyons said:

Confusion cannot arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent's trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.

What can be said then of section 60 as we now find it is that it comprehends that the trade marks under comparison might be quite dissimilar, and yet, taken in combination with the repute of the opponent's trade mark (and possibly other factors), deception or confusion is still more likely than not. Put another way, section 60 now contemplates that an opponent may prevail because of the reputation in the mark on which it relies notwithstanding that the trade marks under comparison may even be quite dissimilar. [34]

1. In this case the respective trade marks share the word BUTTER, however I consider that they are visually, aurally and conceptually different.
2. Bearing in mind the reputation in the BUTTER Mark in relation to the Opponent's goods and a consumers approach to purchasing these items, along with differences between the Trade Mark and the BUTTER Mark, and the fact that there has been no evidence of consumer confusion, I am not satisfied that the reputation in the BUTTER Mark would mean that use of the Trade Mark would be likely to deceive or cause confusion.
3. The ground of opposition under s 60 has not been established.

42 - Trade mark scandalous or its use contrary to law > > An application for the registration of a trade mark must be rejected if: > > (a) the trade mark contains or consists of scandalous matter; or > > (b) its use would be contrary to law.

2. In the SGP the Opponent particularises the ground of opposition solely under s 42(b) as follows:

The Opponent has used and promoted the BUTTER Mark in Australia since at least 2008. By reason of that use, the Opponent has acquired a substantial reputation in the BUTTER Mark in Australia.

By virtue of the Opponent's reputation in the BUTTER Mark in Australia, the use and registration of the Opposed Mark in Australia, in relation to the Opposed Goods, would be likely to mislead or deceive in breach of sections 18 and/or 29 of the Australian Consumer Law or would constitute passing off at common law.

1. The case law on s 42(b) requires the Opponent to show that use of the Trade Mark would be, rather than could or might be, contrary to law.[35] As observed by Rangiah J in Primary Health Care Limited v Commonwealth of Australia:

It is not enough for a party opposing registration to show that s 18 of the ACL [Australian Consumer Law 2010] or s 52 of the TPA [Trade Practices Act 1974] might be contravened. The opponent must prove, on the balance of probabilities, that the provision would be contravened by use of the trade mark.[36]

1. Section 18 of the Australian Consumer Law[37] ('ACL') is concerned with misleading or deceptive conduct, while s 29 of the ACL is concerned with false and misleading representations. Case law has made it plain that s 18 of the ACL imposes a more stringent test than that for deception or confusion under s 60.[38] I have found that the Opponent has failed to establish a ground of opposition under s 60. Consequently, I find that the Opponent has also failed to establish that use of the Trade Mark would be contrary to s 18 of the ACL.
2. In relation to s 29 of the ACL it has been held that where a trade mark does not offend s 18 of the ACL, neither will it offend s 29 of the ACL[39] and nor will it constitute passing off.[40]
3. The Opponent has not established the ground of opposition under s 42(b).

Section 59 - Applicant not intending to use trade mark

The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a) to use, or authorise the use of, the trade mark in Australia, or

(b) 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 specified in the application.

1. In the SGP the Opponent particularises the ground of opposition under s 59 as follows:

The Applicant's business is the sale of activewear, particularly pilateswear.

The Opposed Application has been filed in respect of a broad specification of goods in class 25, covering all clothing in that class.

The broad nature of the applied-for goods, contrasted with the Applicant's actual business described in 4.1, casts doubt as to the Applicant's intention to use the Opposed Mark for all of the Opposed Goods.

The circumstances described in 4.1 to 4.3 indicate that as at the priority date the Applicant did not intend to use or authorise the use of the Opposed Mark in relation to all of the Opposed Goods in Australia.

Further, the circumstances described in paragraphs 4.1 to 4.3 are sufficient to shift the onus to the Applicant to rebut the allegation that the Applicant does not, and did not at the Priority Date, intend to use or authorise the use of the Opposed Mark in relation to all of the Opposed Goods in Australia.

1. The nature of the intention in s 59 was considered by Jacobsen J in Health World Ltd v Shin-Sun Australia Pty Ltd where he stated:

In my view, the intention, or lack thereof, to which s 59 is directed, is a 'real and definite intention' of the applicant for registration, to use the mark publicly as a trade mark, although it is not necessary that the intention be immediate or within a limited time.[41]

1. There is a presumption that where an application has been filed the applicant, has the requisite intention.[42] However:

There is authority for the proposition that where an applicant for registration has been put on notice that its intention to use the mark was in issue, and has not responded to the opponent's evidence, a finding of lack of intention may be made.

The principle which underlies these authorities seems to me to be that the evidentiary onus shifts to the applicant for registration where an opponent makes a prima facie case of lack of intention to use the mark.[43]

1. Jacobsen J also recognised the difficulty that an opponent has in establishing a ground under s 59, stating in the same case:

The subjective nature of the intention, the presumption of intention flowing from the application for registration and the onus on an opponent usually make it difficult for an opposition or an application for rectification, to succeed on this ground.[44]

1. In view of the authorities discussed above, the onus of establishing the ground of opposition pursuant to s 59 remains with the Opponent until it has established a prima facie case that on the Relevant Date the Applicant lacked the requisite intention. If the Opponent establishes a prima facie case the onus then shifts to the Applicant for rebuttal. The relevant intention requires that an applicant must have 'a real intention to use, not a mere problematic intention, not an uncertain or indeterminate possibility, but it means a resolve or settled purpose which has been reached at the time when the mark is to be registered'.[45] There must be 'a real and definite intention' to use the mark publicly as a trade mark in connection with the services applied for.[46]

1. Evans attests that from a review of the Applicant's website, the Applicant produces and sells activewear, but the Applicant's website does not indicate that the Applicant sells, or intends to sell, the broader range of apparel that is claimed in the Application.[47]
2. In this matter, the Opponent has not provided sufficient evidence in support of this ground of opposition to shift the evidentiary onus. The Opponent's evidence at its highest, is that the Applicant's website only sells activewear particularly pilateswear. A lack of use of the Trade Mark by the Applicant in relation to the broader range of claimed goods does not necessarily imply an absence of intention to use the Trade Mark.
3. Considering the Applicant's current use of the Trade Mark and without evidence to the contrary, I am satisfied that the Applicant's approach to the specified goods at the Relevant Date was aligned with a genuine intention and not speculative.[48] I am not satisfied the Opponent has provided sufficient cogent evidence to establish a prima facie case that the Applicant lacked the requisite intention at the Relevant Date.
4. The Opponent has not established the ground of opposition under s 59.

(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

1. The Opponent has not established a ground of opposition in relation to the Application. Accordingly, trade mark number 2427634 may proceed to registration one month from the date of this decision. If the Registrar is served with a notice of appeal, I direct that the disposition of the Application should be in accordance with the Court's order or direction.

1. Both parties sought an award of costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Opponent under s 221 in line with Schedule 8 of the Regulations.

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

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

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

[4] [1963] HCA 66; (1963) 109 CLR 407, 415.

[5] [2017] FCAFC 56 (Greenwood, Besanko and Katzmann JJ).

[6] [2017] FCAFC 83 (Greenwood, Jagot, and Beach JJ).

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

[9] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69] (Yates, Abraham and Rofe JJ) ('Swancom').

[10] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd [1952] HCA 15; (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).

[11] Australian Woollen Mills Ltd v F S Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ) ('Australian Woollen Mills').

[14] C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, 62 [43] (Ryan, Branson and Lehane JJ) ('Henschke').

[16] Coca-Cola Company v All-Fect Distributors Ltd [1999] FCA 1721; (1999) 96 FCR 107, 122 [39] (Black CJ, Sundberg and Finkelstein JJ) quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62 (Richardson J).

[17] Campomar Sociedad Limited v Nike International Limited [2000] HCA 12; (2000) 202 CLR 45, 79 [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).

[18] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50(ii)] ('Woolworths') (French J) restating principles from Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-595 (Kitto J).

[19] Australian Woollen Mills (n 11).

[20] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc [2020] FCAFC 235; (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) citing Australian Woollen Mills (n 11), 657.

[21] [1998] FCA 864; (1998) 41 IPR 505, 510.

[22] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-595 (Kitto J).

[23] [2000] FCA 1335, [81].

[24] [1992] FCA 159, [118].

[25] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG [1999] ATMO 23; (1999) 47 IPR 423, 436.

[26] [2000] FCA 1587, [91], (albeit in relation to paragraph 28(a) of the now superseded Trade Marks Act 1955 (Cth)), (emphasis in original).

[28] Evans, Confidential Tab 3 to Exhibit ME-1.

[29] Evans, [22], Tab 5 of Exhibit ME-1.

[30] Evans, [23], Confidential Tab 5A of Exhibit ME-1.

[31] Evans, [24], Confidential Tab 5B of Exhibit ME-1.

[32] Evans, [26], Tab 6 of Exhibit ME-1.

[33] Evans, [29], Tab 8 of Exhibit ME-1.

[34] [2010] ATMO 5, [39]-[40].

[35] Advantage Rent a Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).

[36] [2017] FCAFC 174, [411].

[37] Competition and Consumer Act 2010 (Cth), sch 2.

[38] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191, 198. This case was decided under the superseded s 52 Trade Practices Act 1974 (Cth) ('TPA') the equivalent provision to the current s 18 of the ACL.

[39] In Pacific Publications Pty Ltd v IPC Media Pty Ltd [2003] FCA 104, Beaumont J considered - in connection with the superseded TPA - that 'the Court's conclusion on section 52 would necessarily carry with it a conclusion on section 53 (c) and (d).' Sections 53(c)-(d) of the TPA are the equivalent provisions to ss 29(1)(g)-(h) of the ACL.

[40] Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506, [40] (Hill J), wherein failure to succeed under ss 52 or 53 of the TPA 'will invariably mean that proceedings for passing off would likewise fail'.

[41] [2008] FCA 100; [2008] 75 IPR 478, [160].

[42] Aston v Harlee Manufacturing Co [1960] HCA 47; (1960) 103 CLR 391, 401 (Fullagar J).

[43] Ibid [162]-[163] (citations omitted).

[45] Re Ducker's Trade Mark (1928) 45 RPC 397, 402.

[46] Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100, [158] (Jacobson J).

[47] Evans, [30] to [31], Tab 9 of Exhibit ME-1.

[48] Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808, [152] (Burley J).