• The conflicting mark claims pattern, playing and other cards in Class 16, which is similar to your claims for toys; games; playthings in Class 28.

• The conflicting mark claims a variety of toys; boardgames in Class 28, which is similar to your claims for toys; games; playthings in the same class.

1. In support of the Application the Applicant filed submissions on 30 September 2025. The examiner considered the submissions and withdrew the ground for rejection in relation to the 65837 trade mark, however the examiner did not find the Applicant's submissions persuasive in relation to the 967984 trade mark ('984 Mark') and maintained the ground for rejection under s 44, issuing a second examination report on 17 October 2025. The Applicant did not respond to the second examination report, instead it requested to be heard on the matter allowed by s 33(4).
2. The matter came before me, a delegate of the Registrar of Trade Marks ('Registrar') on 4 February 2026. Nico de Jong of The Loft Legal Pty Ltd represented the Applicant, making verbal and written submissions on its behalf.

1. Under s 33(1)(b), the Registrar must accept the application for registration unless satisfied there exists a ground under the Act for rejecting it. The Registrar must be satisfied on the balance of probabilities that a ground for rejection exists, otherwise a trade mark will be presumed registrable.[3] Regarding the present Application, the only ground for rejection identified is under s 44.

Section 44

1. Section 44 relevantly provides:

Section 44 - Identical etc. trade marks

(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.

1. To advance a ground for rejection under s 44, the Trade Mark must be substantially identical or deceptively similar to another trade mark, with an earlier priority date, in the name of a person other than the Applicant, in respect of similar goods or closely related services.
2. The 984 Mark is registered by a person other than the Applicant and has a priority date earlier than the Relevant Date.
3. The next consideration is whether the goods covered by the 984 Mark are similar to the Applicant's Goods.
4. Section 14 relevantly provides:

(1) For the purposes of this Act, goods are similar to other goods:

(b) if they are of the same description as that of the other goods.

1. The factors relevant to the consideration of whether goods are similar include the nature, purpose and use, respective trade channels and whether the ordinary consumer of the goods would regard the goods as being from a single source.[4]
2. In this case the comparison is straight forward. The Trade Mark has broad claims for toys; games; playthings in class 28 which are the same as the toys; games; playthings covered by the 984 Mark in class 28.
3. I now turn to consider whether the Trade Mark is substantially identical or deceptively similar to the 984 Mark.
4. The test for substantial identity was set out by Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd ('Shell'):

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[5]

1. For the purposes of comparison, I have set out the respective trade marks below:

1. On a side by side comparison there are clear differences between the two marks. The Trade Mark is for the single word MINNEE made up of two syllables MIN and NEE. In comparison the 984 Mark consists of two words and the second syllable in the first word MINNIE is NIE. 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 984 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].[6]

1. The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[7] conveniently stated the relevant principles, which was summarised in The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd[8] 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. The Applicant submits that the respective marks are visually, aurally and conceptually different. Moreover, the Applicant argues that it would be unlikely that consumers searching for MINNIE MOUSE products would find themselves unwittingly purchasing a MINNEE branded product.
2. In my view the trade marks are visually and aurally different. The word MINNEE in the Trade Mark ends with the letters EE, and the word MINNIE in the 984 Mark ends in the letters IE and changing EE to IE creates a different word or name. In addition, when I consider the 984 Mark in its entirety the word MOUSE further differentiates the 984 Mark from the Trade Mark. Aurally the word MINNEE in the Trade Mark is pronounced MIN-NEE and the word MINNIE in the 984 Mark is pronounced MI-NEE. Although the words MINNEE and MINNIE are phonetically similar, the addition of the word MOUSE in the 984 Mark would not be ignored as the words MINNIE MOUSE flow naturally when pronounced.

1. In determining whether there is a likelihood of deception or confusion I must consider all the surrounding circumstances including the circumstances in which the goods are offered and the character of the probable acquirer of the goods. Conceptually, the word MINNEE is not a standard English word, with no meaning listed in the Macquarie Dictionary, however the word MINNIE is a noun meaning World War, and colloquially refers to a German trench-mortar bomb.[21] In online resources[22] the word MINNEE is listed as a girl's name and a variant of MINNIE, however when considering the 984 Mark as a whole, MINNIE MOUSE refers to the famous cartoon character created by Walt Disney. In this regard I find it more probable than not that consumers of the goods would not be contextually confused between the respective trade marks.
2. The goods in this matter are broadly speaking toys, games and playthings would include most Australians. The trade marks will be used for the same and similar products in class 28 and these goods are likely to be purchased in store or online by consumers in large and small retailers including department stores, supermarkets and specialised toy stores. The goods are self-service, fast-moving consumer items with a low price point. However, while less attention may be paid when purchasing such products, the addition of the word MOUSE in the 984 Mark is a strong element and I believe it would not be overlooked by consumers.
3. It is these compounding differences which satisfy me that the Trade Mark is not deceptively similar to the 984 Mark. Assessing the trade marks in their entirety, and the likely impression on the mind of the relevant consumer, I find that there does not exist a real, tangible danger of deception or confusion between the trade marks.
4. On this basis, and having regard to the statutory presumption of registrability, I do not consider it appropriate to maintain the ground for rejection under s 44.

1. Section 33 provides:

(1) The Registrar must, after the examination, accept the application unless he or she is satisfied that:

(a) the application has not been made in accordance with this Act; or

(b) there are grounds under this Act for rejecting it.

(2) The Registrar may accept the application subject to conditions or limitations.

(a) the application has not been made in accordance with this Act; or

(b) there are grounds under this Act for rejecting it;

(4) The Registrar may not reject an application without giving the applicant an opportunity of being heard.

1. Under s 33, I must accept the Application unless satisfied there are grounds under the Act for rejecting it. Therefore, trade mark application 2466312 should be accepted for possible registration.

Specification: Class 9: Motion picture films prepared for exhibition,

Class 16: Books of all kinds including copying, sketching, painting, story and rag books; pictures, photographs, drawings, posters and postcards; pattern, playing and other cards; printed publications and cartoon strips,

Specification: Class 9: Electrical and scientific apparatus; photographic equipment; flashlights; teaching apparatus and instruments in this class; electronic goods; consumer electronic goods; audio cassettes; pre-recorded audio cassettes; phonograph records; compact discs; video cassettes; laser video discs; digital video discs (DVDs); digital versatile discs (DVDs); CD-ROMs; CD-ROMs and manual sold therewith; films, motion picture films; eyeglasses; sunglasses; video cassettes; pre-recorded video cassettes; computer games; interactive computer games; computer game cartridges; video game cartridges; computer game discs; compact disc players; compact disc recorders; DVD players; DVD recorders; video cassette players; video cassette recorders; audio cassette players; audio cassette recorders; MP3 players; MP3 recorders; minidiscs; minidisc players; minidisc recorders; computers; computer game programs; computer software; computer software including computer software in the fields of entertainment and games and manual sold therewith; computer hardware; computer keyboards; computer monitors; computer disc drives; modems; printers; computer mice; mouse pads; wrist and arm support pads for use with computers; personal digital assistants; portable telecommunication instant messaging devices; pagers; walkie-talkies; telephones; mobile telephones; mobile telephone accessories; cameras; digital cameras; video cameras; radios; televisions; GPS (global positioning systems); calculators; nautical, surveying, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus; decorative fridge magnets

Class 16: Paper; paper goods; paper articles; cardboard; cardboard articles; printed matter; publications; office and school supplies; address books; photograph albums; appliques in the form of decalcomanias; appointment books; arts and craft paint kits; painting sets for children; autograph books; baby books; paper party goods, paper party bags, paper party decorations; ballpoint pens; binders; book ends; bookmarks; books; paper gift wrap bows; paper cake decorations; calendars; gift cards; greeting cards; cartoons; pens; pencils; coloured pencils; fountain pens; erasers, pencil erasers; pen and pencil cases; pen and pencil holders; pen and pencil boxes; pen and pencil trays; pencil sharpeners; rulers, rulers for drawing, non-calibrated rulers; protractors; compasses, compasses for drawing; chalk; chalk erasers; chalk boards; crayons; markers; stationery; whiteboard markers; whiteboards; highlighting markers; staplers; decorative paper centre pieces; children's activity books; modelling clay; paper tablecloths; paper napkins; paper mats; colouring books; comic strips; comic books; diaries; gift wrapping paper; magazines; periodicals; stickers; notebooks; posters; memo pads; writing paper; envelopes; paper coasters; newspapers; photographs; post cards; trading cards; paper weights; painting palettes; decorative figures attachable to writing instruments; book binding materials; adhesives for stationery or household purposes; glue, glue sticks; artists material; paintbrushes; typewriters and office requisites (except office furniture); instructional teaching material (except apparatus); plastic material for packaging (not included in other classes); printers' type; printing blocks; presentation boards; desktop organisers; personal organisers; rubber stamps; stamp pads

Class 28: Toys; sporting goods; games; playthings; gymnastic and sporting articles; balls; golf balls; tennis balls; rubber balls; soccer balls; action figures and accessories; action skill games; dolls, dolls clothing; bean bag dolls; doll playsets; soft sculpture toys; stuffed toys; plush toys; balloons; Christmas tree ornaments; decorations for Christmas trees; bath toys; board games; building blocks; card games; playing cards; equipment sold as a unit for playing card games; children's play cosmetics; crib toys; puzzles; jigsaw puzzles; video game cartridges and discs; computer game cartridges; computer game discs; hand held electronic games; video electronic games; electric action toys; manipulative games; golf gloves; golf ball markers; kites; mobiles; music box toys; party favours in the nature of small toys; inflatable pool toys; multiple activity toys; wind-up toys; target games; disk-type toss toys; bows and arrows; toy vehicles; toy cars; toy trucks; toy buckets; toy shovels; toy bucket and shovel sets; roller skates; toy model hobbycraft kits; toy rockets; toy guns; toy holsters; musical toys; badminton sets; bubble making wands and solution sets; toy figurines; toy banks; puppets; yo-yos; skateboards; scooters; face masks; paper party hats

Class 41: Entertainment services; education services; production, presentation, distribution and rental of motion picture films; production, presentation, distribution and rental of television and radio programs; production, presentation, distribution and rental of sound and video recordings; provision of entertainment information; production of entertainment shows and interactive programs for distribution via television, cable, satellite, audio and video media, cartridges, laser discs, computer discs and electronic means; production and provision of entertainment, news and information via communication and computer networks; amusement park and theme park services; educational and entertainment services rendered in or relating to theme parks; live stage shows; presentation of live performances; theatre productions; entertainer services; pleasure-ground services; online services in this class; information services in this class; provision of training, sporting and cultural activities

[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').

[2] See Annexure 1 for full details of these trade marks.

[3] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891, [16] (Sundberg J).

[4] Re Jellenik's Application [1946] RPC 59 (Romer J).

[5] [1963] HCA 66, [12].

[7] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

[8] [2023] FCA 482, [55] (Jackman J).

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

[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] FCA 1539; (2000) 52 IPR 42, 62 [43] (Ryan, Branson and Lehane JJ).

[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)] (French J) restating principles from Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd [1954] HCA 82; (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.