Trade Marks Act 1995 (Cth) Opposition: When can a restaurant’s “KATONG HOUSE” branding be refused because it sounds like “KAN TONG”, and why can services survive when goods fail?

Based on the authentic Australian judicial case 2025 ATMO 72 (Opposition under s 52 to trade mark application no 2333577), this article disassembles the Court’s judgment process regarding evidence and law. It transforms complex judicial reasoning into clear, understandable key point analyses, helping readers identify the core of the dispute, understand the judgment logic, make more rational litigation choices, and providing case resources for practical research to readers of all backgrounds.

Chapter 1: Case Overview and Core Disputes

Basic Information

• Court of Hearing: Australian Trade Marks Office, Oppositions and Hearings (Delegate of the Registrar of Trade Marks)
• Presiding Judge: Delegate (Hearing Officer) of the Registrar of Trade Marks
• Cause of Action: Opposition to registration under s 52 of the Trade Marks Act 1995 (Cth), relying on ss 42(b), 44 and 60
• Judgment Date: 23 April 2025

Core Keywords:

• Keyword 1: Authentic Judgment Case
• Keyword 2: Trade Marks Act 1995 (Cth)
• Keyword 3: s 44 deceptively similar
• Keyword 4: goods versus services separation
• Keyword 5: restaurant and catering services in class 43
• Keyword 6: reputation under s 60 and ACL s 18 interface

Background

This opposition concerned a trade mark application for a device mark featuring the words “KATONG HOUSE” together with Chinese characters and a circular design, filed for a broad range of food goods in classes 29 and 30, and restaurant, café, takeaway and catering services in class 43. The Opponent relied on earlier registrations for “KAN TONG”, including a word mark and a device mark, used for many years on packaged Asian-inspired sauces, meal bases, noodles and related products. At the centre of the dispute was a practical, consumer-facing question: if two brand names are close in sound and look, does trade mark law require the later mark to be refused, even where the Applicant says it is a restaurant brand tied to a Singapore place name and cultural identity?

This was not a case about whether one party acted in bad faith, nor was it a case decided on sympathy for small business versus a large brand owner. It was a case about how the Trade Marks Act 1995 (Cth) calibrates risk: not a mere possibility of confusion, but a real and tangible danger that ordinary purchasers, with imperfect recollection, will be misled or left in doubt about trade origin.

Core Disputes and Claims

The core disputes can be stated with precision:

1. Section 44 dispute (goods): Are the Applicant’s goods in classes 29 and 30 the same as, or similar to, the goods covered by the Opponent’s earlier registrations, and is the Applicant’s mark deceptively similar to “KAN TONG”, such that registration must be rejected for those goods?
2. Section 44 dispute (services): Are the Applicant’s services in class 43 closely related to the Opponent’s goods, so that the same s 44 rejection should apply to services?
3. Section 60 dispute (services): Even if the services are not closely related for s 44, does the Opponent’s reputation in Australia mean that use of the Applicant’s mark for services would be likely to deceive or cause confusion because of that reputation?
4. Section 42(b) dispute (services): Would use of the Applicant’s mark for services be contrary to law, specifically the Australian Consumer Law (Schedule 2 to the Competition and Consumer Act 2010 (Cth)) and the tort of passing off?

Relief sought:

• Opponent: refusal of registration of the Applicant’s mark (the application as a whole), relying on the statutory grounds.
• Applicant: dismissal of the opposition and registration proceeding for the full specification (or at minimum for services), with the Applicant also resisting the idea that the marks were confusingly similar in the relevant sense.

Chapter 2: Origin of the Case

Trade mark disputes often start quietly, long before they become formal. A brand owner builds recognition over time by repeating the same sign on the same types of products, in the same channels of trade. In this matter, the Opponent’s story was anchored in decades: packaged Asian-inspired sauces, meal bases and related food products, sold nationally through supermarkets and widely promoted. The relevant consumer habit is familiar to most Australians: a quick scan of a supermarket aisle, a near-automatic reach for the brand a household has bought before, and a willingness to substitute when a product looks or sounds “about right”.

The Applicant’s story came from a different place: a restaurant business in Adelaide, built around Singaporean cuisine and a connection to “Katong” as a locality in Singapore. The Applicant’s intention, as put forward in evidence, was to use the brand not only for restaurant services but also for sauces, frozen meals, and pre-packed foods sold in connection with the restaurant.

Here is the decisive moment that pushed the dispute into law. Once the Applicant filed a trade mark application in classes 29, 30 and 43 for a sign that prominently included the word element “KATONG”, the Opponent was required to decide whether to accept coexistence or to invoke the opposition mechanism under s 52. Trade mark law is not merely reactive to proven harm; it operates to prevent likely confusion in the future. An opposition is the statutory “front door” to stop a registration before it becomes a stronger, registered right.

The relationship between the parties, in real life terms, was not a commercial partnership. It was an overlapping claim to a similar-sounding badge of origin, each used or intended to be used in food-related contexts. The law’s task was to decide whether the overlap created a legally unacceptable risk.

Chapter 3: Key Evidence and Core Disputes

Applicant’s Main Evidence and Arguments

1. Business narrative and rationale for the brand:

• The Applicant’s director explained that “Katong” was chosen because it is a residential area in Singapore with personal significance, and that the restaurant specialised in Singaporean food.
• The Applicant relied on the idea that the brand was culturally grounded and tied to a place name rather than designed to trade off another’s reputation.

1. Evidence of trading profile and public presence:

• The Applicant pointed to restaurant publicity such as a local magazine feature, an online video, an online directory listing, community event participation, and online reviews.
• The Applicant asserted an absence of customer confusion between “KATONG HOUSE” and “KAN TONG”.

1. Differentiation arguments:

• The Applicant contended that pronunciation differences existed: “KA” versus “KAN”.
• The Applicant emphasised additional elements: the word “HOUSE”, Chinese characters, and the device presentation.
• The Applicant submitted that consumers in this space have a degree of sophistication.

Opponent’s Main Evidence and Arguments

1. Earlier rights and registration scope:

• The Opponent relied on a word mark registration for “KAN TONG” covering broad goods in classes 29 and 30, and a device mark registration covering extensive goods including sauces, meal constituents, noodles, prepared meals and related items.
• The Opponent’s earlier priority dates substantially preceded the Applicant’s filing date.

1. Use, sales, advertising, and market reach:

• The Opponent’s marketing director gave evidence of long-standing use of “KAN TONG” branding in Australia, including packaging, website presence, historical references, and broad retail availability through major supermarkets and other retailers.
• The Opponent relied on substantial sales and advertising activity over many years to support both the s 44 context and the s 60 reputation claim.

1. Similarity and confusion risk:

• The Opponent pressed the proposition that “KATONG” and “KAN TONG” are aurally close and visually similar, and that “HOUSE” did not materially reduce the risk of confusion.
• The Opponent emphasised that the goods overlapped heavily and were fast-moving consumer goods purchased with limited attention.

Core Dispute Points

The decisive dispute points, framed as questions the Delegate had to answer, were:

1. Goods overlap: Are the Applicant’s food goods the same as, or similar to, the Opponent’s goods as registered?
2. Services relation: Are restaurant and catering services closely related to packaged food goods for s 44?
3. Mark similarity: Looking at the marks as wholes, is “KATONG HOUSE” (with device and Chinese characters) deceptively similar to “KAN TONG” in the trade mark sense, allowing for imperfect recollection?
4. Reputation-driven confusion: Even if services are not closely related for s 44, does the Opponent’s reputation generate a real risk that consumers would be caused to wonder about a connection for services?
5. Unlawfulness: Is there a sufficient basis to conclude that using the Applicant’s mark for services would be misleading or deceptive under the ACL, or constitute passing off?

Chapter 4: Statements in Affidavits

In trade mark oppositions, the most influential “storytelling” often occurs through statutory declarations. These documents do more than list facts; they frame the world the decision-maker must inhabit.

The Opponent’s declarations were built around a chain of commercial reality:
– The mark exists and is registered.
– The mark has been used for a long time.
– The mark appears consistently on products.
– The products are distributed widely.
– The public is exposed through sales and advertising.

That structure is not accidental. It is designed to make two legal moves easier. First, it supports the sense that consumers may have a stable memory imprint of the earlier mark. Second, it supports the s 60 requirement that the mark has acquired a reputation in Australia, which can be inferred from sales and marketing activity.

The Applicant’s declarations served a different strategic role. They attempted to narrow the case’s practical meaning:
– This is a restaurant brand, not a supermarket brand.
– The brand name was chosen for honest cultural reasons.
– The presentation includes additional features that prevent confusion.
– In lived experience, customers have not confused the two.

A critical boundary emerges here. “No one has complained” can help at the margins, but the statutory tests for deceptive similarity and s 60 confusion are not limited to proved confusion. They are forward-looking, notional, and concerned with ordinary consumers, not only the Applicant’s current customer base. That is why the Delegate repeatedly returned to notional normal and fair use: what the mark could be used for, across the full breadth of the specification, rather than how the Applicant presently uses it.

Strategic Intent Behind Procedural Directions Regarding Affidavits

The procedural discipline of declarations in oppositions serves a core purpose: to force the parties to commit to evidence that is testable against objective indicators such as registration scope, trade channels, and known purchasing behaviour. Where a party attempts to argue a “real-world” limitation, the decision-maker must check whether the application itself contains that limitation. If it does not, the law assumes normal and fair use across the whole specification.

In this case, that strategic procedural logic mattered most for services. The Opponent needed evidence showing that consumers would expect packaged goods and restaurant services to share a trade origin. Without such evidence, the “goods and services separation” risked defeating s 44 for services and weakening s 60.

Chapter 5: Court Orders

Before the final determination, the matter proceeded through standard opposition steps under s 52:
– Filing of a notice of intention to oppose and a statement of grounds and particulars.
– Filing of evidence in support by the Opponent.
– Filing of evidence in answer by the Applicant.
– Election for an oral hearing by video conference, with written summaries of submissions filed in advance.
– Consideration of the evidence and submissions by the Delegate.

A pivotal procedural direction occurred after the hearing stage: the Delegate proposed a practical path to partial survival of the application by offering the Applicant an opportunity to amend the specification to delete goods that were vulnerable under s 44. The Applicant did not accept that opportunity. That procedural decision by the Applicant ultimately mattered because trade mark applications are single applications across their specification; if a ground succeeds for part, the application can fail as a whole unless amended to remove the affected part.

Chapter 6: Hearing Scene: Ultimate Showdown of Evidence and Logic

Trade mark oppositions are rarely theatrical in the way that jury trials are. There were no dramatic cross-examinations of witnesses in open court. The “showdown” happens in a different arena: counsel testing each other’s case by pushing the law’s notional buyer, notional use, and trade channel assumptions to their limits.

The hearing was conducted by video conference. Both parties were represented by counsel. The central battlegrounds were:

1. What the marks sound like in ordinary speech.
2. What the marks leave behind in memory, especially when consumers shop quickly.
3. Whether “HOUSE” and small Chinese characters materially change the conceptual impression.
4. Whether restaurant and catering services are, in ordinary Australian commercial life, so closely related to packaged food products that consumers assume a single origin.

Process Reconstruction: Live Restoration

The Opponent’s position, in practical terms, was this:
– When an ordinary shopper sees “KATONG HOUSE” on sauces, meal bases, noodles, or prepared foods, the shopper is likely to remember the earlier “KAN TONG” brand and be left in doubt about whether the products share the same source.
– The overlap is intensified because the goods are low-cost, fast-moving, and purchased with limited attention.
– The law’s standard is not certainty but real, tangible risk.

The Applicant attempted to reframe:
– “KATONG” is not “KAN”; the first syllable matters.
– The overall presentation includes “HOUSE”, Chinese characters, and a device.
– The intended culinary positioning is Singaporean, which differs from generic Asian packaged foods.
– Actual customer experience suggests no confusion.

The Delegate’s reasoning process addressed each framing point by returning to statutory anchors:
– compare marks as wholes, not side-by-side, in the mind’s imperfect recollection;
– assume normal and fair use across the full specification;
– assess trade channel realities, but do not invent trade channel overlaps without evidence.

Core Evidence Confrontation

The most decisive evidence confrontation concerned the specification breadth. The Applicant’s goods were expansive across classes 29 and 30 and overlapped heavily with the Opponent’s goods as registered. That overlap meant that, for goods, the relationship was close, which in turn increases the practical risk that mark similarity will be deceptive.

For services, however, the Opponent confronted a different evidentiary problem: proving that restaurant and catering services are closely related to packaged goods in the sense required by s 44, and that consumers expect the same trade origin. Without concrete examples showing that consumers commonly see packaged goods brands as the source of restaurants and catering services, the argument risked becoming abstract.

Judicial Reasoning

The law’s turning point for goods was the Delegate’s assessment of deceptive similarity and the purchasing context. The Delegate’s reasoning can be captured in the following authoritative statement:

“The difference in pronunciation between KATONG, a two-syllable word pronounced KA – TONG, and KAN TONG is minor… In my view, there is minimal difference in pronunciation of the words KA and KAN when followed by TONG.”

This was determinative because the Delegate treated “KATONG” as the essential, prominent word element and concluded that ordinary consumers, allowing for imperfect recollection, could easily mix up the marks when used on the same types of packaged food goods.

Equally important was the Delegate’s commercial realism about consumer attention:

“Food products are generally fast moving consumer goods with a low price point. Therefore, less attention will be paid when purchasing such products… making the risk of confusion greater.”

That statement drove the conclusion that, for goods, the resemblance created a real and tangible danger of confusion.

For services, the Delegate anchored the reasoning in a different kind of realism: trade channels and consumer expectation cannot be assumed merely because goods can be used in services. The Opponent needed evidence of market practice or consumer expectation that the same entity provides both packaged goods and restaurant services under the same brand.

Chapter 7: Final Judgment of the Court

The final orders, in practical effect, were:

1. The opposition succeeded under s 44 in respect of the Applicant’s goods in classes 29 and 30 because the Applicant’s mark was found deceptively similar to the Opponent’s earlier mark(s) and the goods were the same as or similar to the Opponent’s goods as registered.
2. The opposition did not succeed under s 44 for the Applicant’s services in class 43 because the Delegate was not satisfied that the services were closely related to the Opponent’s goods.
3. The opposition did not succeed under s 60 for services because, despite reputation in the Opponent’s mark(s), the Delegate was not satisfied there was a real and tangible danger of deception or confusion for services, given the lack of nexus between the packaged goods market and restaurant/catering services.
4. The opposition did not succeed under s 42(b) for services because the stricter ACL misleading or deceptive conduct standard was not met on the evidence, and therefore passing off was also not established.
5. The Delegate offered the Applicant an opportunity to amend the application to delete the goods (classes 29 and 30) so that the services could proceed. The Applicant did not accept the offer.
6. Because the application was not amended, the application as a whole was refused.
7. Costs were awarded against the Applicant in accordance with the relevant scale.

Chapter 8: In-depth Analysis of the Judgment: How Law and Evidence Lay the Foundation for Victory

This chapter follows the required order: Special Analysis → Judgment Points → Legal Basis → Evidence Chain → Judicial Original Quotation → Analysis of the Losing Party’s Failure.

Special Analysis

1. The case is a clean demonstration of “specification breadth risk”.
   In trade mark law, the application is judged by what it claims, not what the applicant intends today. An applicant may sincerely run a restaurant, but if the application also claims a supermarket-level suite of sauces, noodles, prepared meals and other food goods, the applicant is stepping onto the same consumer shelf as existing packaged goods brands. That shelf is where imperfect recollection and quick purchasing create the highest confusion risk.
2. The decision illustrates a disciplined separation between goods-based and services-based reasoning.
   The Delegate did not let the goods outcome automatically decide services. Even though the marks were found deceptively similar for goods, the services still required their own “closely related” analysis under s 44(2), and their own reputation-driven confusion analysis under s 60. This is where many parties overreach: they assume that because the marks are close, every class must fall. The Delegate insisted on evidence of nexus.
3. The case shows the practical force of s 70 on colour.
   Applicants often argue that their colour scheme differs. But if the trade mark is not limited to colour, s 70 treats it as covering all colours. Colour differences in actual use can become legally fragile if the registration is broad. This makes trade mark drafting a strategic choice: broad coverage increases flexibility, but it also reduces the effectiveness of “we look different” arguments.

Judgment Points

1. Aural similarity can dominate when the goods are fast-moving and low-attention.
   The decision prioritised how ordinary consumers speak and remember brand names. In everyday shopping, people ask for or recall brands by sound. The Delegate treated the similarity between “KATONG” and “KAN TONG” as sufficient to create a real risk, especially when used on overlapping food goods.
2. The “HOUSE” element did not create conceptual distance.
   The Applicant’s reliance on “HOUSE” was met with a practical assessment: “HOUSE” is likely to suggest a place name or a named venue, rather than creating a conceptual barrier between the marks. Even when “HOUSE” adds some difference, the essential similarity in the first word element remained potent.
3. Small device and character elements carry less weight when the core word element is strong.
   Where the notional consumer’s memory imprint is the prominent word, additional small features can fail to reduce confusion risk, particularly for packaged goods purchased quickly.
4. For services, the law demands proof of consumer association, not just logical possibility.
   The Delegate accepted that goods and services can be related, and cited authorities on the evaluative nature of that task. But the decision insisted on evidence showing that consumers expect restaurant/catering services and packaged goods to share a trade origin. Without it, the Opponent could not establish “closely related” for s 44 services.
5. Reputation under s 60 is powerful, but it is not a free pass.
   The Opponent’s mark had reputation in packaged goods, and the marks were similar. Yet the Delegate still required a real and tangible danger of confusion for the services. The absence of evidence that the Opponent operated restaurant or catering services, and the absence of evidence of common market practice linking packaged goods brands to restaurant services, reduced the risk to below the statutory threshold.
6. Section 42(b) is not a fallback when s 60 fails.
   The Delegate treated ACL misleading or deceptive conduct and passing off as stricter standards than the “wonderment” threshold. Where the evidence does not show a real and tangible risk of misleading or deceptive conduct, s 42(b) will not rescue the case.
7. Procedural strategy can decide the application’s fate.
   The Applicant was offered a path to salvage services by deleting goods. Refusing that path meant the successful s 44 ground for goods caused refusal of the application as a whole. In trade mark practice, a narrow, realistic amendment can preserve what matters commercially.
8. The decision is a warning against “intended use” arguments unsupported by specification limitations.
   The Applicant tried to anchor the mark to Singaporean cuisine. The Delegate returned to the fact that the specification was not limited to any cuisine. The law does not import a limitation that is not in the application.

Legal Basis

The decisive statutory provisions and how they were applied:

1. Trade Marks Act 1995 (Cth), s 44(1) and s 44(2)

• For goods: registration must be rejected if the applicant’s mark is substantially identical with or deceptively similar to an earlier registered mark in respect of similar goods, with priority date conditions satisfied.
• The Delegate found the goods overlapped heavily because the Opponent’s registrations covered broad goods in classes 29 and 30.
• The Delegate found deceptive similarity, focusing on the essential word elements and the purchasing context.

• For services: s 44(2) requires similarity with closely related goods. The Delegate was not satisfied restaurant/café/takeaway/catering services were closely related to packaged goods on the evidence.

1. Trade Marks Act 1995 (Cth), s 60

• Required proof of reputation of an earlier mark in Australia before the priority date, and that because of that reputation, use of the later mark would likely deceive or cause confusion.
• Reputation was accepted for packaged goods.
• Confusion for services was not accepted because the nexus between the packaged goods market and restaurant/catering services was not established to the required level.

1. Trade Marks Act 1995 (Cth), s 42(b)

• Requires rejection if use would be contrary to law.
• The Opponent relied on the Australian Consumer Law, including ss 18 and 29, and passing off.
• The Delegate treated these as stricter standards than s 60 confusion and found they were not satisfied for services.

1. Trade Marks Act 1995 (Cth), s 70

• Where a mark is not limited to colour, it is taken to be registered for all colours, weakening arguments based on actual colour differences.

Evidence Chain

Victory Point 1: Registration breadth locked in goods similarity.
Conclusion: The goods were the same as or similar to the Opponent’s goods.
Evidence: The Opponent’s earlier word mark covered all goods in classes 29 and 30; the applicant claimed a wide suite of food products across those classes.
Statutory link: s 44(1) similarity requirement for goods.

Victory Point 2: Prominent word element “KATONG” drove memory imprint.
Conclusion: The essential feature created a similarity that mattered in recollection.
Evidence: The Applicant’s mark placed “KATONG” prominently; the Opponent’s mark was “KAN TONG” as its sole element (word mark), reinforcing distinctiveness and memorability.
Statutory link: s 10 deceptively similar concept, applied through s 44.

Victory Point 3: The purchasing environment increased risk.
Conclusion: Low-attention, fast-moving consumer goods increase confusion risk.
Evidence: The goods are everyday supermarket-type food items and sauces, not high-value specialist purchases.
Statutory link: “real and tangible danger” analysis in deceptive similarity.

Victory Point 4: The Applicant could not rely on cuisine positioning without specification limits.
Conclusion: Intended use does not narrow the statutory comparison.
Evidence: The specification did not limit goods or services to Singaporean cuisine.
Statutory link: notional normal and fair use.

Victory Point 5: “HOUSE” did not function as a strong differentiator.
Conclusion: Additional wording did not eliminate conceptual similarity.
Evidence: “HOUSE” is likely to be perceived as part of a place name or venue name, not a strong origin-distinguishing element for packaged goods in this context.
Statutory link: mark comparison as a whole; imperfect recollection.

Victory Point 6: Services survived s 44 due to lack of proof of close relation.
Conclusion: Restaurant and catering services were not shown to be closely related to packaged goods.
Evidence: No persuasive evidence of shared trade channels or consumer expectation that packaged goods brands also supply restaurant services.
Statutory link: s 44(2) “closely related” requirement.

Victory Point 7: Services survived s 60 due to lack of nexus and market difference.
Conclusion: Despite reputation, confusion for services was not a real and tangible danger.
Evidence: Reputation was in retail packaged goods; the evidence did not establish extension to services or typical market association.
Statutory link: s 60(b) confusion because of reputation.

Victory Point 8: Application refusal was sealed by the amendment decision.
Conclusion: The application failed as a whole because it was not amended to remove the goods.
Evidence: The Delegate offered an amendment to delete goods; the Applicant did not accept.
Statutory link: single application principle and procedural discretion to allow amendment.

Judicial Original Quotation

The determinative ratio-style reasoning is captured in these passages:

“In conclusion, allowing for the imperfect recollection of consumers of ordinary memory and intelligence, I consider the trade marks are likely to be mistaken one for the other… I therefore find that the Trade Mark is deceptively similar…”

This statement was determinative because it applies the statutory definition of deceptive similarity through the lens of ordinary consumer recollection. It was not a side-by-side visual comparison; it was a recollection-based risk assessment tied to how consumers actually shop.

“The Opponent’s evidence does not allow any informed conclusion about how commonly the goods… and the Applicant’s Services are provided through the same trade channels… I am not satisfied that the Applicant’s Services are closely related…”

This was determinative for services because it shows that “logical connection” is insufficient. The law requires an evaluative, evidence-based conclusion about trade channels and consumer association.

Analysis of the Losing Party’s Failure

The losing party’s principal failures were strategic and drafting-based rather than moral or credibility-based.

1. Over-claiming the goods specification.
   If the commercial priority was restaurant services, the goods specification should have been approached cautiously. By claiming a broad range of packaged food goods, the Applicant placed the mark directly into the Opponent’s strongest zone: supermarkets and packaged food. That choice made the s 44 goods case extremely difficult to defend.
2. Reliance on intended use without registration limits.
   The Applicant argued the mark was for Singaporean cuisine and home cooking positioning. But the application did not contain those limitations. The law therefore assessed the mark’s use across all claimed goods and services, undermining the Applicant’s intended-use narrative.
3. Underestimating aural similarity.
   In food branding, sound drives recall. The Applicant leaned on “KA” versus “KAN”, but the decision treated the difference as minor in ordinary pronunciation when followed by “TONG”. Once that was accepted, the goods outcome was hard to avoid.
4. Failure to make a practical amendment when offered.
   The most decisive litigation choice occurred after the Delegate signalled refusal unless the goods were deleted. An amendment would likely have preserved the services. By declining, the Applicant allowed the established goods opposition to defeat the whole application.
5. Limited evidentiary utility of “no confusion reported”.
   The absence of known confusion among existing restaurant customers does not answer the statutory question for packaged goods and notional use. Nor does it answer the question of how a broader supermarket audience might react.

Reference to Comparable Authorities

1. Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd
   Ratio summary: Deceptive similarity requires a comparison based on overall impression and imperfect recollection, not a side-by-side checklist. The notional consumer is assumed to have no special knowledge of actual use and the comparison proceeds on notional normal and fair use of the marks.
2. Campomar Sociedad Limitada v Nike International Limited
   Ratio summary: The assessment of confusion is grounded in the behaviour of ordinary consumers in the relevant market. The question is practical and commercial: how will real people react in the ordinary course of purchasing?
3. Registrar of Trade Marks v Woolworths Ltd
   Ratio summary: Whether goods and services are closely related is logically antecedent and evaluative, often guided by function, trade channels, and consumer expectation of common trade origin.

Implications

1. If you want a mark for a restaurant, do not casually claim supermarket goods.
   A broad goods specification can feel like “future-proofing”, but it imports risk. If your brand is a venue brand, start with service protection, then expand goods only when evidence, strategy, and clearance searches support it.
2. Sound matters more than you think.
   When people recommend food products, they often say the brand name out loud. If your mark sounds close to an established brand, you are carrying a litigation risk that does not require bad faith to materialise.
3. “We look different” is weaker if your registration covers all colours.
   If you rely on your colour scheme as a differentiator, consider whether your trade mark filing should include colour limitations. Broad flexibility can undermine your defence later.
4. Evidence of market practice is decisive for services.
   If you argue that packaged goods and restaurant services are linked in consumer expectation, bring examples: brand licensing, co-branded venues, supermarket brands operating eateries, or survey-style evidence where appropriate. Without it, the argument may be treated as abstract.
5. When the decision-maker offers an amendment path, treat it as a strategic checkpoint.
   Litigation is not only about “winning everything”. Sometimes a controlled concession preserves your core commercial asset. A narrower registration that survives can be worth far more than a broad registration that fails.

Q&A Session

1. If the services were not rejected under s 44 and s 60, why did the whole application fail?
   Because the application was a single application covering goods and services. Once a ground of opposition succeeded for the goods, the Delegate could refuse the application unless it was amended to remove the problematic goods. The Applicant did not amend, so the application was refused as a whole.
2. Does this mean restaurants can always use names similar to packaged food brands?
   No. The outcome for services depended on the evidence and the statutory tests. If evidence showed consumers commonly associate the packaged brand with restaurant services, or if the brand owner already operated or licensed restaurant services, s 60 risk could increase. Each case depends on the strength of reputation, mark similarity, and the connection between markets.
3. What is the single most practical lesson for small business owners choosing a culturally meaningful name?
   Choose the name you love, but do a trade mark clearance search early, and decide what you truly need protected first. If your priority is your venue and its services, protect services and build evidence of distinctiveness. Expanding into packaged goods should be a deliberate second step, not an automatic filing choice.

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Appendix: Reference for Comparable Case Judgments and Practical Guidelines

1. Practical Positioning of This Case

Case Subtype: Trade Marks Opposition under the Trade Marks Act 1995 (Cth) involving deceptive similarity for food goods and separation of goods and services for restaurant and catering services

Judgment Nature Definition: Final decision in an opposition proceeding (administrative merits determination by a Delegate of the Registrar of Trade Marks)

2. Self-examination of Core Statutory Elements

This case most closely aligns with category ④ Commercial Law and Corporate Law for the purposes of the practical library below. The following test standards are for reference only, are not absolute, and must be applied to the specific facts and evidence in each matter.

Core Test (Contract Formation)

Step 1: Offer
– Identify whether one party made a clear proposal capable of acceptance.
– Check whether essential terms are sufficiently certain.
– Assess whether the proposal was communicated and whether it remained open at the time of acceptance.

Step 2: Acceptance
– Identify whether there was an unqualified assent to the offer.
– Check whether acceptance was communicated in the manner contemplated by the offer or by the parties’ course of dealing.
– Consider whether acceptance was conditional, which may indicate a counter-offer rather than acceptance.

Step 3: Consideration
– Identify whether each party provided something of value, whether a benefit to the promisor or a detriment to the promisee.
– Confirm consideration is not past and is legally sufficient, even if economically modest.
– Distinguish consideration from mere motive or reliance.

Step 4: Intention to create legal relations
– Determine whether the circumstances suggest a legally binding arrangement.
– Consider whether the context is commercial, where intention is generally inferred, or domestic/social, where it may not be.
– Review surrounding communications and conduct, including whether the parties behaved as if bound.

Practical note: In trade mark disputes, contract formation tests arise most often in settlement agreements, coexistence agreements, licensing arrangements, or supply and branding arrangements. If a party asserts “we had permission”, the analysis tends to turn on these steps.

Core Test (Section 18 of the Australian Consumer Law)

Step 1: Conduct in trade or commerce
– Identify the impugned conduct: branding, advertising, packaging, online representations, signage, menus, domain names, or social media.
– Confirm it occurred in trade or commerce, not purely private.

Step 2: Likely to mislead or deceive
– Identify the target audience: ordinary consumers in the relevant market.
– Assess the overall impression, not a fine textual analysis.
– Consider context: purchasing environment, attention level, and common consumer behaviour.
– Determine whether there is a real likelihood of consumers forming an incorrect belief, not merely a theoretical possibility.

Step 3: Materiality and causation considerations
– Identify whether the misleading aspect is capable of influencing consumer choices.
– Consider whether confusion persists long enough to affect decisions, noting that some forms of confusion can still be relevant even if not enduring.

Practical note: The risk tends to be relatively high where marks are aurally close and goods are low-attention purchases, but it can be relatively lower where markets and trade channels are clearly separated and consumers have more time and information.

Core Test (Unconscionable Conduct)

Step 1: Special disadvantage
– Identify whether one party suffered a special disadvantage affecting decision-making, such as significant language barriers, illiteracy, vulnerability, urgent need, or inability to understand documents.

Step 2: Knowledge and exploitation
– Determine whether the stronger party knew or ought reasonably to have known of the disadvantage.
– Assess whether the stronger party took advantage in a way that offends conscience.

Step 3: Against good conscience
– Consider the circumstances as a whole, including bargaining power, transparency, and whether the outcome is harsh or oppressive.
– Consider available alternatives and whether any pressure tactics were used.

Practical note: Unconscionable conduct is not the usual pathway in a trade mark opposition, but it can become relevant in broader commercial disputes involving franchise arrangements, licensing, or settlement conduct.

3. Equitable Remedies and Alternative Claims

The following are alternative paths that may be relevant when statutory avenues are exhausted or when the dispute expands beyond registration to broader commercial conduct. These pathways are for reference only and outcomes tend to be determined by evidence quality and credibility.

Promissory / Proprietary Estoppel

• Did the other party make a clear and unequivocal promise or representation, such as an assurance of coexistence, consent to use a brand, or a promise not to oppose?
• Did you act in detrimental reliance on that promise, such as building a venue fit-out, printing packaging, entering supply contracts, or investing in marketing?
• Would it be unconscionable for the other party to resile from the promise given your reliance?
• Result reference: Equity may prevent the other party from going back on their word, potentially supporting relief such as enforcement of a coexistence promise or compensation for reliance losses.

Unjust Enrichment / Constructive Trust

• Has the other party received a benefit at your expense, such as capturing the value of your marketing investment or appropriating goodwill in a way that is against conscience?
• Is it against conscience for them to retain that benefit without payment or adjustment?
• Result reference: A court may order restitution of the benefit, though in trade mark contexts this tends to intersect with passing off, misleading conduct, or contractual claims rather than pure constructive trust outcomes.

Procedural Fairness

• If a party challenges an administrative decision beyond the opposition itself, identify whether there was a fair hearing opportunity, an apprehension of bias, or a failure to consider relevant material.
• Result reference: Judicial review relief can be available where jurisdictional error is established, but it tends to be relatively high risk unless clear procedural defects are shown.

Ancillary Claims

• If a registration pathway fails, consider whether brand protection can be reframed through:
  • passing off, where reputation, misrepresentation, and damage are established;
  • ACL s 18, where misleading or deceptive conduct is established;
  • copyright or design claims for label artwork, depending on facts.

4. Access Thresholds and Exceptional Circumstances

Regular Thresholds

• Trade mark opposition window: Opposition must be filed within the statutory opposition period following advertisement of acceptance, subject to extension mechanisms in limited circumstances.
• Section 44 threshold: For goods, similarity and deceptive similarity can be sufficient to require rejection unless exceptions apply.
• Section 44 exceptions: Honest concurrent use or other circumstances may permit acceptance, but they tend to require strong evidence of prior use and market coexistence.

Exceptional Channels

• Honest concurrent use: Where both parties have used similar marks independently for a significant time without confusion, acceptance may be available on conditions or limitations, but this tends to require detailed evidence and can be relatively high risk if the overlap is substantial.
• Amendments to specification: Narrowing goods or services can be a practical exception channel to salvage part of an application, especially where the conflict sits mainly in particular goods classes.
• Conditions or limitations: Geographic, channel-based, or specification-based limits can sometimes be used, but their effectiveness depends on realistic enforceability and consumer perception.

Suggestion: Do not abandon a potential claim simply because you do not meet a standard threshold. Carefully compare your circumstances against available exception pathways such as amendment, limitation, or evidence-based honest concurrent use, as these are often the key to a workable outcome.

5. Guidelines for Judicial and Legal Citation

Citation Angle:
– It is recommended to cite this case in legal submissions or debates involving:
– the assessment of deceptive similarity where aural resemblance is central;
– the treatment of fast-moving consumer goods and low-attention purchasing contexts;
– the goods and services separation analysis under s 44(2), including trade channel and consumer expectation evidence requirements;
– the limits of s 60 where reputation exists but the nexus to services is weak.

Citation Method:
– As Positive Support: When your matter involves a broad goods specification overlapping with an earlier brand in the same classes, citing this authority can strengthen an argument that low-attention goods heighten confusion risk and that minor syllabic differences may be insufficient.
– As a Distinguishing Reference: If the opposing party cites this case, you should emphasise differences such as:
– your specification is narrowly limited by cuisine type, channel, or other constraint;
– your mark includes prominent, distinctive elements that alter overall impression;
– there is concrete evidence of different trade channels or consumer understanding;
– you can prove substantial honest concurrent use before the relevant date.

Anonymisation Rule:
– When discussing party positions, strictly use procedural titles such as Applicant and Opponent. Do not use party names.

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Conclusion

This decision shows how trade mark law converts ordinary shopping psychology into legal risk: the closer the goods and the closer the sound, the more the law protects consumers from doubt about origin, even where both sides act honestly.

Golden Sentence:
Everyone needs to understand the law and see the world through the lens of law. The in-depth analysis of this authentic judgment is intended to help everyone gradually establish a new legal mindset: True self-protection stems from the early understanding and mastery of legal rules.

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Disclaimer

This article is based on the study and analysis of the public judgment of the Australian Trade Marks Office (Oppositions and Hearings) (2025 ATMO 72), aimed at promoting legal research and public understanding. The citation of relevant judgment content is limited to the scope of fair dealing for the purposes of legal research, comment, and information sharing.

The analysis, structural arrangement, and expression of views contained in this article are the original content of the author, and the copyright belongs to the author and this platform. This article does not constitute legal advice, nor should it be regarded as legal advice for any specific situation.

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