TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:	Opposition by Mattel, Inc. to extension of protection under regulation 17A.33 of the Trade Marks Regulations 1995 (Cth) of trade mark number 2313647 (International Registration number 1695096) (classes 9, 28, 41) – BLOKEES (fancy) - in the name of SHANGHAI BLOKS TECHNOLOGY GROUP CO., LTD.

Delegate:	Sheona Robertson	
Representation:	Opponent: Shariqa Mestroni of Bird & Bird
Holder: Rebecca de Stoop of Counsel, instructed by Clark Intellectual Property Pty Ltd	
Decision:	2025 ATMO 3
Trade Marks Regulations 1995 (Cth) – opposition to extension of protection under reg 17A.33 – ss 42(b), 44, 60 and 62A of the Trade Marks Act 1995 (Cth) considered – s 44 partially established –  protection to be extended for a subset of the goods and services	

Background
1.	This decision concerns an opposition by Mattel, Inc. (‘Opponent’) under reg 17A.33 of the Trade Marks Regulations 1995 (Cth) (‘Regulations’) to the extension of protection to Australia of the trade mark detailed below, which is the subject of an International Registration Designating Australia (‘IRDA’), filed by SHANGHAI BLOKS TECHNOLOGY GROUP CO., LTD. (‘Holder’): 
 IRDA No. 	2313647	
International Registration (‘IR’) No. 	1695096	
Representation:	 
(‘Trade Mark’)	
Filing Date:	13 October 2022	
Priority Date: 	20 May 2022	
Goods/Services:	Class 9: Computer software, recorded; computer game software, downloadable; animated cartoons; downloadable software applications for mobile phones; downloadable music files; computer software applications, downloadable; computer game software, recorded; electronic book readers; downloadable image files; downloadable emoticons for mobile phones.
Class 28: Building blocks [toys]; toys; toy figures; toy robots; games; smart toys; toy building blocks; interlocking construction toys; remote-controlled toy vehicles; trading card games.
(together, ‘Holder’s Goods’)
Class 41: Organization of competitions [education or entertainment]; educational services; providing online videos, not downloadable; entertainment services; toy rental; academies [education]; providing online electronic publications, not downloadable; providing online music, not downloadable; providing information in the field of entertainment; game services provided online from a computer network.
(‘Holder’s Services’)	
2.	The IRDA was examined and advertised as accepted for possible extension of protection on 17 November 2022.
3.	The Opponent filed a Notice of Intention to Oppose to the extension of protection, followed by a Statement of Grounds and Particulars (‘SGP’) on 9 February 2023. The same day a separate opposition was filed by the Opponent’s subsidiary, SEKKOIA S.A.S (‘Sekkoia’).  
4.	The Holder filed a Notice of Intention to Defend on 17 April 2023. 
5.	The Opponent filed the following evidence in support of its opposition:
•	Declaration made on 25 July 2023 by Michael Moore, Associate General Counsel and Senior Director of Intellectual Property (Content and Brands) of the Opponent, and Exhibits MM-1 to MM-22 (including Confidential Exhibits MM-6, MM-13 and MM-19) (‘Moore’).
6.	The Holder filed the following evidence in answer:
•	Declaration made on 30 October 2023 by Zhu Yuancheng, Board Secretary of the Holder, and Exhibits ZY-1 to ZY-9 (‘Zhu’).
7.	The Opponent did not file any evidence in reply.
8.	Moore contains a clause to the effect that Confidential Exhibits MM-6, MM-13 and MM-19 contain highly sensitive information and are to remain confidential. Zhu also contains a clause to the effect that information within that declaration is confidential, however the confidential information is not specified. I adopt the approach of the delegate in Source Homeloans Pty Ltd v Coles Group Ltd. Arguably, there are sensitive commercial matters in each declaration which I will not discuss in any detail in my reasoning. However, I will discuss the evidence to the degree necessary to provide sensible reasons for my decision.
9.	Once the period for filing evidence had ended, the parties were given an opportunity to request a hearing. Both parties requested an oral hearing. The Opponent filed written submissions on 17 September 2024 (‘Opponent’s Submissions’). The Holder filed written submissions on 24 September 2024 (‘Holder’s Submissions’). 
10.	By request of the Opponent and Sekkoia, the matter was heard by video conference on 1 October 2024 concurrently with Sekkoia’s opposition. At the hearing, Shariqa Mestroni of Bird & Bird appeared for the Opponent and Sekkoia, and Rebecca de Stoop of Counsel, instructed by Clark Intellectual Property Pty Ltd, appeared for the Holder. 
11.	This matter has been allocated to me to decide as a delegate of the Registrar of Trade Marks (‘Registrar’). I have decided this matter on the basis of the materials identified above and the parties’ oral submissions made at the hearing.  
Preliminary Issue
12.	The Opponent’s Submissions enclosed material that was not filed within the statutory period for the Opponent to file its evidence, namely a letter dated 11 September 2024 sent from the Opponent’s solicitors to the Holder’s representatives (‘Letter’). According to the Opponent’s Submissions, the letter seeks confirmation of the following:
•	whether the Holder still sells products on the Amazon Australia website;
•	whether the Holder has licensed Pai Technology Inc. to operate the website https://blokees.com/. The Opponent claims to have only been made aware of the existence of this website after its evidence had been filed. 
13.	The Opponent’s Submissions did not include any explanation as to why the Letter was filed out of time or a request that the Registrar extend the statutory period for filing evidence to consider the Letter. Although somewhat ambiguous in both the Opponent’s written and oral submissions, it appears to be the Opponent’s contention that the Holder’s recent activities are relevant to an assessment of the likelihood of confusion pursuant to s 60.
14.	The Opponent submitted that the Letter ought to be considered as it seeks to address issues with the Holder’s evidence, being that the evidence contains outdated or inaccurate information that the Holder ought to clarify. It is the Opponent’s position that the Letter is not in the nature of new evidence but rather clarifies the position of the Holder which is already in evidence. 
15.	In its oral submissions, the Opponent cited reg 25.15(4) of the Regulations, which provides:
21.15  Opportunity to be heard by Registrar 
(4) The Registrar is not bound by the rules of evidence, but may be informed on any matter that is before the Registrar in a way that the Registrar reasonably believes to be appropriate. 

16.	The Holder’s submissions regarding the Letter may be summarised as follows:
•	if the Registrar were to consider the Letter, the Holder would need to be provided an opportunity to make submissions in reply, noting the inevitable time and cost constraints given the Holder is based overseas; 
•	as the Letter comprises evidence filed well after the evidence due date, neither the balance of convenience nor the public interest would be served by the Registrar’s consideration of the Letter;
•	the Letter has low probative value. 
17.	Regulation 21.19 of the Regulations affords the Registrar discretion to consider whether available information is relevant and should be considered in making a decision in the proceedings. However, reg 21.19 is not a substitute for the evidence stages of an opposition, and compelling reasons are required for inclusion of any new material that was not properly filed during the evidence stages.
18.	For the reasons which follow the Letter does not change the outcome of this matter, and therefore I have not found it necessary to consider this issue any further.
Grounds of opposition, onus and standard of proof
19.	Regulation 17A.34 of the Regulations provides that the extension of protection may be opposed on any of the grounds on which an IRDA may be rejected as well as the grounds set out in ss 58 to 61 and 62A of the Trade Marks Act 1995 (Cth) (‘Act’).
20.	The SGP nominated grounds of opposition under ss 42(b), 44, 60 and 62A of the Act.
21.	The Opponent bears the burden of establishing at least one of the grounds of opposition on the ordinary civil standard of the balance of probabilities. The relevant date for determining the rights of the parties is 20 May 2022 (‘Relevant Date’) pursuant to the Madrid Protocol, being the priority date of the IRDA.
The Opponent
22.	The Opponent is a leading global toy company, founded in the United States of America in 1945, that produces a diverse range of products including infant and toddler toys, dolls, toy vehicles, action figures, construction toys, educational toys, youth electronics, games including digital games, puzzles and plushies. Exhibit MM-2 to Moore contains a timeline of the Opponent’s company history between 1947 and 2023 from the Opponent’s website, ‘corporate.mattel.com’. 
23.	As of 2023, the Opponent was the world’s second largest toy maker by revenue with a net worth of approximately $6.92 billion. In December 2021 the Opponent employed approximately 36,300 staff in over 35 countries. The Opponent has a presence in 35 countries and its products are sold in more than 150 countries. 
24.	Since 2008 the Opponent has been the ultimate parent company of Sekkoia. Sekkoia is the owner of the following Australian trade mark registrations (together, ‘BLOKUS Trade Marks’):
Registration No.	Trade mark	Priority date	Class	Goods	
1231167
	
(‘BLOKUS Device Mark’)	24 March 2008	28	Board games	
1274145	BLOKUS
(‘BLOKUS Word Mark’)	26 November 2008	28	Games and playthings; gymnastic and sporting articles not included in other classes; decorations for christmas trees	
25.	A reference to ‘BLOKUS Goods’ in this decision is a reference to the goods of the BLOKUS Device Mark and the goods of the BLOKUS Word Mark listed above. 
26.	The BLOKUS board game was first launched by Sekkoia in September 2000, whereupon it quickly became one of the world’s bestselling board games. Since it acquired Sekkoia in October 2008, the Opponent has distributed board games under the BLOKUS brands including the sub-brands ‘BLOKUS TRIGON’, ‘BLOKUS 3D’, ‘BLOKUS DUO’ and ‘BLOKUS GIANT’. The Opponent commenced distributing BLOKUS branded goods in Australia in 2009. 
27.	In addition to the sub-brands identified above, Sekkoia and the Opponent manufactured variants of the BLOKUS board games with different challenges and/or formats such as ‘Travel BLOKUS/ BLOKUS To Go!’, ‘BLOKUS Junior’ and ‘BLOKUS Giant/ BLOKUS XL’. For some time there was also an official online version of the BLOKUS game, which was discontinued in May 2012 as it did not meet the Opponent’s playability standards. 
28.	The Opponent has provided the following description of the BLOKUS board game:
The BLOKUS board game is an abstract strategy board game that can be played by two to four players. Each player selects one of four colours (red, blue, green and yellow). The objective is for players to try and score points by occupying most of the board with pieces of their colour. Players lay down the tiles of their colour on the board following only one rule: a player's tile must only touch the same colour at the comers - the "faces" of the tiles cannot touch.

29.	Since at least 2009 the Opponent has held licensing and distribution agreements with large retail chains and independent retail outlets for distribution of the BLOKUS board game in Australia, including Myer, Toyworld, TOYSRUS, dicksmith.com.au and Online Toys Australia. 
30.	The Opponent claims to have derived significant revenue from goods provided under or by reference to the BLOKUS Trade Marks. Exhibit MM-17 to Moore contains extracts from the Opponent’s annual report for the financial year 2022. Exhibit MM-18 is a table which summarises annual global sales for the years 2020 to 2022. Confidential Exhibit MM-19 details the Opponent’s annual revenue in Australia for the financial years 2011 to 2020 in respect of the BLOKUS board game. 
31.	Confidential Exhibit MM-13 to Moore details the Opponent’s games marketing expenditure (which includes the BLOKUS board game) in Australia from the financial years 2019 to 2021.
32.	The BLOKUS board game has been promoted internationally, including to consumers in Australia, by way of the Mattel online store (‘shop.mattel.com’) since 2009. Printouts from The Wayback Machine showing archived use of the BLOKUS Word Mark on the Mattel online store at various dates before the Relevant Date are shown in Exhibit MM-5 to Moore. Confidential Exhibit MM-6 consists of a table setting out the number of Australian visitors to various Mattel webpages, including the Mattel online store, in the years 2020 and 2021. 
33.	The Opponent also promoted the BLOKUS Word Mark on its social media channels, including: 
•	The Opponent’s Facebook page since October 2009. Exhibit MM-7 to Moore contains examples of posts relating to the BLOKUS board game on the Opponent’s Facebook page, dated before the Relevant Date;
•	The Opponent’s Instagram account since July 2014. Exhibit MM-8 to Moore is an example of a post related to the BLOKUS board game on the Opponent’s Instagram page before the Relevant Date;
•	The Opponent’s Twitter account since December 2009. Exhibit MM-9 to Moore contains examples of posts on the Opponent’s Twitter account promoting the BLOKUS board game before the Relevant Date;
•	The Opponent’s YouTube pages. Exhibit MM-10 to Moore contains screenshots of videos posted on the Opponent’s YouTube pages promoting the BLOKUS board game before the Relevant Date.
34.	The Opponent has promoted the BLOKUS board game at various toy fairs around the world (including the world’s largest toy show in Nuremberg, Germany) since at least 2010, and at the Australian Toy Association Toy Fair since at least 2017. Exhibit MM-12 to Moore is an article about one of the Opponent’s stands at the Toy Fair Melbourne in 2023.
35.	Since at least 2018, some of the Opponent’s Australian distributors have promoted the BLOKUS board game in their catalogues. Exhibit MM-11 to Moore contains excerpts from catalogues in 2018 and 2019 which show promotion of the BLOKUS board game. 
36.	There has been substantial media coverage of the BLOKUS products. Exhibit MM-14 to Moore contains examples of articles published online by third parties (namely Families Magazine, People’s magazine, IGN.com/au and Howstuffworks) which reference the BLOKUS board game. Exhibit MM-15 contains examples of YouTube videos dated before the Relevant Date which give brief explanations of the BLOKUS board game.
37.	Sekkoia has been the recipient of industry awards in respect of the BLOKUS board game. Exhibit MM-16 to Moore contains examples of the awards Sekkoia has received in Australia, including the 2003 Australian Games Association Game of the Year. The BLOKUS game has also been awarded more than 20 accolades from various parenting and toy associations internationally, including the Mensa Select Award in 2003, the Vuoden Peli Family Game of the Year in 2003 and the Teacher’s Choice award in 2004. 
38.	The Opponent and Sekkoia have licensed third parties to develop and release PC games, video games and digital download games based on the BLOKUS board game. The earliest of these games was released internationally in 2008, and the latest was delisted from the Apple App Store in 2018.
The Holder
39.	The Holder was established in Shanghai, China in December 2014. The Holder was formerly known as Shanghai Pai Technology Co., Ltd (‘Shanghai Pai’) but the Holder adopted its current name in 2020. 
40.	The Holder manufactures and supplies building blocks designed for toddlers and older children, animations and cartoons including ‘Magic Bloks’ and ‘Team Bloks’, and online games and educational services for children. Exhibit ZY-1 to Zhu is a company profile for the Holder.
41.	The Holder operates a Chinese language website, https://www.bloks.com/ (‘Holder’s Website’).
42.	The Holder has applied to register the trade marks ‘BLOKEES’ or ‘blokees’ in 32 jurisdictions, and it is declared in Zhu that registration had been granted in Egypt, the European Union, Indonesia, Israel, New Zealand, Russia, Singapore, Syrian Arab Republic, Türkiye and the United Kingdom. Exhibit ZY-2 to Zhu contains a schedule of the Holder’s trade mark applications and registrations around the world. 
43.	The Trade Mark is used in respect of a building blocks system for children including themed sets of building blocks. It is declared in Zhu that the name “BLOKEES” was derived from a combination of the word “BLOKS” from the Holder’s name with the letters “EE”.
44.	The Trade Mark was first used in the United States of America in July 2022. Since that time, the Holder has expanded use of the Trade Mark to several countries in Asia, as well as Russia, South Africa and Brazil. The Holder sells millions of dollars worth of products under and by reference to the Trade Mark annually. 
45.	Exhibit ZY-3 to Zhu is a selection of photographs of product packaging for some of the Holder’s building block products which bear the Trade Mark. Exhibit ZY-6 contains representative images of the Holder’s BLOKEES products sold in South Korea. 
46.	The Holder promotes the Trade Mark on the Holder’s Website, on the Apple App Store and on the Google Play store. Images of the promotion of BLOKEES products on these platforms are contained in Exhibit ZY-9 to Zhu. The Holder invests hundreds of thousands of dollars in worldwide promotional and advertising of BLOKEES products each year. 
47.	Although the Holder does not presently have any retail outlets or distributors in Australia, Australian customers are able to purchase the Holder’s BLOKEES products via the Amazon Australia website. Exhibit ZY-4 to Zhu contains examples of BLOKEES products sold around the world via the Amazon and Amazon UK websites. Exhibit ZY-5 to Zhu contains examples of BLOKEES products sold via the Amazon Australia website. 
48.	On 6 August 2022 the Holder entered into a license agreement with Pai Technology Limited (‘Pai Technology’) for the use of the BLOKEES trade mark in the countries designated under IR 1695096. A copy of this agreement, together with an English translation, is provided in Exhibit ZY-7 to Zhu. 
49.	Exhibit ZY-8 to Zhu contains redacted example invoices from Pai Technology to customers in South Korea, Malaysia, Hong Kong, Singapore and the Philippines between November 2021 and October 2023. 
Discussion
Section 44
50.	Section 44 of the Act 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)	the applicant’s trade mark is substantially identical with, or deceptively similar to:
(i)	a trade mark registered by another person in respect of similar goods or closely related services; or
(ii)	a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
(b)	the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services. …
(2)	Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a)	it is substantially identical with, or deceptively similar to:
(i)	a trade mark registered by another person in respect of similar services or closely related goods; or
(ii)	 a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b)	the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods. …

(3)	If the Registrar in either case is satisfied:
(a)	that there has been honest concurrent use of the 2 trade marks; or
(b)	that, because of other circumstances, it is proper to do so; 
the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.  

(4)	If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:
(a)	beginning before the priority date for the registration of the other trade mark in respect of:
(i)	the similar goods or closely related services; or
(ii)	the similar services or closely related goods; and
(b)	ending on the priority date for the registration of the applicant's trade mark; 
the Registrar may not reject the application because of the existence of the other trade mark.
51.	The SGP nominates the BLOKUS Trade Marks as the basis for this ground of opposition.
52.	The s 44 ground of opposition is established if, subject to subsections 44(3) and 44(4) of the Act, the BLOKUS Trade Marks:
(i)	are in the name of a person other than the Holder;
(ii)	have a priority date which is earlier than the Relevant Date;
(iii)	 are substantially identical with, or deceptively similar to, the Trade Mark; and
(iv)	 are in respect of goods or services which are similar, or closely related, to the Holder’s Goods and Services.

53.	The BLOKUS Trade Marks are registered by a person other than the Holder and have priority dates which are earlier than the Relevant Date. Requirements (i) and (ii) are satisfied. The next step is to determine whether the Holder’s Goods are in part the same as or similar to, or the Holder’s Services are closely related to, the BLOKUS Goods. 
Similarity of goods/services
54.	Section 14 of the Act provides:
14  Definition of similar goods and similar services

(1)	For the purposes of this Act, goods are similar to other goods:
(a) if they are the same as the other goods; or
(b) if they are of the same description as that of the other goods.
(2) For the purposes of this Act, services are similar to other services:
(a) if they are the same as the other services; or
(b) if they are of the same description as that of the other services.

55.	Whether goods are of the same description depends on ‘whether the goods belong to the same or different trades’. This is determined through consideration of the following factors, none of which is singly determinative:
(i)	the nature of the goods;
(ii)	the respective uses of the goods; and
(iii)	the trade channels through which the goods are respectively bought and sold.
56.	In considering the trade channels of the respective goods, it is relevant to assess whether they are usually produced by one and the same manufacturer or distributed by the same wholesalers, whether they are sold in the same shops to the same class or classes of customers, and whether they are regarded as belonging to the same trade by their manufacturers or distributors. 
57.	The expression ‘goods of the same description’ should not be given so restricted a construction that it is limited to goods substantially analogous in kind, or commonly used as mere substitutes or alternatives for one another. The nomination of a class for a particular good or service is largely a matter of convenience for administrative purposes, and is not decisive as to the scope of a registration. 
58.	The test for determining whether goods are closely related to services, or vice versa, requires a different analysis. The words ‘closely related’ are not defined in the Act. Justice French noted in Registrar of Trade Marks v Woolworths Ltd:
The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related” … it is a term of wider import than “similar” and can apply to the relationships between competing services as well as between goods and services.

59.	The evaluation as to whether specific goods and services are closely related is likely to depend on evidence. 
60.	The Opponent submits that the underlying purpose of the BLOKUS Goods and the Holder’s Goods and Services are identical; namely, entertainment and/or education. The Opponent further submits that the respective products share the same target market and that there is an overlap between the trade channels for the respective goods. 
61.	The Holder contends that the respective trade marks are used in respect of different goods; the Opponent uses the BLOKUS Trade Marks in respect of flat board games for two to four players utilising coloured tiles, whereas the Holder’s three-dimensional plastic building blocks and toy figures are used to build characters and figures, and are designed to foster learning and creativity.  The Holder accepts that the respective goods are likely to be sold in the same trade channels, but that this factor alone is not determinative. 
62.	I note in this regard that for comparative purposes it is the notional scope of the respective claims that must be considered. Section 44 requires the assumption that both the Trade Mark and the BLOKUS Trade Marks will be used in a “normal and fair manner” for all the goods and/or services in question. The actual manner of use of the trade marks by the Holder and the Opponent is not to be considered, rather the assumption is that both parties “use or intend to use their trade marks to the limits of their specifications”.
63.	The Opponent submits that the respective goods and services serve the same purpose, namely entertainment and/or education, that the respective goods and services would target the same consumers, namely children and families, and that there is overlap between the trade channels of the respective goods.  
64.	I accept that all the Holder’s Goods in Class 28 are the same as, or similar to, the BLOKUS Goods. The goods in Class 28 of the BLOKUS Device Mark includes a broad claim for “games and playthings” which are the same as, or include within their description, all the toys and games specified in Class 28 of the Holder’s Goods. Similarly, the “board games” specified in Class 28 of the BLOKUS Word Mark fall within the broad description of “games” in Class 28 of the Trade Mark, and are similar in origin, nature and purpose to the “toys” in Class 28 of the Trade Mark. Board games and other games and toys are likely to be encountered in close proximity in the same catalogues, at the same retail outlet or on the same online store. Having regard to market realities, if similar trade marks were to be used on these goods there would be a real and tangible danger of confusion. Accordingly, I am satisfied that all the Holder’s Goods in Class 28 are similar to the BLOKUS Goods. 
65.	Turning to the Holder’s Class 9 goods, I note that the Holder’s broad claims for computer software and downloadable software applications would notionally include software and software applications for games. I am satisfied that game software and game software applications are similar to the “game and playthings” of the BLOKUS Device Mark and also the “board games” of the BLOKUS Word Mark. The Opponent submits that the computer game, video game and mobile phone versions of the BLOKUS board game demonstrate that computer games and mobile games are goods of the same description as “board games” and “games and playthings”. To my knowledge, it is a fairly common practice within the game and toy industry for game and toy manufacturers to licence or produce software versions of their games or toys, such that it is likely that there would be some consumer association between software games and other more tangible games or toys. I accept there is also likely to be some overlap between the retail channels for software products and games or toys, even if they are segregated as product categories on an online store or separate shelves in a physical store. 
66.	I do not consider the remainder of the Holder’s goods in class 9, namely cartoons, music files, book readers, images or emoticons, to be similar to any of the BLOKUS Goods.  Clearly, these goods would not be characterised as toys or games, would not be sold via the same trade channels as toys or games and are used for a different purpose than toys or games.  I note there is no evidence before me that establishes a link between these goods and the BLOKUS Goods. 
67.	Having regard to the Holder’s Services in Class 41, I do not consider any of these services to be closely related to the games and toys in Class 28 of the BLOKUS Trade Marks. The Holder’s Services can broadly be described as entertainment services, educational services and media publishing services. I am not satisfied that there is a sufficient nexus between any of these services and the BLOKUS Goods that they can be described as being closely related.  They are not performed directly upon or by means of the BLOKUS Goods, and it is highly unlikely that consumers would associate these services with the BLOKUS Goods. In any event, the evidence provided does not allow an informed conclusion about how commonly the Holder’s Services and the BLOKUS Goods are provided through the same channels, or about consumers’ understanding that these goods and services come from the same sources. Ultimately the onus rests with the Opponent to establish this aspect of the s 44 ground of opposition and, in the absence of any cogent submissions or evidence, I am not satisfied that the Holder’s Services are closely related to the BLOKUS Goods. 
68.	In summary, I am satisfied that the following subset of the Holder’s Goods are similar to the BLOKUS Goods:
Class 9: Computer software, recorded; computer game software, downloadable; downloadable software applications for mobile phones; computer software applications, downloadable; computer game software, recorded.

Class 28: Building blocks [toys]; toys; toy figures; toy robots; games; smart toys; toy building blocks; interlocking construction toys; remote-controlled toy vehicles; trading card games.

(together, ‘Conflicting Goods’).

69.	However, I am not satisfied that the remainder of the Holder’s Goods are similar to, or that the Holder’s Services are closely related to, the BLOKUS Goods:
Class 9: Animated cartoons; downloadable music files; electronic book readers; downloadable image files; downloadable emoticons for mobile phones. 

Class 41: Organization of competitions [education or entertainment]; educational services; providing online videos, not downloadable; entertainment services; toy rental; academies [education]; providing online electronic publications, not downloadable; providing online music, not downloadable; providing information in the field of entertainment; game services provided online from a computer network.

(together, ‘Remaining Goods and Services’).

70.	The next consideration is whether the Trade Mark is substantially identical with or deceptively similar to the BLOKUS Word Mark or the BLOKUS Device Mark. 
Substantially identical
71.	The relevant test for determining whether trade marks are substantially identical is set out in Shell Company 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.  

72.	The Opponent submits that a total impression of similarity emerges from a side by side comparison between the Trade Mark and the BLOKUS Word Mark having regard to the following factors:
•	the first 4 of the 7 letters comprising the Trade Mark are wholly contained in the BLOKUS Trade Marks;
•	the marks contain the same number of syllables;
•	the first syllable of the marks are visually and aurally identical;
•	the respective marks share the same last letter ‘S’. 
73.	The Opponent submits that the aural and visual differences between the respective trade marks are minor having regard to their similar pronunciation. 
74.	The Holder disputes this assessment. Despite the respective marks sharing the root ‘BLOK’ (a reference to the ordinary word ‘block’), the Holder submits that the letters ‘EES’ at the end of the Trade Mark look different to the letters ‘US’ at the end of the BLOKUS Word Mark, and that these endings affect the way the respective trade marks sound when spoken. 
75.	It is apparent from a side by side comparison that the Trade Mark and the BLOKUS Word Mark bear clear dissimilarities. The Trade Mark is 7 letters in length while the BLOKUS Word Mark is six letters in length. While each of the marks share the prefix ‘BLOK’, the suffix ‘EES’ of the Trade Mark, being one letter longer than the suffix ‘US’ of the BLOKUS Word Mark, elongates the Trade Mark. Further, while the Trade Mark is minimally stylised, the BLOKUS Word Mark is not embellished in any way. Having regard to these differences I am not satisfied that a total impression of resemblance emerges from a comparison between the Trade Mark and the BLOKUS Word Mark. 
76.	The next question is whether the Trade Mark is deceptively similar to either the BLOKUS Word Mark or the BLOKUS Device Mark. 
Deceptively similar
77.	Section 10 of the Act defines “deceptively similar” as:
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.
78.	In Shell, Windeyer J provided the following insights on deceptive similarity:
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]. 
79.	In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd, Kitto J made the following comments regarding the risk of deception or confusion:
While a mere possibility of confusion is not enough - for there must be a real, tangible danger of its occurring - it is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

80.	The House of Lords in the Aristoc Ltd v Rysta Ltd case discussed the doctrine of imperfect recollection and the importance of first impression:
The answer to the question of whether the sound of one word resembles too nearly the sound of another ... must nearly always depend on the first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word and has perhaps an imperfect recollection of it who is likely to be deceived. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution.

The Court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description but also of the shop assistant ministering to that person's wants.

81.	Deceptive similarity can be found where one mark uses an essential feature of another. It may be relevant that an element of the trade marks under consideration is descriptive. It is also relevant to consider how the respective goods or services are ordinarily sold or provided.
82.	Trade marks can be deceptively similar if they convey the same idea. The commonality of idea is part of the process of determining if trade marks look or sound alike. Marks are less likely to be deceptively similar where an additional element changes the meaning of the trade mark or the concept behind it. 
83.	What must be considered is the overall impression that a person of ordinary intelligence and memory would likely have of the Trade Mark and each of the BLOKUS Trade Marks, having regard to the look, sound, and ideas conveyed by the respective marks, and allowing for imperfect recollection. 
84.	The Opponent submits that BLOKUS is the essential visual feature of the BLOKUS Trade Marks. The Opponent notes that the BLOKUS Device Mark contains other visual elements but submits that these are not essential elements of that mark, for the following reasons: 
•	the colours of the tile device are irrelevant since the trade mark is not confined by colour;
•	the tile device is partially obstructed by the word BLOKUS; 
•	the tile device is similar in size to the word BLOKUS;
•	the tile device reinforces the idea conveyed by the first syllable BLOK in the word BLOKUS;
•	the stylisation of the BLOKUS font is minimal overall and not very memorable.
85.	The Holder submits that the Trade Mark is not deceptively similar to the BLOKUS Trade Marks for the following reasons:
•	when spoken, the emphasis in the word ‘BLOKEES’ is on the elongated ‘EES’ sound, such that BLOKEES and BLOKUS are different orally, visually and aurally;
•	the BLOKUS Device Mark is very distinctive with its stylised font and tile device.
86.	The Holder cites several examples of trade marks determined not to be deceptively similar despite the trade marks in issue being different only in the addition or order of words or letters.
87.	The Opponent submits that when comparing the respective trade marks aurally, they are both pronounced in such a way that the first syllable is emphasised, citing a number of examples of cases applying the principles espoused by Lord Justice Sargant in London Lubricants (1920) Limited's Application (‘London Lubricants’). The Holder contends that London Lubricants concerned the general tendency of English speakers to “slur the termination of words” but that the suffix ‘EES’ in BLOKEES cannot be slurred. The Holder notes that whether the first part of a word is the most important is a matter of fact to be determined in every case. 
88.	The Opponent also submits that there is a commonality of idea between the respective trade marks, because while neither BLOKEES or BLOKUS carries an ordinary English meaning, the common element, being the term ‘BLOK’, is a misspelling of the ordinary English word ‘BLOCK’ and this is the concept the ordinary, reasonable consumer is likely to associate with each of the marks. Conversely, it is the Holder’s submission that the shared ‘BLOK’ element of the respective marks should be discounted in an assessment of deceptive similarity because consumers would know that the ordinary English word BLOCK from which BLOK is derived “has a strongly descriptive element in children’s toy business” and that this word would commonly be used in respect of toys in Australia. In support of this submission the Holder cites several decisions in which trade marks were held to not be deceptively similar because the word(s) or element(s) common to the respective trade marks are descriptive terms in common use in the relevant industry.
89.	Having regard to the factors discussed above and each of the party’s submissions, I consider the Trade Mark to be deceptively similar to both the BLOKUS Word Mark and the BLOKUS Device Mark for the following reasons.
90.	The essential feature of the Trade Mark is the word ‘BLOKEES’. The essential element of the BLOKUS Word Mark is the word is the word ‘BLOKUS’. I consider the word ‘BLOKUS’ is also the essential element of the BLOKUS Device Mark; it is large in comparison to the segmented diamond image element of the mark, and is presented in stylised white letters with a thick black outline, which creates a stark contrast that draws attention to the word as opposed the relatively simplistic image element. The segmented diamond image, being essentially a representation of four differently coloured block shapes, to an extent reinforces the concept underlying the word ‘BLOKUS’. Accordingly, it is the word ‘BLOKUS’ that is the element of the BLOKUS Device Mark most likely to be recalled by consumers. 
91.	I observe that the words ‘BLOKUS’ and ‘BLOKEES’ share the same first four letters. Given the first part of a trade mark is generally the most important for comparative purposes, having regard to London Lubricants, the shared first letters ‘BLOK’ of the respective trade marks create a significant visual and aural resemblance. Each word contains two syllables. There is a clear phonetic resemblance between them. The only point of difference between the Trade Mark and the BLOKUS Word Mark are the vowels at the tail ends of each word, ‘EE’ (being an elongated sound) and ‘U’ (which would ordinarily be pronounced with a short vowel sound as in the ordinary English word ‘us’). These suffixes are less likely to be recalled, and more likely to be mispronounced, than the ‘BLOK’ component of each word. An ordinary consumer imperfectly recalling the word ‘BLOKUS’ could be confused when encountering the word ‘BLOKEES’. 
92.	 If the ordinary consumer were to consider the meaning conveyed by the invented word ‘BLOKEES’, by the Holder’s own admission, they would consider ‘BLOK’ to be a reference to the ordinary English word “block”.  The idea conveyed by both the Trade Mark and each of the BLOKUS Trade Marks is that of goods consisting of or comprising a block or blocks. In Combe International Ltd v Dr August Wolff GmbH & Co. KG Arzneimittel (‘Combe International’) McKerracher, Gleeson and Burley JJ noted the role of the idea conveyed by a mark in an analysis of deceptive similarity, however their Honours clarified that the idea of a mark “forms only part of the overall analysis required to satisfy the statutory requirements of s 10 of the Act”. Consequently, “where there are visual or other features in common, commonality of idea might then tip the balance in favour of a finding that the likeness is deceptive”. Having regard to the shared aural and visual features discussed above, I consider the shared concept underlying the Trade Mark and the BLOKUS Trade Marks tips the analysis in favour of a finding of deceptive similarity.
93.	I do not find persuasive the Holder’s submission that the ‘BLOK’ elements of the respective marks ought to be discounted owing to their descriptive character in the context of the relevant industry. It is not appropriate to apply this doctrine to the extent that the descriptive element of the marks is completely ignored for the purposes of comparison. The Holder’s submission appears to be based on the evidence of actual use of the respective trade marks, being confined to specific toys or games, rather than the extent of the monopoly sought. When the analysis is directed to the full scope of the goods and services in respect of which protection is sought, it is difficult to see how the reference to ‘BLOK’ could be deemed to be so descriptive as to eliminate any likelihood of confusion. Regardless, there is no evidence that ‘BLOK’ is commonly used in respect of all the relevant goods and services. 
94.	Lastly, in assessing whether there is a likelihood of deception or confusion, it is appropriate to consider the surrounding circumstances, including the prospective purchaser and the normal and fair use of the respective goods and/or services. The Opponent submits that gaming and toy goods are typically “low involvement products” that are relatively inexpensive and likely to be purchased “without detailed consideration”. Conversely, the Holder submits that consumers who are looking to purchase games and toys for children are likely to exercise caution and give consideration to such factors as the age of the child and the safety of the game or toy for the child’s age group, and that such “care in selection tells against confusion”. Although I agree that consumers are likely to give some consideration to the suitability of the goods for their particular needs, the goods are not so technical or costly that the degree of attention paid by the average consumer would sufficiently guard against the risk of confusion. 
95.	The Holder submits that the absence of any evidence of instances of confusion between the Holder’s BLOKEES products and the Opponent’s BLOKUS products is telling. Given the Holder has acknowledged that it does not have a presence in Australia, the absence of any confusion in Australia is not surprising. In any event, the Opponent is not required to provide evidence of actual confusion in order to establish deceptive similarity.
96.	Considering the above, there is a real and tangible danger that, allowing for imperfect recollection, a significant number of consumers may perceive the Conflicting Goods provided under the Trade Mark stem from the same source as the goods provided under the BLOKUS Trade Marks. 
Honest concurrent use, prior use or other circumstances
97.	Sections 44(3) and 44(4) of the Act enable a trade mark to be accepted, which would otherwise be rejected under s 44(1) or 44(2), on the basis of honest concurrent use, continuous prior use or other circumstances.
98.	The Holder has not made any submissions that it is proper to accept the application for the Trade Mark on the basis of honest concurrent use, continuous prior use or other circumstances. For the sake of completeness, I confirm that the evidence before me is not sufficient to apply the provisions under ss 44(3) or 44(4) of the Act. As noted by the Opponent with regard to honest concurrent or prior use, the Holder claims a date of first use abroad after the Relevant Date, and there is no evidence of distribution or sales of the Holder’s Goods bearing the Trade Mark in Australia.
99.	I am satisfied that a ground for refusal of the Trade Mark exists under s 44 of the Act in respect of the Conflicting Goods. I will now consider the remaining grounds of opposition in respect of the Remaining Goods and Services. 
Section 60
100.	Section 60 of the Act relevantly provides:
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.

101.	To establish a ground of opposition under s 60 of the Act, the Opponent must demonstrate that:
i.	as at the Relevant Date, there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons; and
ii.	because of that reputation use of the Trade Mark would be likely to deceive or cause confusion. 
102.	In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60 of the Act. Her Honour considered the definition provided in the Macquarie Dictionary and decided that reputation is ‘the recognition of the [trade mark] by the public generally’.  Reputation cannot be assumed; it must be established as a matter of fact by the Opponent. 
103.	As O’Bryan J observed in Rodney Jane Racing Pty Ltd v Monster Energy Company:
The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.  
104.	Reputation of a trade mark consists of both the ‘recognition’ component, derived from the quantum of sales, advertising and promotion of the trade mark, and the ‘esteem’ component, being the credit, image and values with which the trade mark is associated via sponsorships, cross-promotions and the like.
105.	Reputation must be established amongst a significant or substantial number of persons in the relevant market. In Le Cordon Bleu BV v Cordon Bleu International Ltee, the Court observed that what amounts to a significant or substantial amount of people will depend on the nature of the goods or services in question. 
106.	The Opponent submits that the BLOKUS Trade Marks had a reputation in Australia on or before the Relevant Date in relation to goods which are the same or similar to the Holder’s Goods and Services. The Opponent submits that both Sekkoia (prior to its acquisition by the Opponent) and the Opponent (since at least 2009) have extensively promoted the BLOKUS Trade Marks in various formats, including the board game, online games, video games and mobile phone games. 
107.	The Opponent made several submissions in relation to the reputation of the Opponent as a toy and games business, independent of any reputation in the BLOKUS Trade Marks. The Opponent submits that its reputation is relevant to the s 60 ground because the reputation of the Opponent and the reputation of the BLOKUS Trade Marks go hand in hand, and the BLOKUS Trade Marks are to be considered in the context of the Opponent’s market where brand extension from toys to entertainment services (such as television shows) and the like is common. There is no question that the Opponent is a longstanding and successful company with a worldwide reputation, and this is supported by the evidence. However, s 60 concerns the reputation of the BLOKUS Trade Marks, which do not feature the name of the Opponent. As it is not relevant to my assessment in relation to the s 60 ground, I have not considered the evidence as it relates to the reputation of the Opponent itself. 
108.	 The Holder submits that the BLOKUS Trade Marks have not acquired a significant reputation in Australia, and that the evidence only establishes that the public would associate the BLOKUS Trade Marks with “a board game with coloured discs”. Even if such a reputation exists, the Holder submits that reputation does not extend to the stem BLOK, and certainly not to the Trade Mark, and that even if the first limb of s 60 is established, the Opponent must fail on the second limb. Alternatively, the Holder submits that if the Opponent’s evidence of its reputation is to be believed, the reputation of the BLOKUS Trade Marks must be so extensive that the Opponent has become a “victim of [their] own success”. 
109.	The Opponent filed evidence that the BLOKUS Trade Marks acquired a reputation in Australia before the Relevant Date. The evidence shows that:
•	products have been offered for sale to Australian consumers under and by reference to the BLOKUS Word Mark in department stores and toy stores, as well as online retailers. The evidence includes two examples of the BLOKUS board game on the websites of third party retailers Toyworld and ToysRUs dated before the Relevant Date, and three examples of BLOKUS board games being advertised in Myer catalogues in 2018 and a Toyworld catalogue in 2019. The BLOKUS Device Mark does not feature on any of these materials.
•	there has been online promotion of the BLOKUS Word Mark by the Opponent via the Opponent’s online store and social media. The evidence contains three examples of the BLOKUS board game for sale on the website ‘shop.mattel.com’ dated February, March and April 2022, being shortly before the Relevant Date, and seven examples of promotion of the BLOKUS board game on the Opponent’s social media. Except for one video on the Opponent’s YouTube account which appears to have been published in 2014, all of these examples are all dated between 2020 and 2022. While the number of views of the YouTube videos are reasonably high, the reactions to the Opponent’s social media posts are very limited in number. There is evidence that the Opponent exhibited at a toy fair in Melbourne in 2023 but it is not clear whether the BLOKUS board game was exhibited at this toy fair.
•	the BLOKUS board game has been recognised by third parties by way of articles on online publications as well as third party videos on YouTube. The evidence includes articles in relation to the BLOKUS board game published on third party websites in 2011, 2012, 2018 and 2021 respectively. Only one of the websites is clearly an Australian web domain. No details are provided about the number of Australian users that are likely to have accessed these articles, or the websites in general. The examples provided of videos on third party YouTube accounts featuring the BLOKUS board game are not dated but according to the Opponent they were published before the Relevant Date. The number of views of these videos number in the thousands to hundreds of thousands. It is not clear how many of these views are attributable to users in Australia. 
•	the BLOKUS board game, or a variant thereof, received the ‘Australian Games Association Game of the Year’ award in 2003 and was shortlisted for a ‘Best Children’s Game’ award in 2009. 
110.	The Opponent claims to have made significant investments in advertising and promoting the BLOKUS Trade Marks in Australia before the Relevant Date. The Opponent’s evidence contains a confidential statement with regard to the Opponent’s promotional expenditure between 2019 and 2021 for its game products in Australia, including the BLOKUS board game. The Opponent’s 2022 annual report shows that no individual country exceeded 7% of the Opponent’s worldwide net sales in 2022. The Opponent submits that in this context, the Opponent’s promotional expenditure in Australia is significant. While the evidence indicates the Opponent’s promotional expenditure was moderately high, no indication is provided as to the proportion of the total promotional expenditure that was dedicated to the BLOKUS board game as opposed to the Opponent’s other game products. I am therefore unable to determine that the Opponent’s promotional expenditure for the BLOKUS board game and variants thereof in Australia has been significant. 
111.	The Opponent also claims to have made significant sales revenue from sales of BLOKUS-branded board games. The Opponent’s annual report for the financial year 2022 and annual revenue in Australia for the financial years 2011 to 2020 appear to be substantial but are not broken down by product. I am unable to determine what proportion of the Opponent’s sales revenue is attributable to the Opponent’s BLOKUS products. 
112.	Overall, I consider the evidence provided is not sufficient to establish a reputation in either of the BLOKUS Trade Marks amongst a significant or substantial number of consumers in Australia before the Relevant Date. No evidence has been provided of use or promotion of the BLOKUS Device Mark. In relation to the BLOKUS Word Mark, the figures provided are on a worldwide basis and it is not clear what proportion is applicable to consumers in Australia. These figures are not so substantial that it is possible to infer that there is considerable awareness of the BLOKUS board game in Australia, as distinct from the Opponent’s other products. The examples provided of retailers, social media promotions or third party recognition of the BLOKUS board game are limited. Many of the dated materials are from within two or three years of the Relevant Date and accordingly do not prove the BLOKUS board game has developed or maintained a long-standing reputation. 
113.	Even if I were to find that there was a sufficient reputation in either of the BLOKUS Trade Marks by virtue of the BLOKUS board game, I consider that reputation does not extend to the Remaining Goods and Services.  The Opponent submits its various licenses with third parties are evidence that the reputation of the BLOKUS board game extends beyond board games, but the Opponent does not provide any further detail in this regard. I do not find persuasive the Opponent’s submission that a single Teacher’s Choice Award dedicated to the BLOKUS board game demonstrates the Opponent’s reputation extends to educational services. 
114.	Even if the Opponent established the existence and extent of reputation in each of the BLOKUS Trade Marks, because of the differences between the respective goods and services as discussed in respect of the s 44 ground I would not be satisfied that because of that reputation use of the Trade Mark in respect of any of the Remaining Goods and Services would be likely to deceive or cause confusion. The Opponent has therefore not established the s 60 ground of opposition.
Section 42(b)
115.	Section 42 of the Act provides: 
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. 
116.	The Opponent asserts in the SGP that this ground is being made under s 42(b) of the Act on the basis that use of the Trade Mark by the Holder would:
•	be misleading or deceptive, or likely to mislead or deceive consumers into believing that the Holder’s Goods and Services originated from, or are affiliated with, the Opponent contrary to s 18 of the Australian Consumer Law (‘ACL’) which forms Schedule 2 to the Competition and Consumer Act 2010 (Cth); 
•	be contrary to ss 29(1)(g) and (h) of the ACL in that it constitutes a false and misleading representation that the Holder or the Holder’s Goods and Services have the sponsorship or approval of the Opponent, or that the Holder’s Goods and Services are of equivalent quality to the goods and services provided by the Opponent;
•	constitute the common law tort of passing off.
117.	The Opponent bears the onus of establishing that use of the Trade Mark by the Holder would (rather than could) be contrary to law on the balance of probabilities.   
118.	It is worth noting that there is no meaningful difference between the expressions ‘mislead or deceive’ and ‘false or misleading’ used in the ACL.
119.	In respect of the s 42(b) ground, the Opponent relies upon the reputation in the BLOKUS Trade Marks referred to in the context of the s 60 ground of opposition. 
120.	The Holder denies these allegations and submits that, for the reasons provided in respect of the s 44 ground of opposition, use of the Trade Mark by the Holder would not be likely to mislead or deceive an ordinary or reasonable consumer into believing that the Trade Mark and the BLOKUS Trade Marks are related, or that there is any relationship between the Holder and the Opponent of the kind described in s 29 of the ACL. 
Australian Consumer Law
121.	The test for conduct contravening the ACL is a stricter one than the test under s 60 of the Act,  which requires only that consumers would be likely to be deceived or confused. Given I am not satisfied that the s 60 ground of opposition is established, it follows that on the stricter test to be applied under the ACL I am likewise not satisfied that the Holder’s use of the Trade Mark would be likely to mislead or deceive or amount to a false or misleading representation under the ACL.
Passing Off
122.	Where use of a trade mark does not contravene s 18 of the ACL it will not amount to the tort of passing off. The relationship between passing off and s 52 of the now repealed Trade Practices Act 1974 (Cth) (‘TPA’) was addressed in Re Equity Access Pty Ltd v Westpac Banking Corporation:
the scope for the operation of s.52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s.52 or s.53 will invariably mean that proceedings for passing off would likewise fail.
123.	As s 18 of the ACL is the equivalent of s 52 of the TPA, the above comments are equally applicable to the relationship between s 18 of the ACL and the tort of passing off.
124.	As I have found that ss 18 and 29 of the ACL have not been contravened, it follows that use of the Trade Mark does not amount to passing off.
125.	The ground of opposition under s 42(b) of the Act is not established. 
Section 62A
126.	Section 62A of the Act provides: 
62A  Application made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

127.	The phrase ‘bad faith’ is not defined in the Act. In the context of s 62A, bad faith does not require dishonesty or fraud, rather “it is a wider notion, potentially applicable to diverse species of conduct” not confined to the examples of bad faith given in the Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth).  
128.	In DC Comics v Cheqout Pty Ltd, Bennett J explained:
Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards.

The question is whether the conduct falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area. It is whether the knowledge of the applicant was such that the decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.
129.	Justice Bennett also acknowledged that conduct that is “exploitative and designed to acquire a springboard or advantage” can amount to conduct that falls short of acceptable commercial standards.
130.	Mere awareness of, or prior dealings with, the Opponent do not on their own indicate that the application for the Trade Mark was made in bad faith. Awareness or prior dealings can amount to bad faith when combined with other circumstances. The question is whether, in all the circumstances, the Holder’s knowledge was such that the decision to apply for the Trade Mark at the Relevant Date would be regarded as in bad faith by persons adopting proper standards.   
131.	Accordingly, I must determine what the Holder knew at the time of making the application for the Trade Mark and then, considering that knowledge, whether the Holder’s conduct fell short of acceptable commercial behaviour and is of “an unscrupulous, underhand or unconscientious character”.
132.	An allegation of bad faith under s 62A is a serious one. In Hard Coffee Pty Limited v Hard Coffee Main Beach Pty Limited, the Registrar’s delegate stated:
The onus of demonstrating ‘bad faith’ falls squarely on the party making such an allegation with the need for evidence able to fulfil the degree of proof required to satisfy the civil standard of ‘balance of probabilities’. That said, the allegation of ‘bad faith’ is a very serious one and a finding of bad faith should not be taken lightly.

133.	According to the Opponent, the Holder has engaged in three distinct forms of conduct relevant to the s 62A ground of opposition, which are addressed separately below. In the SGP the Opponent particularised the s 62A ground of opposition by reference to this conduct and the reputation and goodwill of the Opponent in the BLOKUS Trade Marks in Australia before the Relevant Date, stating: 
The decision to file the [IRDA] in spite of this knowledge was improperly motivated in circumstances where the [Holder] did not have any authority from, or connection or business dealings with, the Opponent. Such conduct by the [Holder] is opportunistic and indicates an intention to profit from the reputation of the Opponent’s well-known brand and the reputation of the Opponent.

134.	The Opponent submits that such conduct falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons. 
135.	Firstly, the Opponent asserts in the SGP that the Holder operates a website that trades off the reputation of the Opponent and the reputation and goodwill in the BLOKUS board game. Exhibit MM-20 to Moore contains the Google search results for the word “BLOKEES”, showing the top search result with the title ‘Blokee – Inspired by Blokus – Online Board Game’ is a website, https://blokee.mattle.online/welcome (‘BLOKEE Game Website’) which allegedly features a cloned video game version of the BLOKUS board game.
136.	It is stated in the SGP that the following statement appears on the BLOKEE Game Website:
Blokee is an online game which was inspired by the game mechanics of Blokus … This online game has no association with the board game Blokus.
137.	Screenshots of the home page of the website show a header which reads:
Disclaimer: This online game has no association with the board game Blokus. 
138.	The Opponent alleges in the SGP that the word “mattle” included in the URL for the Blokee Game Website, being aurally and visually similar to the Opponent’s name “Mattel”, was deliberately selected to trade off the Opponent’s reputation. 
139.	It is declared in Zhu that this website is not owned or operated by the Holder, nor is it connected with the Holder in any way. I note in this regard that the Opponent has not provided any details of the registrant of the BLOKEE Game Website or how they may be connected to the Holder. In the absence of any evidence connecting the Holder to the BLOKEE Game Website I am inclined to accept the Holder’s denial of any association with the website.   
140.	Secondly, it is declared in Moore that on 18 June 2019 Shanghai Pai applied for extension of protection  of the trade mark “BLOCKEES’ in Australia under trade mark application number 2033585 (‘BLOCKEES Trade Mark’). The BLOCKEES Trade Mark was opposed by both the Opponent and Sekkoia and was refused registration after the Holder did not file a notice of intention to defend either opposition. The Opponent submits that in light of the Opponent’s and Sekkoia’s oppositions to the BLOCKEES Trade Mark, the Holder was or should reasonably have been aware that the Opponent owned the Trade Mark.
141.	The Holder submits that its failure to file a notice of intention to defend the opposition to the BLOCKEES Trade Mark is of no consequence to the present matter, and that there may be a number of commercial reasons why the Holder decided not to defend the earlier opposition proceedings. I accept this submission. 
142.	Thirdly, the Opponent claims that the Holder cannot be said to have honestly adopted the Trade Mark in circumstances where Shanghai Pai previously applied to protect the BLOCKEES Trade Mark in Australia and subsequently filed a new trade mark application for a slightly different trade mark that was “more similar to the BLOKUS Trade Marks”. The Opponent submits that the Holder has not adequately explained its reasons for adopting the changed spelling of its company name or the Trade Mark, and that it has not confirmed that it conducted due diligence prior to filing the IRDA. 
143.	The Holder submits that awareness of another person’s trade mark, without more, does not constitute a basis for a finding of bad faith. The Holder claims to have adopted the Trade Mark honestly, having modelled the Trade Mark on the Holder’s company name. Further, the Holder submits that it has adopted the proper standards as evidenced by the fact that it is actively trading, has engaged in promotional expenditure, and has filed applications for the Trade Mark as is ordinary for a commercial entity.
144.	I note the Holder’s company name was amended after the trade mark opposition to the BLOCKEES Trade Mark. However, since there is no evidence to suggest that the Holder at any stage recognised the Trade Mark as being the property of the Opponent, the timing of the adoption of the Holder’s new company name cannot, without more, establish that the Holder selected BLOKEES in order to trade off the Opponent’s reputation in BLOKUS.  
145.	Ultimately, it is for the Opponent to provide evidence to substantiate the s 62A ground. Overall, the evidence before me does not establish that, at the time of filing the IRDA, the Holder’s conduct fell short of standards of acceptable commercial behaviour observed by reasonable and experienced persons. The events outlined above are not sufficient to suggest a pattern of unscrupulous behaviour that would enable a finding that the Holder adopted the Trade Mark with the intention of misappropriating the Opponent’s goodwill and reputation. Accordingly, I am not satisfied that the application for the Trade Mark was made in bad faith. 
146.	The s 62A ground of opposition has not been established. 
Decision
147.	Regulation 17A.34N provides:

17A.34N  Decision on opposition

 (1) Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

(a) to refuse protection in respect of all of the goods or services listed in the IRDA; or

(b) to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.

 (2) The Registrar must notify the International Bureau of the Registrar’s decision.

148.	A ground of opposition is established under s 44 of the Act in respect of the Holder’s Goods and Services listed in the IRDA except for:
Class 9: Animated cartoons; downloadable music files; electronic book readers; downloadable image files; downloadable emoticons for mobile phones. 

Class 41: Organization of competitions [education or entertainment]; educational services; providing online videos, not downloadable; entertainment services; toy rental; academies [education]; providing online electronic publications, not downloadable; providing online music, not downloadable; providing information in the field of entertainment; game services provided online from a computer network.

149.	Accordingly, I reject IRDA 2313647 (IR 1695096) in part. Extension of protection of the IRDA 2313647 (IR 1695096) may proceed for the goods in class 9 and the services in class 41 as set out in paragraph [72] of this decision. 
150.	If the Registrar is served with a notice of appeal, I direct that protection shall not occur until the appeal has been decided or discontinued and that the disposition of the IRDA be in accordance with the Court’s order or direction.
151.	The International Bureau will be notified of the Registrar’s decision.
Costs
152.	Each party sought an award of costs. 
153.	Costs generally follow the event. As both parties have been successful to some degree, I decline to make an award of costs in respect of the opposition by the Opponent. The matter of costs in relation to the opposition by Sekkoia has no bearing on the present opposition and has been dealt with separately. 

Sheona Robertson
Hearing Officer
Delegate of the Registrar of Trade Marks
6 January 2025