In Williamson-Dickie Manufacturing Company v Richard Magney  ATMO 81 (14 September 2012) the owner of the stylised "Dickies" trade mark was unsuccessful in opposing the registration of the "Dickie Peacock" trade mark for use in relation to socks and apparel.
The opposition action was based primarily on the footing that the “Dickie Peacock” trade mark was substantially identical with or deceptively similar to the opponent’s stylised “Dickies” trade marks, which are registered in the same class (class 25 — socks, apparel (clothing, footwear, headgear)).
This was an interesting case and I thought the opponent had reasonable prospects of success, especially on the deceptive similarity ground. The applicant for registration heavily criticised the opponent’s evidence (on use of the opponent’s trade marks in Australia for example) and this criticism seemed to be largely accepted by the Registrar. The applicant’s success on the deceptively similarity ground was not determined by this issue, but the successful attack by the applicant set the tone of the case. In a nutshell, this case shows that parties need to ensure their own evidence is fulsome and sound; and they need to be aware of any chink in their opponent’s armour which may be successfully exploited. Setting the tone of the case can have significant advantages.
Section 44(1) – substantial identity or deceptive similarity
Section 44(1) of the Act provides, among other things, that an application for the registration of a trade mark is substantially identical with or deceptively similar to a trade mark registered by another person in respect of similar goods or closely related services and the applicant’s priority date is not earlier that that of the other trade mark.
The Delegate of the Registrar of Trade Marks cited Windeyer J’s comments in Shell Company (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) CLR 407 (at 414 tp 415) in support of the proposition that “substantial identity” and “deceptive similarity” are independent criteria to be judged in different was. Substantial identity required the two trade marks to be “compared side by side”, whereas deceptive similarity comparison is based on recollection of the trade marks that persons of ordinary intelligence and memory would have.
In considering the substantial identity issue, the Delegate of the Registrar noted that salient features of the applicant’s mark, “Dickie Peacock” are that the words in combination would likely be perceived as the name of a person (first name Dickie, surname Peacock – real or fictitious) whereas the opponent’s trade mark, “Dickies” did not have the same connotation. The registrar also noted that all but one of the opponent’s registrations is for composite marks featuring a distinct device in addition to the word “Dickies”. For these reasons the Delegate of the Registrar found that the trade marks were not substantially identical.
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