10 Deep Clothing Inc v @ Anthony Farrin DeBoos

This matter concerned an opposition by 10 Deep Clothing Inc. (the opponent) to the registration of a trade mark by Antony Farrin DeBoos (the applicant). The hearing was conducted by Iain Thompson, a delegate of the Registrar of Trade Marks, in Canberra. The dispute centred on the applicant's attempt to register a trade mark described as a "knuckle duster," which the opponent argued was confusingly similar to its own "brass knuckle" trade mark, which it had been using since 2002.

The primary legal issue before the delegate was whether the applicant's proposed trade mark should be refused registration on the grounds that it was deceptively similar to the opponent's earlier trade mark, thereby likely to cause confusion among consumers. This required an assessment of the extent to which the opponent had established its grounds for opposition, particularly concerning its prior use and the distinctiveness of its own trade mark.

The delegate's reasoning focused on the evidence of the opponent's extensive use of its "brass knuckle" trade mark. This evidence included clothing tags, catalogues dating back to 2004, and numerous publications featuring the opponent's goods, such as *Rolling Stone*, *Mass Appeal*, and *Fader* magazines, which were available in Australia. Crucially, the opponent's website, which had been available for purchase since at least November 2004 and featured its catalogues from Fall 2004 onwards, also displayed the "brass knuckle" logo. The delegate found this evidence of use to be unchallenged by the applicant.

Consequently, the delegate decided to refuse the registration of the applicant's trade mark under section 55 of the relevant Act. As the opponent was successful in its opposition, it was awarded its costs against the applicant.