Acushnet Company v Shenzhen Hi-Thch Golf Corporation

Acushnet Company (the opponent) opposed the registration of a trade mark by Shenzhen Hi-Thch Golf Corporation (the registrant) in Australia. The dispute concerned the potential for the registrant's trade mark to infringe upon the opponent's existing trade mark rights. The hearing was conducted by Debrett Lyons, a Hearing Officer in the Trade Marks Hearings.

The primary legal issue before the court was whether the registration of the registrant's trade mark should be opposed under section 60 of the relevant Act. This section pertains to trade marks that are substantially identical or deceptively similar to a trade mark that has acquired a reputation in Australia. The opponent was required to demonstrate that its trade mark was either substantially identical or deceptively similar to the registrant's proposed mark, that it had acquired a reputation in Australia prior to the priority date of the registrant's application, and that the use of the registrant's mark would be likely to deceive or cause confusion.

The Hearing Officer found that while the substantial identity of the trade marks was a fine point, the marks were deceptively similar. The opponent's trade mark, FOOTJOY, had been in use since 1920 and was applied to a range of golfing apparel and accessories, establishing a significant reputation in Australia. Considering the established reputation of FOOTJOY and the deceptive similarity of the proposed mark, the Hearing Officer concluded that the use of the registrant's trade mark would be likely to deceive or cause confusion.

Consequently, the Hearing Officer upheld the opposition under section 60 of the Act and refused to extend protection to Australia for all goods listed in the International Registration Designating Australia (IRDA). The registrant was also ordered to pay the opponent's costs of the opposition proceedings.