ALDI Foods Pty Ltd v Gage Roads Brewing Co Ltd

ALDI Foods Pty Ltd (the Opponent) opposed the registration of the trade mark "ALBY" by Gage Roads Brewing Co Ltd (the Applicant) for beer. The Opponent contended that the proposed trade mark was deceptively similar to its own registered trade marks, particularly in relation to the retail of packaged beer. The Opponent also argued that the Applicant's use of "ALBY" would be likely to deceive or cause confusion. The decision was made by a Hearing Officer in the Trade Marks and Designs division.

The primary legal issues before the Hearing Officer were whether the Applicant's proposed trade mark "ALBY" was substantially identical or deceptively similar to any of the Opponent's registered trade marks, and whether the use of "ALBY" would be likely to deceive or cause confusion. The Opponent relied on grounds of opposition under sections 44 and 42(b) of the *Trade Marks Act 1995* (Cth). The critical question was whether the evidence established that the Opponent's trade marks were registered or applied for in respect of the same or similar goods or services, and whether the marks were deceptively similar, considering the manner in which the goods were sold and ordered.

The Hearing Officer found that the Opponent had not established the grounds of opposition. While the Opponent's evidence showed that it retailed packaged beer under private labels since 2003, and the word "ALDI" appeared on these labels as the property owner, this did not establish that the "ALDI" trade mark itself was used in relation to the beer in a way that would create deceptive similarity with the Applicant's proposed "ALBY" mark. The evidence regarding the Applicant's development of the "ALBY" mark indicated it was chosen for its distinctiveness and its ability to humanise the brand, being a diminutive of "Albion" or "Albert". The Hearing Officer concluded that the Opponent had not satisfied the requirements for opposition under section 44 or section 42(b) of the Act.

Consequently, the Hearing Officer decided that the application for registration of the trade mark "ALBY" could proceed to registration, subject to any appeal. Costs were awarded against the Opponent.