Arnet Optic Illusions Inc v Sporoptic Pouilloux S.A

This case concerned an opposition by Sporoptic Pouilloux S.A. (Sporoptic) to the registration of a trade mark application by Arnet Optic Illusions Inc. (Arnet). Arnet sought to register the trade mark ARNET OPTIC ILLUSIONS for goods in International Class 9, specifically sunglasses, sunglass components, and goggles. Sporoptic opposed the registration on the grounds that the proposed mark was substantially identical with or deceptively similar to its registered trade mark VUARNET, and that registration would likely deceive or cause confusion, thereby contravening sections 33 and 28(a) of the Trade Marks Act. The matter was heard by a delegate of the Registrar of Trade Marks.

The delegate was required to determine whether the ARNET mark was substantially identical or deceptively similar to Sporoptic's VUARNET mark, and whether the registration of ARNET would be likely to deceive or cause confusion. A further issue arose regarding the interpretation of section 28(a) of the Trade Marks Act, specifically whether it required a finding of blameworthy conduct on the part of the applicant, as argued by Sporoptic, or if it should be read conjunctively with section 28(d), as per the Registrar's established practice following High Court decisions. The delegate also considered Sporoptic's alternative submission that Arnet's conduct in adopting the ARNET mark was blameworthy.

In relation to section 33, the delegate found that while the goods were of the same description, the marks ARNET and VUARNET were neither substantially identical nor deceptively similar when considered side-by-side. However, applying the test for deceptive similarity, which considers the impression left on ordinary persons with imperfect recollection, the delegate found that the marks were deceptively similar. This conclusion was based on the significant visual and structural overlap between the words, the potential for similar pronunciation, the nature of the goods (sunglasses being widely purchased), and the likelihood of confusion given that neither mark had strong independent meaning. The delegate also considered section 28(a), finding that the reputation of the VUARNET mark, coupled with the similarity of the marks, heightened the likelihood of deception and confusion. Crucially, however, the delegate analysed the High Court's decision in *Murray Goulburn Co-Operative Co. Limited v The New South Wales Dairy Corporation* (the MOO/MOOVE case) and concluded that the Registrar's practice of requiring a finding of blameworthy conduct for section 28(a) objections to be successful was correct, as the paragraphs of section 28 were to be read conjunctively. The delegate rejected Sporoptic's alternative submission that Arnet's conduct was blameworthy, finding the evidence insufficient to establish this.

Ultimately, the delegate found that the ARNET mark was deceptively similar to VUARNET under section 33, and therefore prohibited registration in respect of optical equipment and goods of the same description. The opposition was therefore successful on the grounds of section 33.