Beer Cartel Pty Ltd v Pirate Cartel Distribution Pty Ltd

Beer Cartel Pty Ltd (the applicant) sought to register the trade mark "PIRATE CARTEL" for certain services. Pirate Cartel Distribution Pty Ltd (the opponent) opposed this application, relying on its registered trade mark "BEER CARTEL". The matter came before the court for determination of the opposition.

The primary legal issue before the court was whether the applicant's proposed trade mark "PIRATE CARTEL" was substantially identical with, or deceptively similar to, the opponent's registered trade mark "BEER CARTEL" in respect of similar or closely related services, pursuant to section 44 of the *Trade Marks Act 1995* (Cth). The court was required to assess the similarity of the services and the degree of resemblance between the trade marks.

The court found that the services offered by the applicant, which included the wholesale of beer, were the same as some of the services offered by the opponent. However, on a side-by-side comparison, the court determined that the trade marks "PIRATE CARTEL" and "BEER CARTEL" were not substantially identical. The court reasoned that the words "pirate" and "beer" were essential features of their respective marks, and their replacement constituted a clear difference that was sufficient to conclude that the marks were not substantially identical. The court applied the principles of comparison established in *Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd*, which requires assessing the similarities and differences of the marks having regard to their essential features and the total impression of resemblance.

The court concluded that the trade marks were not substantially identical. The decision indicates that the court would proceed to consider whether the marks were deceptively similar.