Behaviour Interactive Inc v Behaviol Pty Ltd

Behaviour Interactive Inc (the Applicant) opposed the registration of a trade mark by Behaviol Pty Ltd (the Opponent). The Opponent relied on its registered trade mark, which covered "software for playing video, computer and online games," and argued that the Applicant's goods, including virtual reality game software, augmented reality game software, and electronic game software, were similar. The core of the dispute concerned whether the Applicant's proposed trade mark was substantially identical or deceptively similar to the Opponent's earlier registered mark, a requirement for success under section 44(1) of the relevant Act.

The court was required to determine whether the Applicant's goods were similar to the goods covered by the Opponent's registered trade mark, and if so, whether the Applicant's trade mark was substantially identical with or deceptively similar to the Opponent's registered trade mark. The court also had to consider whether any exceptions under sections 44(3) or (4) of the Act applied, although the provided text focuses on the primary s 44(1) ground.

The court found that the Applicant's goods were similar to those covered by the Opponent's registration, satisfying the first limb of section 44(1). In assessing substantial identity, the court applied the principle of comparing the marks side-by-side, noting similarities and differences to assess the total impression of resemblance. The court found no substantial identity. Regarding deceptive similarity, the court applied the test that a trade mark is deceptively similar if it nearly resembles another mark such that it is likely to deceive or cause confusion, requiring a real and tangible danger of confusion as to the trade source, allowing for imperfect recollection. On a side-by-side comparison, the court found clear differences and that a total impression of resemblance did not emerge, leading to the conclusion that the marks were not deceptively similar.

Despite the finding of no deceptive similarity, the provided text concludes that "the final requirement of s 44 is satisfied and the ground of opposition is therefore successful." This appears to be a contradiction within the provided text, as the reasoning detailed above would typically lead to the opposition failing on the deceptive similarity ground. However, based on the explicit statement of success, the court decided to refuse the Applicant's trade mark application and awarded costs against the Applicant.