Bluescope Steel Ltd v Maan Enterprises Pty Ltd

This matter concerned an application by Bluescope Steel Ltd for registration of a trade mark, opposed by Maan Enterprises Pty Ltd. The dispute centred on whether the applicant's proposed trade mark was deceptively similar to the opponent's registered trade mark, and whether the opponent had established grounds for opposition. The decision was made by T. E. Williams, Hearing Officer, at the Trade Marks Office on 29 March 2011.

The primary legal issue before the Hearing Officer was to determine if the applicant's trade mark was deceptively similar to the opponent's registered trade mark under section 44 of the relevant legislation, and consequently, if the grounds of opposition had been established. A secondary issue, addressed in an annexure, concerned the interpretation of "further evidence" and the circumstances under which a party might be permitted to rely on evidence not initially filed.

The Hearing Officer found that while the goods in question were similar, the applicant's trade mark was not deceptively similar to the opponent's registered mark. The reasoning applied the principles of deceptive similarity as defined in section 10 of the legislation, considering the likelihood of deception or confusion. The Hearing Officer rejected the opponent's analogy with invented words, distinguishing the present case where common English words were used. The Hearing Officer also addressed the applicant's attempt to rely on further evidence, rejecting a narrow interpretation of "further evidence" and indicating a preference for determining the merits of such evidence when the need arises, while noting the applicant's unexplained oversight in dealing with the opponent's evidence.

Ultimately, no grounds of opposition were established. The trade mark application was permitted to proceed to registration one month from the date of the decision, subject to any notice of appeal. Costs were awarded against the opponent, to be taxed in accordance with the principles in *James Hardie & Co Pty Ltd v Hume Industries (Malaysia) Berhad*.