Bondi Sands Pty Ltd v Marq Group Holdings B.V

Bondi Sands Pty Ltd (the Opponent) opposed the registration of a trade mark by Marq Group Holdings B.V. (the Applicant). The dispute concerned the Applicant's proposed trade mark for use on skincare and self-tanning products. The Opponent argued that the Applicant's mark should not be registered, primarily relying on section 60 of the *Trade Marks Act 1995* (Cth), which deals with trade marks that are similar to marks that have acquired a reputation in Australia. The decision was made by Anne Makrigiorgos, Delegate of the Registrar of Trade Marks.

The central legal issue before the Delegate was whether the Applicant's proposed trade mark was likely to deceive or cause confusion among consumers, given the established reputation of the Opponent's "Bondi Sands" trade marks in Australia. To succeed on this ground, the Opponent had to demonstrate that its trade mark had acquired a reputation in Australia prior to the relevant date and that the use of the Applicant's mark would be likely to cause deception or confusion due to that reputation. The Delegate also considered the similarity between the respective trade marks and the nature of the goods in question.

The Delegate found that the Opponent had successfully established a reputation in its "Bondi Sands Logo" in Australia for self-tanning and sun protection products. This reputation was inferred from extensive sales figures, substantial advertising expenditure, and broad marketing activities across online, print, and social media platforms. The Delegate determined that the Applicant's proposed trade mark shared a significant degree of similarity with the Opponent's "Bondi Sands Logo," particularly through the common use of the word "SANDS" and the conceptual link to Australian beaches. The Delegate concluded that there was a real and tangible risk that consumers, aware of the Opponent's well-known brand, would be led to wonder if the Applicant's goods originated from or were connected to the Opponent, thereby establishing the ground of opposition under section 60.

Consequently, the Delegate refused to register the Applicant's trade mark. The Opponent was awarded costs against the Applicant.