Boost Juice Holdings Pty Ltd v Boost Foods Holdings Pty Ltd

This matter concerned an opposition by Boost Juice Holdings Pty Ltd (the opponent) to the registration of a trade mark application by Boost Foods Holdings Pty Ltd (the applicant). The applicant sought to register the trade mark BOOST FOODS for use on baby and infant foods. The opponent opposed the registration on the grounds that the applicant's proposed trade mark was substantially identical with or deceptively similar to its own BOOST brand, which it claimed had acquired a reputation in Australia, and that the use of the applicant's mark would be likely to deceive or cause confusion.

The court was required to determine whether the applicant's trade mark BOOST FOODS was substantially identical with or deceptively similar to the opponent's BOOST brand, and whether, by reason of the opponent's established reputation in Australia, the use of the applicant's trade mark would be likely to deceive or cause confusion. This assessment was to be made in accordance with section 60 of the relevant legislation, as it stood prior to its amendment in October 2006, which required consideration of whether the trade marks were substantially identical or deceptively similar and whether the opponent's mark had acquired a reputation in Australia such that the use of the applicant's mark would lead to deception or confusion.

In reaching its decision, the Hearing Officer applied established principles for comparing trade marks, drawing guidance from authorities such as *Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd*. The assessment involved comparing the marks side by side, noting similarities and differences, and evaluating their essential features and the overall impression of resemblance. The Hearing Officer found that the opponent had successfully established the grounds for opposition under section 60, demonstrating that its BOOST brand had acquired a reputation in Australia and that the use of the applicant's proposed mark would likely lead to deception or confusion.

Consequently, the Hearing Officer refused to register the applicant's trade mark application. The Hearing Officer also ordered that costs follow the event, awarding costs against the applicant in accordance with the relevant regulations.