Brenda Robinson v Myer Stores Limited

Brenda Robinson (the opponent) opposed the registration of the trade mark CP CLUB PETITES, filed by Myer Stores Limited (the applicant), for goods in class 25. The opposition was based on grounds under sections 44 and 60 of the *Trade Marks Act 1995* (Cth). The decision was made by a delegate of the Registrar of Trade Marks based on the written record, as neither party requested to be heard after the exchange of evidence and submissions.

The legal issues before the delegate were whether the applicant's trade mark was substantially identical with or deceptively similar to any of the opponent's earlier trade marks, as required by section 44, and whether the applicant's trade mark, by reason of the reputation of an earlier trade mark, was likely to deceive or cause confusion, as per section 60. The opponent contended that her trade marks, including "club pet" and a "C" and "P" logo, had been used since 1986 and possessed sufficient reputation to warrant opposition.

The delegate found that the applicant's trade mark "CP CLUB PETITES" created an impression of a club or association for petite women. This was contrasted with the opponent's trade mark "CLUB PET" and associated logos, which were found to create an impression of a club for pet animals or a favoured person within a club. Applying the tests for substantial identity and deceptive similarity, the delegate concluded that the trade marks were not substantially identical and, considering the likely consumer behaviour in purchasing clothing, footwear, and headgear, were not deceptively similar. Consequently, the ground under section 44 was not made out. As a prerequisite for section 60, the delegate also found that none of the opponent's cited trade marks were substantially identical with or deceptively similar to the subject trade mark, meaning the section 60 ground could not be established.

The delegate determined that neither ground of opposition had been made out and directed that the application proceed to registration. The applicant was awarded costs against the opponent.