Calzaturificio Fratelli Rossetti S.p.A v Strandbags Group Pty Limited

This matter concerned an opposition by Calzaturificio Fratelli Rossetti S.p.A. (the opponent) to an application by Strandbags Group Pty Limited (the applicant) to register the trade mark ROSSETTI. The dispute arose from the opponent's claim that the applicant's proposed trade mark was deceptively similar to its own family of trade marks, including ROSSETTI, and that the applicant's use of the mark would be likely to deceive or cause confusion. The decision was made by a Hearing Officer of the Trade Marks Hearings.

The primary legal issue before the Hearing Officer was whether the opponent had established that its trade mark ROSSETTI had acquired a sufficient reputation in Australia by the relevant date to warrant opposition to the applicant's trade mark application. This involved assessing the evidence of the opponent's use and advertising of its trade marks in Australia and considering whether this use had resulted in the trade mark becoming known to a significant number of Australian consumers.

The Hearing Officer found that the opponent had not discharged the onus of proving that its trade mark ROSSETTI had acquired the requisite reputation in Australia at the relevant time. While the opponent provided evidence of its international presence, its use of trade marks in Australia since 1975, and some sales and advertising figures, this evidence was deemed insufficient to establish that the trade mark ROSSETTI had become known to a significant portion of the Australian public. Consequently, the ground of opposition based on reputation failed.

As none of the grounds of opposition were established, the opposition was unsuccessful. The Hearing Officer directed that the applicant's trade mark application could proceed to registration, subject to payment of the registration fee, one month from the date of the decision, unless an appeal was filed. The opponent was also ordered to pay the applicant's costs.