Campomar Sociedad, Limitada v Nike International Ltd

The High Court of Australia considered an appeal concerning the registration of identical trade marks, "NIKE," by Campomar Sociedad, Limitada (appellants) and Nike International Ltd (respondents) for different classes of goods. The dispute arose from the respondents' contention that the appellants' use of the mark was likely to deceive or cause confusion, and that the appellants intended to exploit the respondents' established goodwill. The primary question was whether the appellants' trade mark registrations should be expunged from the Register.

The Court was required to determine several legal issues, including the interpretation and application of section 28 of the *Trade Marks Act 1955* (Cth), specifically whether it had a continuing or secondary operation and the interests it was designed to protect. This included whether section 28 could prevent the "dilution" of a trade mark and whether it accommodated prior or honest concurrent use. The Court also had to consider whether the appellants' trade marks had a reasonable probability of causing confusion, assessing this prospectively at the date of their respective applications for registration. Furthermore, the Court examined the power to expunge a mark from the Register and the exercise of discretion on appeal, particularly in light of the limitation of goods for which a trade mark might be registered. The case also touched upon the provisions of the *Trade Practices Act* concerning misleading or deceptive conduct.

The High Court allowed the appeal, setting aside the orders of the Full Court of the Federal Court. The Court reasoned that the Campomar registrations were not wrongly remaining on the Register under section 22(1)(b) of the *Trade Marks Act 1955*. It was held that section 28 of the Act operated primarily as a barrier at the time of registration, and the evidence did not establish that the Campomar registrations offended section 28 at their respective deemed dates of registration. The Court noted that the initial registration had occurred without opposition, and correspondence indicated that the respondents did not consider perfume and cosmetics to be part of their brand image at that time. The Court also considered the discretionary power to expunge a mark, finding that even if the later registration might have offended section 28, the discretion should be exercised in favour of Campomar, taking into account section 34 concerning honest concurrent use and the circumstances of international brand expansion.

Consequently, the High Court ordered that the Campomar registrations would be varied by adding the words "SPORT FRAGRANCE" after "NIKE." Liberty was reserved for parties to apply for further variation within 28 days. The respondents were ordered to pay two-thirds of the appellants' costs of the appeal to the High Court and the Full Court.