Choo La La Pty Ltd

This matter concerned a trade mark application by Choo La La Pty Ltd for the mark "CHOO LA LA" in class 25, which covers clothing, footwear, and headwear. The application was opposed by Christian Louboutin SAS, a well-known luxury footwear designer. The core of the dispute revolved around whether the applicant's mark was deceptively similar to the opponent's registered trade mark "LOUBOUTIN" and whether the applicant's mark was an honest and concurrent use.

The court was required to determine two primary issues: first, whether the applicant's trade mark "CHOO LA LA" was deceptively similar to the opponent's registered trade mark "LOUBOUTIN" for the purposes of section 60 of the *Trade Marks Act 1995* (Cth); and second, whether the applicant had established grounds for honest and concurrent use under section 59 of the Act. The opponent argued that the marks were similar and that the applicant's use would likely deceive or cause confusion among consumers, thereby damaging the reputation of their established brand.

In her reasoning, Justice Tracey Berger considered the principles of deceptive similarity, which involve an assessment of whether an ordinary and reasonable member of the purchasing public, when presented with the applicant's mark, would be deceived into believing that the goods offered under that mark were the goods of the opponent, or were in some way associated with the opponent. The court found that despite some phonetic similarities, the marks "CHOO LA LA" and "LOUBOUTIN" were not deceptively similar in appearance, sound, or meaning. Furthermore, the court concluded that the applicant had not established honest and concurrent use, as the evidence did not demonstrate that the applicant had been using the mark honestly and concurrently with the opponent's mark prior to the application date.

Consequently, the court dismissed the opposition to the trade mark application.