Clearlight Investments Pty Ltd v Barilla G.e R. Fratelli Societa per Azioni

Clearlight Investments Pty Ltd (the Opponent) opposed an application by Barilla G.e R. Fratelli Societa per Azioni (the Holder) for the extension of protection of an international registration designating Australia (IRDA). The opposition was based on grounds including sections 42, 44, 59, 60, and 62A of the *Trade Marks Act 1995* (Cth). The matter was heard by Jock McDonagh, a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the Holder's IRDA was deceptively similar to any of the Opponent's earlier registered trade marks, specifically the "San Remo Marks," for the purposes of section 44(1) of the Act. The Opponent contended that the IRDA was deceptively similar to its San Remo Marks, which had earlier priority dates and covered overlapping goods. The delegate was required to determine if the resemblance between the trade marks was such that it was likely to deceive or cause confusion.

In determining deceptive similarity, the delegate applied the principles established in *Shell Company (Aust) Limited v Esso Standard Oil (Aust) Limited*. This involved assessing the impression left on persons of ordinary intelligence and memory, considering not just abstract similarity but the effect of that similarity in all the circumstances. The delegate found that while there was some overlap in goods and earlier priority dates for the San Remo Marks, the IRDA was not substantially identical or deceptively similar to them. The delegate concluded that the Opponent had not established the grounds for opposition.

Consequently, the delegate decided to extend protection to the IRDA, subject to potential appeal. The Holder was awarded costs against the Opponent.