Cool Dynamics Refrigeration Pty Ltd v Joshua Jay North

This matter concerned an opposition by Cool Dynamics Refrigeration Pty Ltd (the Opponent) against the registration of a trade mark by Joshua Jay North (the Applicant). The dispute centred on whether the Applicant's proposed trade mark, CTS THERMFRESH, was deceptively similar to the Opponent's registered trade mark, THERMFRESH, and therefore should not be registered under section 44 of the *Trade Marks Act 1995* (Cth). The Applicant sought to rely on the provisions for honest concurrent use under section 44(3)(a) of the Act.

The primary legal issue before the Hearing Officer was to determine if the Applicant's trade mark was deceptively similar to the Opponent's registered mark, and if so, whether the Applicant had established a case for honest concurrent use. The assessment of deceptive similarity required consideration of the marks themselves, the goods in relation to which they were used, the likely customers, and the market covered by the registered trade mark. The defence of honest concurrent use involved an examination of the honesty of the adoption and use of the mark, the extent of use, the likelihood of confusion, and any proven instances of confusion.

The Hearing Officer found that the common element in both trade marks was the word THERMFRESH, which was distinctive in relation to refrigeration goods. Despite the presence of the letters CTS in the Applicant's mark, the Hearing Officer concluded that consumers were more likely to notice and remember THERMFRESH, leading to a likelihood of confusion as to trade source. Consequently, the ground of opposition under section 44(1) was established. The Hearing Officer then considered the Applicant's claim of honest concurrent use under section 44(3)(a). The Applicant's assertion that the mark was adopted because it represented the first letters of "CO-ORDINATED THERMAL SYSTEMS" was found to be problematic, as this was the company name of the original owner of the Opponent's trade mark, and the Applicant's father had been a director of predecessor companies. Furthermore, the evidence provided by the Applicant regarding licensing, sales figures, and use was found to be unsubstantiated and lacking in dates or timestamps. The Hearing Officer concluded that the Applicant's conduct did not sufficiently support a claim of honest concurrent use, demonstrating a disregard for the Opponent's trade mark.

Accordingly, the Hearing Officer refused to register the Applicant's trade mark. Costs were awarded against the Applicant in favour of the Opponent.