Debra Joy Ciardullo v the Little Tikes Company

This matter concerned an opposition by The Little Tikes Company to a trade mark application lodged by Debra Joy Ciardullo for the composite mark LITTLE TYKE with a clown's head device, advertised for use in relation to articles of clothing. The opposition was primarily based on section 33 of the relevant Act, which prohibits the registration of a trade mark if it is substantially identical with or deceptively similar to an existing registered trade mark for the same or goods of the same description. The opponent's registered mark comprised the words LITTLE TIKES for use in relation to toys, games, and playthings.

The delegate was required to determine two main legal issues: first, whether the applicant's mark was substantially identical with or deceptively similar to the opponent's registered mark; and second, whether the goods for which the applicant sought registration (articles of clothing) were goods of the same description as the goods for which the opponent's mark was registered (toys, games, and playthings). The delegate noted that for an objection under section 33 to succeed, both conditions – similarity of marks and similarity of goods – must be met.

In addressing the first issue, the delegate found that the marks were not substantially identical due to readily observable differences. However, applying the principle that deceptive similarity involves a broader consideration of the impression produced on potential customers, the delegate concluded that the marks were deceptively similar, particularly in their oral use, where LITTLE TYKE and LITTLE TIKES would likely cause confusion. Regarding the second issue, the delegate applied the three-part test from *Jellinek's Application* (nature of the goods, respective uses, and trade channels), while acknowledging the evolution of the marketplace since its formulation. The delegate found significant differences in the nature and purpose of toys and clothing, despite some common trade channels and the practice of character merchandising. The delegate determined that the economic imperative for retailers to stock these goods together did not alter the fundamental differences in their manufacturing bases.

Consequently, although the marks were found to be deceptively similar, the delegate found that the goods were not of the same description. Therefore, the objection under section 33 of the Act did not exist. The delegate indicated that the application would be accepted, subject to appeal, and awarded costs to the applicant.