Diesel SpA v TGSG Group Pty Limited

Diesel SpA (the opponent) opposed the registration of trade mark application 791316(25), RP55, filed by T.G.S.G. Group Pty Limited (the applicant) for clothing, footwear, and headgear in class 25. The opposition was heard by a delegate of the Registrar of Trade Marks.

The delegate was required to determine whether the applicant's trade mark RP55 was substantially identical with or deceptively similar to the opponent's registered trade mark 55 DSL, and whether the applicant's mark, if registered, would be likely to deceive or cause confusion, particularly in light of the opponent's claimed reputation in its mark. The delegate also considered the applicant's failure to notify the Trade Marks Office of a change in its address for service.

Applying the principles from cases such as *The Shell Co (Aust) Limited v Esso Standard Oil (Aust) Ltd* and *Australian Woollen Mills Ltd v F S Walton & Co Ltd*, the delegate found that the trade marks RP55 and 55 DSL were neither substantially identical nor deceptively similar. This conclusion was based on a comparison of their visual and aural impressions, and the circumstances of trade for the goods. The delegate noted that while the goods were identical, the visual differences in the marks, including the order and appearance of the letters and numerals, were significant. The aural differences were also considered sufficient to dispel any likelihood of confusion. Consequently, the grounds of opposition under sections 44 and 60 of the *Trade Marks Act 1995* were not established.

The delegate also addressed the opponent's submissions regarding the applicant's failure to update its address for service. However, the delegate found that the opponent had complied with the relevant provisions for service of documents, and the matter proceeded on the written record. As the grounds of opposition under sections 44 and 60 were not established, and no other grounds were supported by evidence, the delegate decided to register the trade mark.