Dunhill Tobacco of London Limited v Wuhu Cigarette Factory

Dunhill Tobacco of London Limited (the applicant) sought to register its trademark "DUNHILL" for tobacco products in Australia. Wuhu Cigarette Factory (the objector) opposed this application, arguing that the proposed mark was substantially identical or deceptively similar to its own registered trademark "DUNHILL" for cigarettes. The matter came before the Registrar of Trademarks, and subsequently, the applicant appealed to the Federal Court of Australia.

The primary legal issue before the Federal Court was whether the applicant's proposed trademark "DUNHILL" for tobacco products was substantially identical or deceptively similar to the objector's registered trademark "DUNHILL" for cigarettes, within the meaning of section 44 of the *Trade Marks Act 1995* (Cth). This required the Court to consider the degree of visual, aural, and conceptual resemblance between the two marks, as well as the similarity of the goods in respect of which the marks were used.

Justice Dunn applied the established principles for assessing substantial identity or deceptive similarity, focusing on the overall impression of the marks. Her Honour found that the marks were identical in appearance and sound, and conceptually conveyed the same meaning. Furthermore, the goods in question, namely tobacco products and cigarettes, were found to be closely related. Consequently, the Court concluded that the applicant's proposed mark was substantially identical to the objector's registered mark, and therefore, the opposition was upheld.