Fabio and Antoinette Baroni v Toys "R" Us, Inc

This decision concerns an opposition by Toys "R" Us, Inc ("the opponent") to the registration of trade mark application number 474054, lodged by Fabio and Antoinette Baroni ("the applicants"). The applicants sought to register the mark "Parties R Us" for a range of goods including party and novelty items, decorations, toys, and games. The opposition was heard by a Delegate of the Registrar of Trade Marks.

The opponent raised several grounds for opposition, including that the applicants' mark was not distinctive, that its use would be likely to deceive or cause confusion under section 28 of the *Trade Marks Act 1955*, and that it was deceptively similar to the opponent's earlier registered mark, TOYS "R" US, under section 33 of the Act. The opponent argued that its mark was well-known globally and within Australia, and that the similarity between the marks, particularly the reversed "R" and the "Us" element, would lead to deception or confusion among consumers and traders.

The Delegate considered the evidence presented by both parties. Regarding distinctiveness under section 24, the Delegate found that the applicants' mark was merely suggestive of an attribute of the goods and not descriptive, dismissing this ground. On the issue of deception or confusion under section 28, the Delegate agreed that reputation is a prerequisite but found that the degree of similarity between the marks was insufficient to cause deception or confusion, even if the opponent's reputation was substantial. Applying the principle that the proposed mark must be so unlike the rival mark that confusion is not reasonably probable, the Delegate concluded that few consumers or retailers would be deceived. Finally, concerning deceptive similarity under section 33, the Delegate acknowledged the overlap in goods but, after comparing the marks as wholes, considering their look, sound, the goods, and the likely customers, determined that the marks could coexist if used normally and fairly.

The opposition was dismissed on all pursued grounds. The Delegate found no reason why the application should not proceed to registration and awarded costs to the applicants.