First Brands Properties Inc v Interco Vertrieb Kosmetischer Erzeugnisse GmbH

First Brands Properties Inc (the applicant) sought to register the trade mark "FIRST BRANDS" in relation to a range of cosmetic products. Interco Vertrieb Kosmetischer Erzeugnisse GmbH (the opponent) opposed this application, arguing that the proposed mark was deceptively similar to its own registered trade mark "FIRST" for similar goods. The matter came before the Registrar of Trade Marks, and subsequently, the applicant appealed the Registrar's decision to the Federal Court of Australia.

The primary legal issue before the Federal Court was whether the applicant's proposed trade mark "FIRST BRANDS" was deceptively similar to the opponent's registered trade mark "FIRST" for the purposes of section 44 of the *Trade Marks Act 1995* (Cth). This involved an assessment of the degree of visual, phonetic, and conceptual resemblance between the two marks, as well as a consideration of the respective goods and the likely perception of the relevant consumers.

Justice Vija Zars found that while the word "FIRST" was common to both marks, the addition of "BRANDS" in the applicant's mark created a distinct difference. The Court applied the principles established in cases such as *Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd*, which require an examination of the marks as a whole, considering the overall impression conveyed to the ordinary consumer. His Honour concluded that the differences between the marks were sufficient to avoid deception or confusion in the marketplace, particularly given the context of cosmetic products.

Consequently, the Federal Court allowed the appeal, setting aside the Registrar's decision and ordering that the opposition be dismissed. The applicant was granted leave to proceed with the registration of its trade mark.