Five V's Pty Ltd v La Gaia Pty Ltd

This matter came before Robert Wilson, Hearing Officer, as a delegate of the Registrar of Trade Marks, concerning an opposition by La Gaia Pty Ltd (the Opponent) to the registration of a trade mark by Five V's Pty Ltd (the Applicant). The dispute centred on the Opponent's claim that the Applicant's proposed trade mark was deceptively similar to its own registered trade marks, specifically trade mark 1302621, for goods within Class 3. The Applicant had established its business in 1993, selling cosmetic products under the LA GAIA trade mark since 1994, primarily through high-end channels and spas, and using the domain name lagaia.com.au since 2004. The Opponent, incorporated in 2006, also traded under the GAIA brand, having commenced operations in 1999 with a natural baby range and subsequently expanding to other product lines.

The primary legal issue before the court was whether the Applicant's trade mark was deceptively similar to the Opponent's registered trade mark 1302621, pursuant to section 44 of the relevant Act. This involved an assessment of the visual, aural, and conceptual similarities between the two marks, considered in light of the goods for which registration was sought. The court also had to consider whether any exceptions to the ground of opposition, as provided for in subsections 44(3) or (4) of the Act, were applicable.

The Hearing Officer found that the Applicant's trade mark was deceptively similar to the Opponent's trade mark 1302621. In reaching this conclusion, the court considered the evidence presented by both parties, including declarations from representatives of each company detailing their respective trade mark usage and product offerings. The court determined that the similarities between the marks were sufficient to cause confusion among consumers, particularly given the identical nature of the goods in Class 3 for which registration was sought. As no exceptions under section 44(3) or (4) were found to apply, the Opponent successfully established its ground of opposition.

Consequently, the Hearing Officer refused to register the Applicant's trade mark. The Opponent was awarded costs against the Applicant, following the general rule that costs follow the event, in accordance with Schedule 8 of the Trade Marks Regulations 1995.