Footwear Industries Pty Ltd v PT Alasmas Berkat Utama

Footwear Industries Pty Ltd (the applicant) sought to register the trade mark "FOOTWEAR INDUSTRIES" in class 25. PT Alasmas Berkat Utama (the opponent) opposed the registration on the basis of its earlier registered trade mark "FOOTWEAR" in class 25. The dispute concerned whether the applicant's proposed mark was deceptively similar to the opponent's registered mark.

The Hearing Officer was required to determine whether the applicant's trade mark was deceptively similar to the opponent's registered trade mark, having regard to the ordinary meaning of the words, the visual and phonetic similarities, and the overall commercial impression of the marks. The Hearing Officer also had to consider whether the opponent had established a reputation in its trade mark.

In reaching her decision, the Hearing Officer applied the principles of deceptive similarity as established in Australian trade mark law. She found that while the word "FOOTWEAR" was descriptive of the goods in class 25, the opponent had established a significant reputation in its mark. The Hearing Officer concluded that the inclusion of the descriptive term "INDUSTRIES" in the applicant's mark did not sufficiently distinguish it from the opponent's mark, particularly given the common element "FOOTWEAR" and the similar commercial context. The overall impression created by the applicant's mark was found to be deceptively similar to the opponent's mark.

The opposition was therefore upheld, and the application for registration of the trade mark "FOOTWEAR INDUSTRIES" was refused.