Gabriel and Silvan Andrews v Sola-Tube Australia Pty Ltd

This decision concerns an opposition by Sola-Tube Australia Pty. Ltd. (the opponent) to the registration of a trade mark application filed by Gabriel and Silvana Andrews (the applicants), trading as Aussie Home Makers. The applicants sought to register a series of marks for skylights, specifically described as "skylights for natural lighting, round, square and rectangle." The opposition was brought under the Trade Marks Act 1995, despite the application being filed under the now-repealed Trade Marks Act 1955.

The court was required to determine several grounds of opposition. These included whether the applicants' trade mark was capable of distinguishing their goods from those of other traders, whether it was substantially identical with or deceptively similar to registered trade marks owned by the opponent or its beneficial owner, and whether its use would be likely to deceive or cause confusion due to the reputation of existing trade marks. The opponent also raised grounds relating to the applicant's ownership and intention to use the mark, and that registration would prejudice the opponent's business.

The delegate dismissed the opposition on all grounds. Regarding the distinctiveness of the mark, the delegate found that while the mark contained a descriptive element ("silva tube" as a misspelling of "silver tube"), the overall presentation, including the lack of linking words and the inherent adaptation of the mark, was sufficient to distinguish the applicants' goods. On the issue of deceptive similarity, the delegate considered the marks SILVATUBE and SOLATUBE, applying the principles of imperfect recollection and the likely reaction of ordinary consumers. The delegate concluded that the inherent ideas conveyed by the marks, with "sola" referencing sunlight and "silva" referencing the construction or appearance, meant the marks were not deceptively similar. The delegate also rejected the claim of deceptive similarity with other registered device marks. Finally, the delegate found that even considering the reputation of the opponent's mark and device, the resemblance was not such that it would likely deceive or cause confusion.

Consequently, the delegate directed that the trade mark application proceed to registration and awarded costs to the applicants.