Greenbelt Pacific Pty Limited v Craig Somers and Paul Fountain

This decision concerns an opposition by Craig Somers and Paul Fountain (the opponents) to the registration of the trade mark application PLANET 2000 by Greenbelt Pacific Pty Limited (the applicant) for sunglasses. The applicant filed its application on 11 December 1995, and the acceptance was advertised on 21 November 1996. The opponents filed their joint Notice of Opposition on 21 February 1997, raising two grounds under the *Trade Marks Act 1995*: section 58, alleging the applicant was not the owner of the trade mark, and section 60, claiming that the use of the trade mark was likely to deceive or cause confusion due to prior reputation.

The delegate was required to determine whether the opponents had established that the applicant was not the owner of the trade mark under section 58, which involves assessing prior use and whether the marks were identical or substantially identical. Additionally, the delegate had to consider whether the applicant's proposed use of the trade mark would be likely to deceive or cause confusion under section 60, requiring an assessment of deceptive similarity between the marks and the reputation acquired by the opponents in their mark prior to the applicant's priority date.

Regarding the section 58 ground, the delegate found that while the opponents had used their PLANET trade mark on sunglasses prior to the applicant's filing date, their mark was not identical or substantially identical to the applicant's PLANET 2000 mark. The delegate reasoned that the addition of "2000" created a clear difference when the marks were compared side-by-side, thus failing the substantial identity test. For the section 60 ground, the delegate determined that although the marks PLANET and PLANET 2000 were deceptively similar, the opponents had failed to establish a sufficient reputation in their mark by the applicant's priority date of 11 December 1995. The evidence of sales figures for 1996 and an invitation to exhibit at the 1994 Australian Design Awards were deemed insufficient to demonstrate the necessary level of reputation prior to the application date.

Consequently, the opposition was dismissed on both grounds. The delegate ordered that the opposition be dismissed and awarded costs to the applicant.