GSM (Trademarks) Pty Ltd and Mark Occhilupo v William Hitching

GSM (Trademarks) Pty Ltd and Mark Occhilupo (the applicants) sought to restrain William Hitching (the respondent) from infringing their registered trademarks, specifically the word mark "OCC" and the device mark depicting a surfer. The applicants alleged that the respondent's use of the mark "OCC" in relation to surfwear and accessories, and his use of a device mark featuring a surfer, constituted infringement of their registered trademarks. The matter came before Deirdre O'Brien J in the Federal Court of Australia.

The primary legal issues before the Court were whether the respondent's use of the mark "OCC" infringed the applicants' registered word mark "OCC" and whether the respondent's device mark infringed the applicants' registered device mark depicting a surfer. This involved a consideration of the scope of the applicants' registered trademarks and whether the respondent's marks were identical or deceptively similar to those registered marks, and whether the goods or services in relation to which the respondent used his marks were of the same description as those for which the applicants' marks were registered.

Her Honour considered the evidence presented by both parties, including evidence of the respondent's use of the "OCC" mark and the surfer device mark, and the applicants' registered trademarks. The Court applied the principles of trademark infringement as set out in the *Trade Marks Act 1995* (Cth), focusing on the tests for identity and deceptive similarity. Her Honour found that the respondent's use of the "OCC" mark was not identical to the applicants' registered "OCC" mark, nor was it deceptively similar in the context of the goods for which it was used. Similarly, the Court found that the respondent's device mark, while depicting a surfer, was not deceptively similar to the applicants' registered surfer device mark, taking into account the differences in artistic representation and the overall impression conveyed by each mark.

The Court therefore dismissed the applicants' claim for infringement of both the word mark and the device mark.