H & R Johnson Tiles Limited v Duramax, Inc

H & R Johnson Tiles Limited (the applicant) sought to register a trade mark consisting of the word "DURAMAX" in relation to a range of goods, including tiles and related products. Duramax, Inc (the opponent) opposed the registration, arguing that the proposed mark was deceptively similar to its own registered trade mark "DURAMAX" for similar goods, and that registration would be contrary to section 18 of the *Trade Marks Act 1995* (Cth). The matter proceeded to the Federal Court of Australia.

The primary legal issue before the court was whether the applicant's proposed trade mark "DURAMAX" was deceptively similar to the opponent's registered trade mark "DURAMAX" for the purposes of section 44 of the *Trade Marks Act 1995* (Cth). This involved an assessment of the visual, aural, and conceptual similarities between the two marks, as well as the likelihood of deception or confusion among consumers in the relevant market.

The court, applying the principles established in cases such as *Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd* and *Parke Davis & Co Ltd v. Sanofi-Aventis Deutschland GmbH*, found that the marks were identical. Given the identical nature of the marks and the similarity of the goods in respect of which registration was sought, the court concluded that there was a significant likelihood of deception or confusion. Consequently, the court upheld the opposition.