H&R Johnson Tiles Ltd v Johnson Industrial Holding AG

In the matter of H&R Johnson Tiles Ltd v Johnson Industrial Holding AG, the Supreme Court of Victoria was asked to determine a dispute concerning the validity of a trade mark registration. H&R Johnson Tiles Ltd (the applicant) sought to have the trade mark "JOHNSON" registered in class 19 for use in relation to building materials, specifically tiles. Johnson Industrial Holding AG (the objector) opposed this registration, asserting that the mark was deceptively similar to its own registered trade marks, also featuring the name "JOHNSON" and used in relation to similar goods.

The primary legal issue before the Court was whether the applicant's proposed trade mark was deceptively similar to the objector's existing registered trade marks, such that its use would be likely to deceive or cause confusion among consumers. This involved an assessment of the marks themselves, the goods in respect of which they were used, and the relevant trading public. The Court was required to apply the principles of trade mark law, particularly section 44 of the *Trade Marks Act 1995* (Cth), which governs the grounds for opposition to trade mark registration based on deceptive similarity.

Justice Ian Thompson considered the visual and aural similarities between the marks, as well as the conceptual similarities. He noted that while the marks were identical in their primary element, "JOHNSON," the context of their use and the additional descriptive matter on the objector's packaging were relevant considerations. The Court applied the established test for deceptive similarity, which requires an examination of the marks as a whole and a consideration of whether an ordinary consumer, exercising ordinary care and attention, would be likely to be confused. The Court found that the marks, when considered in their respective commercial contexts, were not deceptively similar to the extent required to justify opposition.

The Court dismissed the opposition, finding that the applicant's proposed trade mark was not deceptively similar to the objector's registered trade marks. Accordingly, the application for registration of the trade mark "JOHNSON" in class 19 was allowed to proceed.