Hans Schwarzkopf & Henkel GmbH & Co KG v Tars International Limited

This matter concerned an opposition by Hans Schwarzkopf & Henkel GmbH & Co KG (the opponent) to the registration of a trade mark by Tars International Limited (the applicant). The dispute arose from the applicant's attempt to register a trade mark for goods in Class 3, which the opponent contended was deceptively similar to its own registered trade marks for hair care products. The decision was made by Alison Windsor, Hearings Officer, in the Trade Marks and Designs Hearings.

The primary legal issue before the Hearings Officer was whether the applicant's proposed trade mark was deceptively similar to the opponent's registered trade marks, specifically in relation to goods within Class 3. The opponent relied on grounds of opposition under sections 44 and 60 of the relevant Act, arguing that the applicant's mark was either identical or deceptively similar to its own registered marks, and that these marks had earlier priority dates and covered similar goods. The opponent also contended that its trade mark had a reputation in Australia.

The Hearings Officer found that the opponent had established a ground for opposition under section 44. This was based on the comparison of the trade marks, where the only difference was the initial letter. Considering that the marks were four letters long, the initial letter constituted a significant portion of the mark. Coupled with the nature of the goods (relatively low-priced) and the potential for trade marks to be partially obscured on retail shelves, the Hearings Officer concluded there was a real and tangible chance of confusion in the marketplace. Consequently, the opponent had successfully established the section 44 ground of opposition in respect of goods in Class 3.

As the section 44 ground was established, the Hearings Officer deemed it unnecessary to consider the other grounds of opposition. The application was permitted to proceed to registration for goods in Classes 9, 14, 18, and 24, but the applicant was given one month to amend the application by deleting Class 3. If no amendment was received within that time, the entire application would be refused. The opponent was awarded costs against the applicant.