Home Box Office, Inc v Susan Stigwood Pty Ltd

This matter concerned an opposition by Susan Stigwood Pty Ltd to the registration of a trade mark by Home Box Office, Inc. The applicant sought to register a trade mark, and the opponent objected on the grounds that the proposed mark was deceptively similar to its own existing mark. The hearing officer was tasked with determining whether the opposition should succeed.

The central legal issue before the hearing officer was whether the applicant's proposed trade mark was deceptively similar to the opponent's existing trade mark, such that it would be likely to deceive or cause confusion among consumers. This required an assessment of the visual and conceptual similarities between the two marks, as well as the degree of attention likely to be exercised by the relevant public when encountering them in the marketplace.

The hearing officer found that while there was some visual similarity between the marks, the connection between the opponent's business and the services for which the applicant sought registration was not apparent. He reasoned that any potential customer seeking the applicant's services, upon seeing what might fleetingly appear to be the name of an American soap opera in relation to personal services, would likely perform a "double-take" and quickly recognise the distinction. This short-lived potential for error, the hearing officer concluded, was not sufficiently tangible or significant to establish a likelihood of mistake or confusion. Consequently, no ground of opposition was established.

The hearing officer ordered that the trade mark application could proceed to registration one month from the date of the decision, unless an appeal was filed. He also directed that the opponent pay the applicant's costs, noting that any award of indemnity costs would be subject to the limitations set out in the regulations.