Hot Tuna IP Limited v Select GmbH Unternehmen Fur Zeitarbeit

Hot Tuna IP Limited (the opponent) opposed the application by Select GmbH Unternehmen Fur Zeitarbeit (the applicant) for an International Registration Designating Australia (IRDA) for trade marks in classes 25 and 32. The dispute concerned whether the applicant's proposed trade marks were deceptively similar to the opponent's registered trade marks for clothing and surfwear, and whether the opponent's trade mark had acquired sufficient reputation in Australia to warrant opposition under section 60 of the *Trade Marks Act 1995* (Cth).

The primary legal issues before the Hearing Officer were whether the applicant's trade mark was substantially identical with or deceptively similar to the opponent's earlier registered trade mark for similar goods or services, pursuant to section 44 of the Act, and whether the opponent's trade mark had acquired a reputation in Australia such that the use of the applicant's trade mark would be likely to deceive or cause confusion, under section 60 of the Act. The Hearing Officer also considered the relevance of the opponent's declining popularity in the late 1990s and its subsequent efforts to revive its brand's reputation.

The Hearing Officer found it unnecessary to fully deconstruct the opponent's reputation at the priority date, as the applicant's trade mark was found to be deceptively similar to the opponent's registered trade mark under section 44 of the Act. This determination was based on a visual comparison of the trade marks, which both depicted a cartoonish, fearsome-looking fish with similar features such as an open, oversized eye and agape mouth with sharp teeth, conveying a sense of menace. The Hearing Officer concluded that these shared visual indicia would create the same net impression on ordinary consumers, and given that the goods were identical (class 25 clothing) and the applicant targeted the same consumers, there was a significant risk of confusion.

Consequently, the opposition was upheld on the ground under section 44 of the Act in respect of the class 25 specification of the IRDA. The Hearing Officer refused to extend protection of the IRDA to Australia for class 25 goods, noting that the extension of protection for class 32 goods was unaffected. The opponent was awarded its costs.