International PADI, Inc v Go Dive Australia Pty Ltd

International PADI, Inc. (the opponent) opposed the registration of a trade mark application by Go Dive Australia Pty Ltd (the applicant). The dispute concerned the applicant's proposed registration of the mark "GO DIVE" for services related to diving. The matter was heard by a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the opponent had established grounds for opposing the registration of the applicant's trade mark. Specifically, the delegate considered whether the use of the applicant's mark would be likely to deceive or cause confusion, and whether it would contravene section 52 of the Trade Practices Act 1974 (Cth) (now the Competition and Consumer Act 2010 (Cth)).

The delegate examined evidence of the opponent's use of the words "GO DIVE" in relation to its diving training materials, including a manual entitled "GO DIVE" and associated software. While some evidence indicated the use of "GO DIVE" as a title or description rather than a trade mark, the delegate found that an advertisement for dive planning software dated 25 March 2003, along with pre-priority date invoices for advertising this software, demonstrated trade mark use of "GO DIVE" by the opponent. However, the delegate determined that the standard under the Trade Practices Act 1974 was higher than that under the Trade Marks Act 1995, and that mere wonderment or confusion in the sense of "misleading or deceptive" was not sufficient. The delegate was not satisfied that the use of the applicant's trade mark would contravene section 52 of the Trade Practices Act 1974.

Despite not finding a contravention of section 52 of the Trade Practices Act 1974, the delegate found that the opponent had successfully established one of the grounds of opposition relied upon. Consequently, pursuant to section 55 of the Trade Marks Act 1995, the delegate refused to register the trade mark application. The applicant was ordered to pay the opponent's costs.