International Registration 1368594 (14, 18, 25, 28, 29, 30, 31, 32, 35) Australian Trade Mark Application number 1878246 (14, 18, 25, 28, 29, 30, 31, 32, 35) – #SANTACLARA- in the name of the Lidl Stiftung & Co. KG

The dispute concerned the opposition by Lidl Stiftung & Co. KG to the Australian trade mark application number 1878246 for the mark #SANTACLARA, filed by International Registration 1368594, for goods and services in classes 14, 18, 25, 28, 29, 30, 31, 32, and 35. The opposition was heard by Nicholas Smith, acting as delegate for the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the applicant's mark #SANTACLARA was deceptively similar to Lidl's registered trade mark for the mark SANTACLAUS, which was registered in respect of goods and services in the same classes. Lidl also contended that the applicant's mark was likely to cause confusion and deceive or be likely to deceive or cause confusion in Australia, and that the applicant was not the owner of the mark.

In his reasoning, the delegate applied the principles established in *Parke Davis & Co Ltd v. The Comptroller-General of Patents* and *Shell Co of Australia Ltd v. Esso Standard Oil (Australia) Ltd*, focusing on the visual and phonetic similarities between the marks, as well as the conceptual similarities. The delegate found that while the marks shared some similarities, the inclusion of the hashtag symbol in the applicant's mark created a significant visual distinction. Furthermore, the delegate considered the goods and services covered by the marks and concluded that there was no likelihood of deception or confusion among consumers. The delegate also found that Lidl had not established that the applicant was not the owner of the mark.

Consequently, the delegate dismissed the opposition and allowed the trade mark application to proceed to registration.