Jack Daniel's Properties, Inc v Boondy Pty Ltd

This decision concerns an application by Boondy Pty Ltd to register the trade mark OLD # 15, opposed by Jack Daniel's Properties, Inc. The dispute arose from the opponent's assertion that the applied-for mark was deceptively similar to its registered trade mark OLD NUMBER 15, and that the applicant lacked a bona fide intention to use the applied-for mark.

The hearing officer was required to determine whether the applied-for trade mark OLD # 15 was deceptively similar to the opponent's registered trade mark OLD NUMBER 15, and whether the applicant had a bona fide intention to use the applied-for mark.

The hearing officer found that the difference between the applied-for and used trade marks was "very small" and that OLD # 15 was a shorthand for OLD NUMBER 15. The hearing officer reasoned that if the '#' symbol did not create significant ambiguity for the purposes of deceptive similarity, it similarly did not alter the position in relation to the requirement for a bona fide intention to use the mark. The hearing officer was not prepared to speculate on the applicant's reasons for applying for one mark while using another, nor was the hearing officer prepared to conclude that the actual use of one mark negated an intention to use a closely related mark, even if the relationship was perceived as a tactic to gain a forensic advantage.

Consequently, no ground of opposition was established, and the trade mark application was permitted to proceed to registration one month from the date of the decision, subject to any notice of appeal. Costs were awarded against the opponent.