Jones Investment Co. Ltd v Bonny Lawrence and Michael Burge

This matter concerned an opposition by Jones Investment Co. Inc. (the opponent) to the registration of two trade mark applications, 872607 (a device mark) and 872608 (a word mark), both for the mark LEI THONG and device, filed by Bonny Lawrence and Michael Burge (the applicants). The applications were for goods in class 25, namely clothing, footwear, and headgear. The opposition was brought under sections 44, 58, and 60 of the *Trade Marks Act 1995* (Cth).

The delegate was required to determine whether the applicants' trade marks were substantially identical with or deceptively similar to the opponent's registered trade marks, whether the goods were similar, and whether the opponent's trade marks had acquired a reputation in Australia such that the use of the applicants' marks would be likely to deceive or cause confusion. The delegate also considered an argument that the applicants were not the joint owners of the trade marks, which was dismissed.

The delegate reasoned that while the goods were similar and the opponent's marks had earlier priority dates, the applicants' trade marks were neither substantially identical nor deceptively similar to the opponent's marks. The delegate found that the opponent's marks, primarily consisting of the letters L.E.I., created a different impression from the applicants' marks, LEI THONG, which were two common English words. The delegate concluded that consumers were unlikely to mentally insert punctuation to transform "LEI" into "L.E.I." and that the additional word "THONG" and the floral device in one of the applicant's marks further distinguished them. Consequently, the grounds of opposition under sections 44 and 60 were not established.

As the opponent had not established any of its grounds of opposition, the delegate directed that the trade mark applications could proceed to registration, subject to payment of outstanding fees and any pending appeal. The opponent was also ordered to pay the applicants' costs.