Kabushiki Kaisha Moonstar v Converse Inc

This matter concerned an appeal from a decision of the Registrar of Trade Marks in the Federal Court of Australia, brought by Kabushiki Kaisha Moonstar (Moonstar) against Converse Inc. The dispute centred on Moonstar's application to register the trade mark "ONE STAR" in relation to footwear. Converse opposed this application, asserting that the mark was deceptively similar to its own registered trade mark "ONE STAR" for footwear, and that registration would be likely to deceive or cause confusion.

The primary legal issue before the Court was whether Moonstar's proposed "ONE STAR" trade mark was deceptively similar to Converse's registered "ONE STAR" trade mark, such that its use in relation to footwear was likely to deceive or cause confusion among consumers. This required an assessment of the marks themselves, the goods for which they were to be used, and the likely perception of the relevant class of purchasers.

The Court applied the established principles for assessing deceptive similarity under the *Trade Marks Act 1995* (Cth). It considered the visual and phonetic similarities between the two marks, as well as the conceptual meaning. The Court found that both marks comprised the identical words "ONE STAR" and were intended for use on identical goods, namely footwear. Crucially, the Court determined that the marks were not merely descriptive but had acquired distinctiveness through use. Given the identical nature of the words and the identical nature of the goods, the Court concluded that there was a high degree of similarity and a significant likelihood of deception or confusion. Consequently, the appeal was dismissed.