Kevin Edward Taylor v Simplicity Systems Pty Ltd

This matter concerned an opposition by Kevin Edward Taylor to the trade mark application 779730(9) filed by Simplicity Systems Pty Ltd. The application sought registration of the mark "footystats" with a device of a person kicking a football for goods described as "data processing equipment and computers" in class 9. The opponent, Mr Taylor, claimed prior use of the business name "Footystats" and alleged that the applicant was not the owner of the trade mark and that the mark was similar to one that had acquired a reputation in Australia.

The delegate of the Registrar of Trade Marks was required to determine whether the applicant was the owner of the trade mark under section 58 of the *Trade Marks Act 1995* and whether the trade mark was substantially identical with or deceptively similar to a trade mark that had acquired a reputation in Australia, such that its use would be likely to deceive or cause confusion, under section 60 of the Act. The delegate also had to consider whether the goods for which the trade mark was sought were the "same kind of thing" as the goods or services in relation to which the opponent claimed use.

In relation to section 58, the delegate found that the trade marks were not substantially identical when compared side by side, noting the strong device portion of the applicant's mark. Furthermore, the delegate determined that the applicant's goods, namely data processing equipment and computers, were not the "same kind of thing" as the opponent's goods, which consisted of football statistics published in book form and supplied via a website and print media. Consequently, the opposition under section 58 was unsuccessful. For the purposes of section 60, the delegate found that while the marks might be deceptively similar, the opponent had not provided sufficient evidence to establish that the mark "footystats" had acquired an established reputation in the marketplace. Additionally, the delegate concluded that the goods were too diverse to create a likelihood of deception or confusion, rendering the opposition under section 60 unsuccessful.

The delegate dismissed the opposition in its entirety, directing that the application could proceed to registration after 30 days, subject to payment of fees and any pending appeal. The delegate noted, however, that correspondence suggested the applicant might be using its trade mark on goods closer to the opponent's, but this was not a basis for the decision, which had to be made on the basis of the application as filed.