Kiss Nail Products Inc v Wella Operations US, LLC

Kiss Nail Products, Inc. (the Opponent) opposed the registration of the trade mark application number 2328777, known as "xPRESS/ON", in Class 3 for nail products, filed by Wella Operations US, LLC (the Applicant). The opposition was brought under section 52 of the *Trade Marks Act 1995* (Cth), with grounds raised under sections 42(b), 44, 58, 60, and 62A of the Act.

The primary legal issue before the delegate was whether any of the grounds of opposition were established. Specifically, in relation to section 44, the delegate had to determine if the Applicant's trade mark was substantially identical with, or deceptively similar to, the Opponent's registered trade mark "IMPRESS" for similar goods, considering the respective priority dates. The delegate also considered the other grounds of opposition, but the focus of the decision was on the section 44 assessment.

The delegate found that while the Opponent's registered trade mark "IMPRESS" and the Applicant's trade mark "xPRESS/ON" shared the element "PRESS", a side-by-side comparison revealed significant visual differences, including the presence of "x" and "/ON" in the Applicant's mark and the absence of "IM" from the Opponent's mark. This led to a total impression of dissimilarity, meaning the marks were not substantially identical. Furthermore, when assessing deceptive similarity, the delegate considered the marks as a whole, taking into account their look and sound, and concluded that the differences were sufficient to prevent deception or confusion among ordinary consumers. Consequently, no ground of opposition was established.

As no ground of opposition was established, the delegate ordered that the trade mark application proceed to registration.