Kmart Australia Pty Ltd v A-Mart All Sports Pty Ltd

This case involved an opposition by Kmart Australia Limited ("KMart") to the registration of a trade mark application by A-Mart All Sports Pty Ltd ("A-Mart"). The application sought registration for a logo encompassing sportswear, sporting footwear, games, playthings, gymnastic apparatus, sporting articles, and retail services for these items. KMart opposed the registration on the grounds that A-Mart's proposed trade mark was deceptively similar to its own registered trade marks, specifically those containing "K mart" and "Super K mart," as well as a registered "All Sports logo." The matter was determined by a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether A-Mart's trade mark application should be rejected under section 44 of the *Trade Marks Act 1995* (Cth) due to deceptive similarity with KMart's registered trade marks. This involved assessing whether the proposed mark was substantially identical with, or deceptively similar to, KMart's existing registrations for similar goods and services, and whether there was a real tangible danger of deception or confusion arising from its use. The delegate also considered the implications of prior proceedings between the parties and the relevant case law, particularly *Registrar of Trade Marks v Woolworths Limited*, concerning the presumption of registrability and the adversarial nature of the opposition stage.

The delegate reasoned that the question of deceptive similarity must be assessed based on the circumstances of use, the nature of the goods and services, and the probable purchasers, as well as the potential for confusion in both visual and aural contexts. Applying the reformulated tests for deceptive similarity, the delegate considered the phonetic and visual resemblances between the marks, noting the "idiosyncratic" combination of "K" and "Mart" and the nature of the retail services. The delegate also took into account the limitations on A-Mart's prior registrations, which were restricted to specific geographical areas, and the absence of evidence of broader use or honest concurrent use. The delegate found that there was a likelihood that the ordinary person would be led to wonder whether the two businesses came from the same source or had a connection, particularly in the context of retail signage and aural use.

Ultimately, the delegate found that A-Mart's trade mark was deceptively similar to KMart's registered trade marks. Consequently, the delegate ordered that the opposition be upheld and the application for registration be refused unless A-Mart agreed to the same geographical limitations as were imposed on its prior registrations. KMart was also awarded costs.