L.F.P Inc v Hustler Australia Pty Ltd

This matter concerned an opposition by L.F.P Inc. (the opponent) to the registration of the trade mark HUSTLER by Hustler Australia Pty Ltd (the applicant). The opposition was heard by Mary Skivington, a Hearing Officer of the Trade Marks Hearings. The opponent presented evidence of its use of the HUSTLER trade mark in Australia since 1996 in relation to adult entertainment magazines, as well as other goods and services including playthings, clothing, headwear, DVDs, and websites.

The opponent pressed grounds of opposition under sections 42, 43, 44, 58, and 60 of the relevant Act. The primary legal issues before the Hearing Officer were whether the applicant was the owner of the trade mark (section 58), whether the applied-for mark was substantially identical with or deceptively similar to the opponent's registered or common law trade mark (section 44), and whether the use of the applied-for mark would be likely to deceive or cause confusion (section 60), among other grounds.

The Hearing Officer found that while the applicant's trade mark HUSTLER was identical to the opponent's registered and common law trade mark, the ground of opposition under section 44 was not established because magazines and the wholesaling and retailing of magazines were not considered closely related to the other goods and services upon which the opponent relied for this ground. However, the opponent succeeded in establishing its grounds of opposition under sections 58, 60, and subsection 42(b) of the Act. Consequently, the Hearing Officer refused to register the trade mark. The applicant was ordered to pay the opponent's costs.