Lam Soon Oil and Soap Mfg (S) Pty Ltd, Re

This matter concerns trade mark application 521325, filed by Lam Soon Oil and Soap Mfg (S) Pty Ltd, for goods in class 29, specifically edible oils and fats, shortening, margarine, and tinned or bottled beans, peas, mushrooms, soups, sauces, jam, and peanut butter. The application was opposed by Hastings Co-Operative Ltd, the proprietor of an earlier registered trade mark, DAISY, for a range of goods including meat, poultry, game, fruits, vegetables, dairy products, and edible oils and fats. The delegate of the Registrar of Trade Marks was required to determine whether the applicant's mark was substantially identical with or deceptively similar to the cited registered mark, pursuant to section 33 of the relevant Act.

The delegate considered the legal test for deceptive similarity, which requires an examination of the marks by their look and sound, the goods to which they apply, the nature of the likely customers, and all surrounding circumstances, including the likely use of each mark. The delegate found that there was a direct overlap in the goods specified by the applicant and those covered by the cited registration. Despite some differences between the marks, the delegate concluded that the applicant's mark was deceptively similar to the cited mark DAISY, particularly as the word DAISY formed a distinctive and essential part of the applicant's mark and was not safely merged into any new entity.

The delegate noted that the cited proprietor had consented to concurrent registration for certain goods, but this consent was insufficient to overcome the objection under section 33, as the similarity between the marks and goods was not borderline. Furthermore, the delegate found no evidence of extensive and honest concurrent use by the applicant that would justify acceptance under section 34 of the Act. Consequently, the delegate refused trade mark application 521325.