LES EDITIONS ALBERT RENE

The matter before the Hearing Officer concerned an application for the extension of protection to Australia of an international registration (IRDA) by Les Editions Albert Rene. The dispute arose because the IRDA, which featured the trade mark ASTERIX, was considered deceptively similar to existing Australian trade mark registrations, specifically registration numbers 1082525 and 1270916 (the 525 and 916 Marks), for certain goods and services. The applicant sought protection for goods in Class 9, Class 25, and other classes, but the primary concern was the potential for confusion with the 525 and 916 Marks, which also related to computer software and hardware.

The central legal issue was whether the ASTERIX trade mark, as applied to certain goods in Class 9, was deceptively similar to the 525 and 916 Marks, thereby constituting a ground for rejection under section 44 of the Trade Marks Act 1995 (Cth). The Hearing Officer was required to assess the likelihood of deception or confusion among consumers, considering the visual, aural, and conceptual similarities and differences between the marks, as well as the nature of the goods and services and the sophistication of the relevant consumers. The applicant also sought to rely on evidence of reputation and prior use to overcome any finding of deceptive similarity, or alternatively, to have discretion exercised in their favour.

The Hearing Officer reasoned that while the ASTERIX trade mark, when viewed visually, includes a distinctive cartoon device, the word element "ASTERIX" is phonetically almost identical to the word "ASTERISK" present in the 525 and 916 Marks. It was noted that consumers often refer to the verbal component of a trade mark when ordering goods, and that the visual device of the ASTERIX mark did not sufficiently differentiate it from the word-only 525 and 916 Marks to prevent confusion. The Hearing Officer found that the consumers of the relevant Class 9 goods and services were not exclusively sophisticated and that a real danger of confusion or causing consumers to wonder about the source of the goods and services existed. Consequently, the Hearing Officer was satisfied that the ASTERIX mark was deceptively similar to the 525 and 916 Marks.

Ultimately, the Hearing Officer rejected the IRDA in part. The extension of protection was refused for the goods in Class 9 that conflicted with the 525 and 916 Marks, as the applicant's evidence of reputation was limited to children's literature and entertainment and did not demonstrate use in relation to the specific goods in question, nor did it satisfy the requirements for prior continuous use or honest concurrent use. However, the Hearing Officer accepted the IRDA for the applicant's goods in Class 25, finding no ground for rejection under section 44 in relation to those goods.