Manta Surfing Products Pty Ltd v Oakley, Inc

This decision concerns an opposition by Oakley, Inc. ("the opponent") to the registration of the trade mark BLADE, sought by Manta Surfing Products Pty Ltd ("the applicant") for swimming and bodyboarding flippers. The opposition was heard by a delegate of the Registrar of Trade Marks.

The opponent pursued two grounds of opposition: conflicting prior registration under section 33 of the *Trade Marks Act 1955* (Cth) and conflicting prior reputation under section 28 of the *Trade Marks Act 1955* (Cth). The opponent relied on its registered trade mark BLADES for sunglasses and accessories, and evidence of its established reputation in the market for these goods. The applicant argued that the marks were not deceptively similar, and that sunglasses and swim fins were not goods of the same description, nor were they likely to cause confusion in the marketplace.

The delegate found that the trade marks BLADE and BLADES were, at least, deceptively similar, considering the practical application of the test for deceptive similarity which allows for imperfect recollection and everyday use. However, the delegate determined that sunglasses and swim fins were not "goods of the same description" for the purposes of section 33, noting significant differences in their nature, manufacture, purpose, and trade channels, despite some overlap in retail outlets. Furthermore, under section 28, the delegate found that while the opponent had a reputation, it was primarily associated with the OAKLEY house mark, and there was insufficient evidence to establish that the public would reasonably assume a common trade origin or connection between Oakley sunglasses and Manta swim fins, even among image-conscious consumers.

Consequently, the opposition failed on both grounds. The delegate directed that the applicant's trade mark application proceed to registration and awarded costs to the applicant.