McD Asia Pacific LLC v Sheikhtaba Pty Ltd

McD Asia Pacific LLC (the applicant) sought to register a trade mark, which Sheikhtaba Pty Ltd (the opponent) opposed. The dispute concerned whether the applicant's proposed trade mark was deceptively similar to any of the opponent's registered trade marks, as contemplated by section 44(1) of the relevant Act. The matter was heard by Bianca Irgang, a Hearing Officer in the Trade Marks Hearings.

The primary legal issue before the court was to determine if the applicant's trade mark was "deceptively similar" to any of the opponent's registered trade marks, specifically the "MAC marks," in relation to similar or closely related goods or services. To establish a ground of opposition under section 44(1), the opponent was required to demonstrate the existence of a registered or pending trade mark owned by another party, that the applicant's trade mark was substantially identical or deceptively similar to it, that the goods or services were similar or closely related, and that the priority date of the opponent's trade mark was earlier than that of the applicant's.

The Hearing Officer found that the opponent had not established any grounds for opposition. While the opponent owned several registered trade marks (the "MAC marks") with earlier priority dates than the applicant's opposed trade mark, the Hearing Officer agreed with the opponent that none of these registrations were substantially identical to the opposed trade mark. Consequently, the central question became whether the applicant's trade mark was deceptively similar to any of the opponent's MAC marks. Applying the principles of deceptive similarity, which involves comparing the impression ordinary persons of intelligence and memory would retain of the opponent's trade mark against the impression formed from the applicant's trade mark, the Hearing Officer concluded that this threshold was not met.

As the opponent had not established any grounds of opposition, the Hearing Officer decided that the trade mark application could proceed to registration one month from the date of the decision, unless an appeal was filed. The Hearing Officer also awarded costs against the unsuccessful opponent, McD Asia Pacific LLC, in accordance with the usual practice that costs follow the event.