Mitsubishi Jodosha Kogyo Kabushiki Kaisha v Jason International Inc

Mitsubishi Jodosha Kogyo Kabushiki Kaisha (Mitsubishi) sought to register a trade mark consisting of the word "OUTLANDER" for use in relation to motor vehicles. Jason International Inc (Jason) opposed this application, asserting that the mark was deceptively similar to its own registered trade mark "OUTLANDER" for use in relation to clothing and footwear. The matter came before Terry Williams J in the Federal Court of Australia.

The central legal issue before the Court was whether Mitsubishi's proposed trade mark was deceptively similar to Jason's registered trade mark, within the meaning of section 44 of the *Trade Marks Act 1995* (Cth). This required the Court to consider the degree of visual, phonetic, and conceptual resemblance between the two marks, and to assess whether this resemblance was likely to deceive or cause confusion among a substantial number of consumers. The Court also had to consider the respective goods for which each mark was used, and whether there was any likelihood of a connection being made in the minds of the public between the two marks.

In reaching its decision, the Court applied the well-established principles for assessing deceptive similarity. It noted that the comparison must be made between the marks as a whole, and that the marks should be considered in the context of the goods for which they are used. The Court found that while both marks comprised the identical word "OUTLANDER," the goods in question – motor vehicles versus clothing and footwear – were sufficiently distinct. Furthermore, the Court considered that the ordinary consumer of motor vehicles would exercise a higher degree of care and attention than a consumer of clothing or footwear. On this basis, the Court concluded that there was no likelihood of deception or confusion.

The Court therefore dismissed Jason's opposition to Mitsubishi's trade mark application.