Netafim Australia Pty Limited v OASE GmbH

Netafim Australia Pty Limited (Netafim) sought to register a trade mark consisting of the word "Netafim" for use in relation to irrigation equipment. OASE GmbH (OASE) opposed this application, arguing that the proposed mark was too similar to its own registered trade mark "NETAFIM" (also in capital letters) for use in relation to similar goods. The delegate of the Registrar of Trade Marks was required to determine whether the proposed mark was substantially identical with or deceptively similar to OASE's registered trade mark.

The delegate considered the principles of comparison of trade marks as established in cases such as *Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd* and *Parke Davis & Co Ltd v. Capitol Manufacturing Co Ltd*. The delegate noted that the comparison must be made between the marks as registered and as proposed to be used, and that the marks should be viewed as a whole. The delegate also considered the potential for imperfect recollection of the marks by consumers.

Applying these principles, the delegate found that the two marks, "Netafim" and "NETAFIM", were visually, aurally, and conceptually identical. The delegate concluded that there was a real likelihood of deception or confusion among consumers given the similarity of the marks and the identity of the goods and services for which they were to be used. Consequently, the delegate upheld OASE's opposition and refused the registration of Netafim's trade mark application.