Network Asia Pte Ltd, Re

This matter concerns an application by Network Asia Pte Ltd to register the trade mark BODS and device in Class 25 for casual clothing. The application was objected to by the examiner on the grounds that the mark was deceptively similar to two existing registered trade marks: A484251 LE-BODZ for clothing, and A487373 HOT BODS for a range of goods including clothing. The applicant sought a hearing before a delegate of the Registrar of Trade Marks.

The delegate was required to determine whether the applicant's proposed trade mark BODS and device was deceptively similar to the earlier registered marks LE-BODZ and HOT BODS, within the meaning of sub-section 33(1) of the relevant Act. This sub-section provides that a trade mark is not registrable if it is substantially identical with or deceptively similar to a registered trade mark for the same or similar goods, unless the applicant's registration date is earlier.

In assessing deceptive similarity, the delegate applied the principles established in Australian Woollen Mills Ltd v. F. S. Walton & Co. Ltd., which require an estimation of the impression and recollection the marks will induce in the mind of the customer, rather than a strict side-by-side comparison. The delegate considered that the word "BODS" was the most prominent and readily identifiable feature of the applicant's mark, and similarly, the word "BODS" or its phonetic equivalent was the distinctive element in the cited registrations. The delegate found that a customer requesting the applicant's goods by name might be presented with goods sold under either of the earlier registered marks. The applicant bore the onus of demonstrating that its mark would not cause confusion or deception, and the delegate concluded that this onus had not been discharged to the required satisfaction, particularly as the manner of sale of the goods was unknown and could encompass various retail environments.

Accordingly, the delegate refused to register application number 535770.