Nordica S.p.A v Icon IP, Inc [Sec=Unclassified]

Nordica S.p.A. (Nordica) sought to register a trade mark consisting of the word "NORDICA" in relation to footwear. Icon IP, Inc. (Icon) opposed this application, relying on its prior registration of the trade mark "NORDICA" for a range of clothing and accessories. The matter came before the Federal Court of Australia.

The primary legal issue before the Court was whether Nordica's proposed trade mark was deceptively similar to Icon's registered trade mark, within the meaning of section 44 of the *Trade Marks Act 1995* (Cth). This involved an assessment of whether a consumer, when encountering Nordica's mark in relation to footwear, would be likely to be deceived or confused into believing that the footwear originated from or was in some way connected with Icon, given Icon's existing registration for clothing and accessories.

Justice Debrett Lyons considered the principles of deceptive similarity, which require a comparison of the marks themselves and the goods or services in respect of which they are used. Her Honour noted that the marks were identical in spelling and pronunciation. The Court then examined the nature of the goods, acknowledging that while footwear and clothing are distinct categories, they are often sold in similar retail environments and are complementary in nature. Applying the established tests for deceptive similarity, which focus on the overall impression of the marks and the likelihood of confusion in the marketplace, the Court found that there was a real and tangible danger of deception or confusion.

The Court therefore upheld Icon's opposition and ordered that Nordica's trade mark application be refused.