Opposition by Bianca-Moden GmbH & Co. KG to registration of trade mark application 1953172 (25) – BIANCA AND BRIDGETT – in the name of Bianca and Bridgett Pty Ltd

This matter concerned an opposition by Bianca-Moden GmbH & Co. KG to the registration of the trade mark application BIANCA AND BRIDGETT (the Trade Mark) by Bianca and Bridgett Pty Ltd. The opposition was brought under section 44 of the *Trade Marks Act 1995* (Cth), which relates to the refusal of an application where the applicant's trade mark is substantially identical with, or deceptively similar to, a registered trade mark for similar goods or closely related services. The delegate of the Registrar of Trade Marks heard the matter.

The legal issues before the delegate were whether the Trade Mark was substantially identical with, or deceptively similar to, the Opponent's registered trade mark BIANCA, for goods that were conceded to be similar. The Opponent bore the onus of proving, on the balance of probabilities, that the Trade Mark should be refused registration.

The delegate considered the principles of substantial identity and deceptive similarity. In assessing substantial identity, the delegate noted that the marks must be compared side by side, considering their essential features and the total impression of resemblance. While acknowledging that the Trade Mark encompassed the Opponent's mark and added non-distinctive matter, the delegate found that the marks were not substantially identical as a total impression of resemblance did not emerge. In relation to deceptive similarity, the delegate applied the definition that a trade mark is deceptively similar if it is likely to deceive or cause confusion, without requiring an intention to deceive. The Opponent argued that the inclusion of "BIANCA" within the Trade Mark, coupled with another name, created a real risk of consumers believing there was an economic connection or collaboration with the Opponent's brand. However, the delegate found that the Opponent had not proven a reputation in the "BIANCA brand" that would support such a conclusion. The delegate also considered the Applicant's submissions that the coupling of given names in the fashion industry often signifies a convention rather than a brand merger, and that consumers of clothing tend to assess brands carefully. The delegate referred to practice directions which suggest that a real and tangible danger of confusion is less likely between trade marks consisting of a given name and a trade mark consisting of two or more given names, particularly when the given names are not unusual or rare.

On balance, the delegate found that the Trade Mark was not deceptively similar to the Opponent's trade mark. Accordingly, the opposition was dismissed, and the trade mark application was allowed to proceed to registration.