Opposition by HIJOS DE RIVERA, S.A. to registration of trade mark application number 2247131 (class 32) –

This decision concerns an opposition by HIJOS DE RIVERA, S.A. (the Opponent) to the registration of trade mark application number 2247131, for the composite mark "ESTRELLA DAMM", in class 32 (beer), filed by Sociedad Anónima Damm (the Applicant). The matter was heard by a delegate of the Registrar of Trade Marks.

The legal issues before the delegate included whether the Applicant's trade mark should be rejected on various grounds, including those under sections 42(b), 43, 44, 58, 60, 62A of the *Trade Marks Act 1995* (Cth) and regulation 4.15A of the *Trade Marks Regulations* (Cth). The primary focus of the decision was on the ground of opposition under section 44, which relates to identical or deceptively similar earlier registered trade marks in respect of similar goods.

The delegate considered the evidence filed by both parties, including the Opponent's use of trade marks containing "Estrella Galicia" and the Applicant's extensive international use and historical use of marks incorporating "Estrella" and "Damm" in relation to beer. The delegate found that while there were clear differences between the Applicant's trade mark and the Opponent's registered trade marks when compared side-by-side, leading to a total impression of dissimilarity, the assessment of deceptive similarity required further consideration. The delegate applied the principles that trade marks should be compared as wholes, considering their essential features, visual and aural aspects, and the likely impression on ordinary consumers, accounting for imperfect recollection and the possibility of confusion about the source of the goods.

Ultimately, the delegate determined that the Applicant's trade mark was not substantially identical to any of the Opponent's trade marks. However, the delegate found that the Applicant's trade mark was deceptively similar to the Opponent's earlier registered trade mark number 1019902, which also claimed beer. The delegate concluded that there was a real tangible danger of confusion, meaning a real likelihood that some people would wonder or be left in doubt about whether the two sets of products came from the same source. Consequently, the delegate found that section 44 of the Act was established, and the trade mark application was refused.