Opposition by Mapleleaf Holdings Limited to the registration of trade mark application number 647940 in the name of Spartacus Publishing, Inc for the word trade mark

The dispute before the Federal Court of Australia concerned an opposition by Mapleleaf Holdings Limited to the registration of trade mark application number 647940, filed by Spartacus Publishing, Inc. The application sought to register the word mark "SPARTACUS" for goods and services in classes 9, 16, and 41, broadly encompassing printed publications, electronic publications, and entertainment services. Mapleleaf Holdings Limited opposed the registration on the grounds of likely deception or confusion under section 60 of the *Trade Marks Act 1995* (Cth) and, alternatively, that the mark was not capable of distinguishing the applicant's goods and services under section 41 of the Act.

The primary legal issue before the Court was whether the registration of the trade mark "SPARTACUS" by Spartacus Publishing, Inc. would be likely to deceive or cause confusion among a significant number of the relevant public, given the existence of Mapleleaf Holdings Limited's prior registered trade marks, including "SPARTACUS" and "SPARTACUS BOOKS," for similar goods and services. A secondary issue was whether the applicant's mark was inherently capable of distinguishing its goods and services, or if it had acquired distinctiveness through use.

In its reasoning, the Court considered the degree of visual, phonetic, and conceptual similarity between the opposed mark and the opponent's prior marks. It also assessed the similarity of the goods and services offered by both parties and the likely target audience. The Court applied the principles established in cases such as *Theدى v Theدى* and *Parke Davis & Co Ltd v. Warner Lambert Co*, which require a global assessment of the likelihood of deception or confusion, taking into account all relevant factors. The Court found that there was a significant degree of similarity between the marks and the goods and services, and that the use of the same word "SPARTACUS" in relation to these offerings would be likely to deceive or cause confusion. Consequently, the Court upheld the opposition on the ground of section 60.

The Court ordered that the trade mark application number 647940 be refused.