Opposition by Rolex S.A. to registration of International Registration Designating Australia 1735782 (International Registration 1274612) (classes 18, 25) - SPOOKS with device – held by Spooks GmbH.

The dispute before the Federal Court of Australia concerned an opposition by Rolex S.A. to the registration of the international trademark designation Australia 1735782, which comprised the word "SPOOKS" with a device, filed by Spooks GmbH for goods in classes 18 and 25. Rolex S.A. 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 substantially identical or deceptively similar to its registered trademarks under section 44 of the Act.

The primary legal issues before the Court were whether the applicant's mark was likely to deceive or cause confusion among the public as to the identity of the trade mark owner, and whether the applicant's mark was substantially identical or deceptively similar to Rolex S.A.'s registered trademarks. The Court was required to assess the degree of visual, phonetic, and conceptual similarity between the marks, as well as the similarity of the goods and services for which the marks were used, and the distinctiveness of Rolex S.A.'s registered marks.

In its reasoning, the Court considered the evidence presented by both parties, including the respective trade marks and the goods and services offered under them. The Court applied the established principles for assessing deceptive similarity, which involve considering the marks as a whole, the imperfect recollection of consumers, and the potential for confusion in the marketplace. The Court found that while there were some differences between the marks, the overall impression created by the applicant's mark, particularly in relation to the goods in class 25 (clothing), was likely to cause deception or confusion, given the strong reputation and distinctiveness of Rolex S.A.'s marks.

The Court upheld the opposition.