Paco Nominees Pty Ltd

Paco Nominees Pty Ltd, as trustee for the HVRC Family Trust, sought to register the figurative mark "G" across several classes of goods and services, including jewellery, leather goods, textiles, clothing, toys, beers, and wines. The application was opposed by Gucci America, Inc. on the grounds that the mark was substantially identical with or deceptively similar to its registered marks, specifically the figurative mark "G" and the word mark "GUCCI", and that registration would be contrary to section 18 of the *Trade Marks Act 1995* (Cth).

The primary legal issue before the court was whether the applicant's proposed mark "G" was substantially identical with or deceptively similar to the opponent's registered trade marks, considering the visual and conceptual similarities between the marks and the goods and services for which registration was sought. This involved an assessment of the marks as a whole, taking into account their appearance, sound, and meaning, as well as the potential for confusion among consumers in the relevant marketplace.

The court considered the opponent's registered figurative mark, which featured a stylised "G" within a square, and the applicant's proposed mark, which was a simple, unadorned "G". It was held that while both marks featured the letter "G", the visual presentation and overall impression were sufficiently distinct. The opponent's mark possessed a unique stylisation and framing that was not present in the applicant's mark. Furthermore, the court found that the goods and services covered by the respective marks, while overlapping in some areas, did not create a sufficient likelihood of deception or confusion in the minds of the relevant consumers. The applicant's mark was not considered to be substantially identical with or deceptively similar to the opponent's registered marks.

The court ordered that the opposition be dismissed and that the trade mark application proceed to registration.