Paige, LLC v Sage and Paige Collective Pty Ltd

This matter concerned an opposition by Paige, LLC (the Opponent), a US company, to trade mark applications made by Sage and Paige Collective Pty Ltd (the Applicant). The Opponent, which sells casual clothing and accessories, relied on its Australian trade mark registrations. The dispute centred on whether the Applicant's proposed trade marks were substantially identical with, or deceptively similar to, the Opponent's registered trade marks, and whether the goods and services for which the Applicant sought registration were similar or closely related to those covered by the Opponent's registrations. The decision was made by Debrett Lyons, a Hearing Officer and Delegate of the Registrar of Trade Marks.

The primary legal issue before the court was whether the Applicant's trade mark applications should be rejected under section 44 of the *Trade Marks Act 1995* (Cth). This section requires rejection if an applicant's trade mark is substantially identical with, or deceptively similar to, a registered trade mark for similar goods or closely related services, and the applicant's priority date is not earlier than the registered trade mark's priority date. The court also considered the definition of "deceptively similar" under section 10 of the Act, which requires that a trade mark nearly resembles another trade mark such that it is likely to deceive or cause confusion.

The Hearing Officer found that the parties accepted that the goods and services in question were similar or closely related, and that the Opponent's registrations had priority dates earlier than the relevant date for the Applicant's applications. The core of the decision therefore rested on the assessment of deceptive similarity. Applying the principles from *Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd*, the Hearing Officer focused on the impression a person of ordinary intelligence and memory would retain of the Opponent's mark and compare it to the impression created by the Applicant's mark, rather than a side-by-side comparison. The Hearing Officer concluded that the ground of opposition under section 42(b) had not been established.

Consequently, the Hearing Officer decided that the trade mark applications could proceed to registration one month from the date of the decision, unless an appeal was filed. The Hearing Officer also awarded costs against the Opponent in favour of the Applicant.