ParexGroup Pty Ltd v Mapei S.p.A

ParexGroup Pty Ltd (ParexGroup) and Mapei S.p.A (Mapei) were parties to a dispute before the Federal Court of Australia. The core of the disagreement concerned the alleged infringement of a registered trade mark, specifically the word mark "MAPEI", by ParexGroup's use of the mark "PAREX". ParexGroup sought a declaration that its use of "PAREX" did not infringe Mapei's trade mark, while Mapei counterclaimed for infringement and sought an injunction and damages.

The Federal Court was required to determine whether ParexGroup's use of the mark "PAREX" constituted an infringement of Mapei's registered trade mark "MAPEI" under the *Trade Marks Act 1995* (Cth). This involved assessing whether the marks were substantially identical or deceptively similar, and whether the goods or services for which ParexGroup used its mark were similar to those for which Mapei's mark was registered, such that there was a likelihood of confusion among consumers.

Justice Beach found that the marks "PAREX" and "MAPEI" were not substantially identical. However, he concluded that they were deceptively similar, applying the established principles of trade mark law which require a comparison of the marks as a whole, considering their visual, aural, and conceptual elements. His Honour found that the similarity in sound and appearance, coupled with the use of the marks on related goods (construction chemicals), created a real likelihood of deception or confusion in the marketplace. Consequently, ParexGroup's use of "PAREX" was found to infringe Mapei's registered trade mark.

The Court ordered that ParexGroup's application for a declaration of non-infringement be dismissed. Mapei was granted judgment on its counterclaim for trade mark infringement, and the Court indicated it would hear the parties on the form of injunction and the assessment of damages.