Pelikan International Handels-Gesellschaft mbH & CO. KG, Re

This decision concerns an opposition by Pelikan International Handels-Gesellschaft mbH & CO. KG to two trade mark applications, numbers 573853 and 574178, lodged by Lifinia Pty. Ltd. The applications sought registration of the words "LE PELICAN" and "PELICAN" respectively, for goods in class 18, specifically wallets and other related items. The opponent contended that these marks were substantially identical or deceptively similar to its own trade marks, which had extensive use and reputation in Australia for a variety of goods, including stationery and artists' materials.

The primary legal issues before the delegate of the Registrar of Trade Marks were whether the applicant's proposed marks were substantially identical with or deceptively similar to the opponent's existing marks, and whether the goods for which registration was sought were the same or of the same description. Additionally, the delegate considered whether the registration of the applicant's marks would be likely to deceive or cause confusion, or otherwise be disentitled to protection in a court of justice, pursuant to section 28 of the relevant Act. The delegate was required to assess the evidence of use and reputation of the opponent's marks and compare the nature, purpose, and trade channels of the goods in question.

The delegate found that while the words "PELIKAN" and "PELICAN" were very similar in appearance and pronunciation, and the opponent had established a significant reputation in Australia over 74 years for stationery, office requisites, and artists' materials, this reputation did not extend to the specific goods for which the applicant sought registration, namely wallets and other class 18 items such as travelling bags. The delegate determined that the nature and uses of the applicant's products were not similar to the opponent's goods, and they did not share the same trade channels, with the exception of potential fashion houses that produce a diverse range of goods under a single brand. The delegate concluded that the opponent's evidence failed to establish that consumers would be deceived or confused into believing the applicant's wallets and bags originated from the same source as the opponent's stationery and artists' materials. Consequently, the opposition failed on the grounds relied upon under section 33 and section 28 of the Act.

The opposition was dismissed, and the applications were directed to proceed to registration. The applicant was awarded costs.