Perfect Fit Industries, Inc v Domingo so Pensaloza and Rong Ping Tang

Perfect Fit Industries, Inc. opposed the application by Domingo so Pensaloza and Rong Ping Tang to register the trade mark "PFB BEARING". The opposition was based on grounds including section 44 of the *Trade Marks Act 1995* (Cth), which concerns substantially identical or deceptively similar trade marks. The court was required to determine whether the applicant's proposed mark was substantially identical with, or deceptively similar to, existing registered trade marks owned by Perfect Fit Industries, Inc. in respect of similar goods.

The court considered the evidence presented by Perfect Fit Industries, Inc., including a declaration from its President, which asserted that the applicant's mark was confusingly similar to its own "PFI BEARING" mark. The declaration highlighted the visual, phonetic, and aural similarities between the marks, noting that eight out of nine letters were identical in sequence and that the overall impression was one of near identity. The court also noted that the applicant's goods, bearings, were the same as or similar to the goods covered by Perfect Fit Industries, Inc.'s registered trade marks, specifically "the Bearing trade mark" (registration no. 1391350) and "the PFI trade mark" (registration no. 858177), both of which had earlier priority dates.

Applying the test for substantial identity from *Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd*, the court was required to compare the marks side by side, noting similarities and differences and assessing their importance in light of the essential features of the registered marks and the total impression of resemblance. The court found that the applicant's goods were similar to those covered by the opponent's trade marks and that the opponent's trade marks had earlier priority dates. The remaining issue was whether the applicant's mark was substantially identical or deceptively similar to either of the opponent's registered marks.