Peter Alexander Sleepwear Pty Ltd v Harmont & Blaine SpA

This matter concerned an opposition to the extension of protection of an international trade mark registration brought by Peter Alexander Sleepwear Pty Ltd (the Opponent) against Harmont & Blaine SpA (the Holder). The dispute arose from the Holder’s application to extend protection of its trade mark, which the Opponent argued should be refused.

The court was required to determine whether the Opponent had established grounds for opposition under sections 42(b) and 60 of the *Trade Marks Act 1995* (Cth). Specifically, the court had to consider whether the Holder’s trade mark was identical or deceptively similar to an earlier trade mark, and whether the Holder’s trade mark was likely to deceive or cause confusion due to the Opponent’s prior use and reputation in Australia.

The court found that the Opponent had not established a ground for opposition under section 42(b). However, the court was satisfied that the Opponent had established a ground of opposition under section 60. This was based on the Opponent’s significant reputation in its logo, which featured a dachshund, and the likelihood that the Holder’s trade mark, also featuring a dachshund, would cause consumers to believe there was an association between the Holder’s goods and services and the Opponent. The court reasoned that the Opponent's consistent use of dachshund imagery reinforced its brand reputation, creating a real risk of confusion.

Consequently, the court refused to extend protection to the Holder's international trade mark registration and ordered that the Holder pay the Opponent's costs.