Peter Katholos v MCT Unilabels S.A

This matter concerned an opposition by MCT Unilabels S.A. ("the opponent") to the trade mark application no. 462838 lodged by Peter Katholos ("the applicant") for the mark "Cappé Sport" in respect of footwear and clothing. The opponent relied on three grounds: proprietorship of the mark (s40 of the Act), substantial identity or deceptive similarity to its registered trade mark (s33), and likelihood of deception or confusion due to the opponent's established reputation (s28). The decision was made by a Delegate of the Registrar of Trade Marks.

The legal issues before the Delegate were whether the applicant was the proprietor of the mark, whether the applicant's mark was substantially identical with or deceptively similar to the opponent's registered mark, and whether the use of the applicant's mark was likely to cause deception or confusion given the opponent's reputation. The Delegate considered evidence of use of the opponent's mark in Australia prior to the applicant's lodgement date of 3 April 1987, including invoices from 1983 and advertising materials. The Delegate also considered the applicant's evidence of use since 1986, including sales figures and advertising expenditure, and declarations from individuals supporting the application.

In determining the proprietorship issue, the Delegate found that the marks were not substantially identical and therefore the question of proprietorship did not arise. Regarding the grounds under sections 28 and 33, the Delegate applied the tests of whether the applicant's mark, if used normally, would be reasonably likely to cause deception and confusion amongst a substantial number of persons, considering the reputation of the opponent's mark. The Delegate found the evidence of the opponent's use in Australia prior to the application date to be insufficient to establish the required reputation. Specifically, invoices from 1983 related to different trade marks or were for samples, and other evidence did not demonstrate use or circulation in Australia. The Delegate also concluded that the marks, when compared as wholes, were visually quite different, with the opponent's mark featuring a striking device and the word "Kappa" being well-known, whereas "Cappé" was likely to have no meaning to the average Australian. The Delegate found no evidence of wrongdoing or intention to misappropriate goodwill on the part of the applicant.

Consequently, the Delegate dismissed the opposition. The Delegate directed that application no. 462838 proceed to registration and awarded costs to the applicant.