Phusion Projects LLC v 21 Beverages Pty Ltd

Phusion Projects LLC opposed the registration of two trade mark applications, numbers 2030048 (LOCO figurative) and 2030052 (LOCO with device), filed by 21 Beverages Pty Ltd, both in class 33. The opposition was brought under section 44 of the *Trade Marks Act 1995* (Cth), which requires the opponent to demonstrate that a registered or applied-for trade mark held by another party is earlier in priority, substantially identical or deceptively similar to the opposed marks, and in respect of similar or closely related goods or services.

The legal issues before the Hearing Officer were whether the opponent's registered trade mark, number 1808292 (FOUR LOKO), met the criteria under section 44. Specifically, the Hearing Officer had to determine if the opponent's mark had an earlier priority date than the opposed marks, if it was substantially identical or deceptively similar to the opposed marks, and if the goods covered by the marks were similar or closely related. The opponent conceded that its mark was not substantially identical to the opposed marks.

In her reasoning, the Hearing Officer applied the established principles for assessing deceptive similarity, as outlined in *Caterpillar Inc. v Puma SE*. These principles emphasize that the comparison is between the marks themselves, not a side-by-side comparison, and considers the potential for confusion among consumers with imperfect recollection. The Hearing Officer found that the opponent's mark satisfied the first requirement of section 44, having an earlier priority date, and that the goods were similar. Crucially, despite the lack of substantial identity, the Hearing Officer concluded that there was a real risk of confusion between the opponent's mark and the two opposed marks, finding them to be deceptively similar.

Consequently, the Hearing Officer found that the ground of opposition under section 44 was established and refused the registration of trade mark applications 2030048 and 2030052. The Hearing Officer also awarded costs to the opponent in respect of trade mark number 2030048 and reduced costs in respect of trade mark number 2030052.