Quiksilver International Pty Ltd v CK Clothing Pty Ltd

Quiksilver International Pty Ltd (the opponent) opposed an application by CK Clothing Pty Ltd (the applicant) to register a trade mark. The opposition was based on grounds including sections 42, 44, and 60 of the relevant Act, all of which hinged on the deceptive similarity between the trade marks. The matter was heard by Ian Thompson, a delegate of the Registrar, in Melbourne on 17 June 2003.

The court was required to determine whether the applicant's proposed trade mark was deceptively similar to the opponent's existing trade marks, specifically the ROXY mark, and whether this similarity was likely to deceive or cause confusion. This involved considering the definition of "deceptively similar" under section 10 of the Act and applying established legal principles regarding trade mark resemblance, including the need for a "real tangible danger" of deception or confusion, the circumstances of use, the character of probable acquirers, and the scope of the applicant's potential use of the mark.

The delegate found that the evidence presented by the opponent was insufficient to establish that the ROXY trade mark had acquired sufficient reputation in Australia at the priority date to support the opposition under sections 42 and 60. The evidence did not provide a clear picture of the extent of the ROXY trade mark's use in Australia or the precise nature of the goods on which it was used. Consequently, the delegate concluded that the opponent had not succeeded on the grounds of opposition pressed at the hearing.

The delegate directed that the trade mark application could proceed to registration one month from the date of the decision, subject to payment of the registration fee, unless an appeal was filed. The opponent was ordered to pay the applicant's costs.