R. & J. Meldrum, Hot Tuna Pty Ltd v Frank Grego

Richard and Jo-Anne Meldrum and Hot Tuna Pty Ltd (the opponents) opposed the registration of trade mark application number 481688 by Frank Grego (the applicant). The application sought registration for casual clothing, including beachwear, T-shirts, singlets, sweatshirts, shorts, shirts, and tracksuits. The opposition was based on the grounds that the applicant's mark was deceptively similar to the opponents' registered trade mark number 437143, which covered all goods in the clothing class, and that the use of the applicant's mark would be likely to deceive or cause confusion, contrary to section 28 of the *Trade Marks Act 1955* (Cth).

The delegate of the Registrar of Trade Marks was required to determine whether the applicant's trade mark was substantially identical with or deceptively similar to the opponents' registered trade mark, pursuant to section 33 of the *Trade Marks Act 1955* (Cth). The delegate also considered the broader ground of deception or confusion under section 28 of the Act.

The delegate reasoned that the goods covered by the applicant's application were a subset of those covered by the opponents' registration, meaning the central issue was the similarity of the marks. Applying the principles from *De Cordova v Vick Chemical Co* and *Dial An Angel Pty Ltd v Sagitaur Services Systems Pty Ltd*, the delegate found that while the marks were not substantially identical, they were deceptively similar. Both marks depicted an aggressive, cartoonish fish with an open mouth and many teeth, creating a similar general impression. The delegate noted that the inclusion of the word "piranha" in the applicant's mark, even in the context of "PIRANHA BEACH", reinforced the deceptive similarity by highlighting the essential feature of a savage fish, which was the core concept of the opponents' mark. The delegate concluded that the visual similarities and the conceptual link created by the word "piranha" were sufficient to cause deception or confusion.

Consequently, the delegate refused the applicant's trade mark application under section 33 of the *Trade Marks Act 1955* (Cth). No submissions were made regarding costs, and therefore, no order for costs was made.