Re: Opposition by Australian Black Sheep Pty Ltd to registration of trade mark application numbers 1803056 Australian Ugg Original and 1803057 Australian Ugg Original [stylised] - both in class 25 - both in the..

This matter concerned two oppositions by Australian Black Sheep Pty Ltd to the registration of trade mark applications numbers 1803056 and 1803057, both for "Australian Ugg Original" in class 25. The oppositions were heard by Adrian Richards.

The legal issues before the court were whether the applied-for trade marks were substantially identical with or deceptively similar to three registered trade marks relied upon by the opponent, and consequently, whether the grounds of opposition under sections 42(b), 44, 60, and 62A of the *Trade Marks Act 1995* (Cth) were established. The court was also required to determine the appropriate order for costs.

The court found that the applied-for marks were not deceptively similar to the opponent's registered marks. This conclusion was based on the highly descriptive nature of the textual elements in all the marks, including "UGG" as a type of footwear, "ORIGINAL/S" indicating a first version or style, and "AUSTRALIA/N" as a geographical reference. The court reasoned that the descriptiveness of these elements necessitated a discounting of their significance when comparing the marks. As the opponent failed to establish any grounds for opposition, the trade marks were permitted to proceed to registration. Despite the applicant's success, the court declined to award costs, noting that the applicant's unnecessary attempts to introduce late evidence and submissions had contributed to the cost of the proceedings, and therefore, each party was to bear its own costs.