Re The Sports Cafe Limited

This matter concerned two trade mark applications, nos. 602441 and 605397, filed by The Sports Cafe Limited for services including catering, bars, restaurants, and hotels. An examiner objected to both applications under section 33 of the *Trade Marks Act 1955* (the old Act) and subsequently under section 44 of the *Trade Marks Act 1995* (the new Act), on the grounds that the proposed marks were substantially identical or deceptively similar to a registered trade mark, no. 577436, held by another party. The cited mark covered similar services, including the retailing of liquor and food, cafes, and restaurant and bar services. The applicant sought a hearing before a delegate of the Registrar of Trade Marks.

The delegate was required to determine whether the applicant's trade marks, THE SPORTS CAFE (application no. 602441) and a word and device mark incorporating THE SPORTS CAFE (application no. 605397), were substantially identical with or deceptively similar to the registered trade mark THE CIRCUIT SPORTS CAFE (registration no. 577436), in respect of services that were similar. The applicant argued that the marks were not substantially identical and, crucially, not deceptively similar, contending that the essential ideas of the marks differed, that the nature of the services made confusion unlikely, and that common abbreviation practices would lead to distinct identifiers.

The delegate agreed with the applicant that the marks were not substantially identical, noting differences in wording and devices when compared side-by-side. However, the delegate found the marks to be deceptively similar. The delegate reasoned that while the degree of similarity is only one factor, the modern prevalence of national and multinational chains offering similar services under a single trading name meant that a customer encountering THE SPORTS CAFE would likely assume it was another branch of a chain, particularly given the similarity to THE CIRCUIT SPORTS CAFE. The delegate rejected the argument that the essential ideas of the marks were distinct, finding that the phrase "SPORTS CAFE" within the cited mark was sufficiently prominent to be a memorable element, leading to a likely assumption of connection. The argument regarding abbreviation was also dismissed, as insufficient evidence was presented to demonstrate that the cited mark was commonly abbreviated to "THE CIRCUIT" in a way that would prevent confusion with "THE SPORTS CAFE".

Consequently, the delegate concluded that the trade mark applications were deceptively similar to the registered trade mark and, in the absence of evidence supporting exceptions under subsections 44(3) or (4) of the *Trade Marks Act 1995*, rejected both applications under subsections 33(3) and (4) of the Act.