Re: Trade mark application number 2010443 (classes 35 and 41) – composite trade mark WEST SWIM – ESSENTIAL SKILLS FOR LIFE with stylised fish device, in the name of Western Australian Swimming Association Inc.

This matter concerned an application by the Western Australian Swimming Association Inc. for registration of a composite trade mark, WEST SWIM – ESSENTIAL SKILLS FOR LIFE, featuring a stylised fish device, in classes 35 and 41. The application was opposed by the applicant for registration of a trade mark, which had previously registered the trade mark WESTERN SWIMMING. The delegate of the Registrar of Trade Marks rejected the application on the grounds that the proposed mark was deceptively similar to the earlier registered mark under section 44 of the *Trade Marks Act 1995* (Cth). The applicant sought review of this decision.

The primary legal issue before the court was whether the applicant's composite trade mark was deceptively similar to the opponent's registered trade mark, WESTERN SWIMMING, for the purposes of section 44(1) of the *Trade Marks Act 1995* (Cth). This involved an assessment of the visual, aural, and conceptual similarities between the two marks, considering the goods and services for which they were registered.

In determining the issue of deceptive similarity, the court applied the established principles for comparison of trade marks. It considered the marks as a whole, taking into account their dominant features. The court found that the common element "SWIM" or "SWIMMING" was a significant factor, as was the geographical descriptor "WEST" or "WESTERN". While the stylised fish device and the additional words "ESSENTIAL SKILLS FOR LIFE" were present in the applicant's mark, the court concluded that, when viewed as a whole and considering the likely perception of the relevant consumers, there was a real chance that consumers would be confused into believing that the goods and services offered under the applicant's mark originated from or were connected with the owner of the earlier registered mark.

The court upheld the delegate's decision, finding that the applicant's trade mark was deceptively similar to the opponent's registered trade mark. Consequently, the application for registration was rejected.