Red Hat Inc v Mary-Ann Martinek

Red Hat Inc opposed Mary-Ann Martinek's application to register the trade mark "SLOUCH HAT and device" for goods in classes 9, 14, 16, and 30. Red Hat Inc, the opponent, relied on its registered trade mark 750587, which covers computer software and related services in class 9. The opposition was heard by a delegate of the Registrar of Trade Marks.

The primary legal issues before the delegate were whether the applicant's trade mark was substantially identical or deceptively similar to the opponent's registered trade mark, and whether the applicant's trade mark was similar to a trade mark that had acquired a reputation in Australia. The opponent also raised grounds under sections 42 and 59 of the *Trade Marks Act 1995*, but ultimately focused its opposition on class 9 goods, specifically "computer programs," cassettes, and CD-ROMs.

The delegate determined that the applicant's trade mark, evoking Australian military history and valour, was not substantially identical to the opponent's trade mark, which suggested an American detective genre. Crucially, the delegate found that the marks were not deceptively similar, applying the principles from *Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd* and *Australian Woollen Mills Ltd v F.S. Walton & Co Ltd*. The delegate reasoned that the distinct imagery and specific historical and cultural connotations of each mark would prevent an average Australian consumer from being deceived or confused as to the origin of the goods. Consequently, the grounds under sections 44 and 60 of the Act were not made out.

As the delegate found no deceptive similarity between the trade marks, the opposition to the registration of the trade mark in class 9 was dismissed. The opponent had previously indicated it did not oppose the application in classes 14, 16, and 30.