Reinsurance Australia Corporation Limited v Mobil Oil Corporation Limited

This decision concerns an opposition by Mobil Oil Corporation Limited ("the opponent") to the registration of two trade mark applications, numbers 617735 and 617736, filed by Reinsurance Australia Corporation Limited ("the applicant"). The applications were for insurance and financial services. The opposition was heard by a delegate of the Registrar of Trade Marks, applying the provisions of the former Trade Marks Act 1955 due to transitional arrangements.

The primary legal issue before the delegate was whether the applicant's proposed trade marks were deceptively similar to the opponent's registered trade mark, pursuant to section 33 of the former Act. This involved a notional comparison of the marks and services, irrespective of the parties' actual trading activities or the opponent's reputation. The delegate also considered an application by the applicant to adduce further evidence, which was refused.

The delegate reasoned that the applicant's attempt to introduce new evidence regarding industry specialisation was too late and speculative, and that the applicant's initial broad claim for services rendered the evidence irrelevant. The delegate found that the opponent's evidence, including a survey, was of minimal weight. Applying section 33, the delegate determined that despite the presence of a Southern Cross device in the applicant's mark alongside a Pegasus device, it was deceptively similar to the opponent's registered Pegasus mark. The delegate rejected the argument that sophisticated buyers would distinguish the marks, as section 33 mandates a notional comparison.

Consequently, the delegate found that the applicant's trade mark applications were deceptively similar to the opponent's registered mark and refused to register them. The opponent was awarded its costs, including those incurred due to the applicant's unsuccessful attempt to introduce further evidence.