Rocket Trademarks Pty Ltd v Coolibar, Inc

Rocket Trademarks Pty Ltd (Rocket) sought to register the trade mark COOLIBAR in relation to clothing and headwear. Coolibar, Inc (Coolibar) opposed this application, arguing that the proposed mark was substantially identical or deceptively similar to its registered trade mark COOLIBAR, registered for similar goods. The matter came before the Registrar of Trade Marks, who dismissed the opposition. Rocket then appealed this decision to the Federal Court of Australia.

The primary legal issue before the Federal Court was whether the trade mark COOLIBAR sought to be registered by Rocket was substantially identical or deceptively similar to the registered trade mark COOLIBAR owned by Coolibar, within the meaning of section 101 of the *Trade Marks Act 1995* (Cth). This involved an assessment of the degree of visual, aural, and conceptual resemblance between the two marks, as well as a consideration of the similarity of the goods for which the marks were registered and proposed to be registered.

Justice Murray applied the established principles for assessing substantial identity or deceptive similarity, which require a comparison of the marks as a whole, considering their appearance, sound, and meaning. Her Honour noted that the marks were identical in spelling and pronunciation. While acknowledging that the goods were not identical, she found them to be closely related, falling within the same broad categories of apparel. Considering the identical nature of the marks and the close relationship of the goods, Justice Murray concluded that there was a real and tangible danger of confusion or deception in the marketplace.

Consequently, Justice Murray allowed the appeal, set aside the Registrar's decision, and ordered that the opposition be upheld. The application for registration of the trade mark COOLIBAR by Rocket Trademarks Pty Ltd was therefore dismissed.