Royal Agricultural Society of NSW v Mr Gatsby Investments Pty Ltd

The decision concerned an opposition by the Royal Agricultural Society of NSW (the Opponent) to the registration of a trade mark by Mr Gatsby Investments Pty Ltd (the Applicant). The dispute centred on whether the Applicant's proposed trade mark was substantially identical or deceptively similar to the Opponent's registered trade mark, which was relied upon as a ground for opposition under section 44 of the relevant Act. The matter was heard by Nicholas Smith, Hearing Officer.

The court was required to determine two primary legal issues: first, whether the Applicant's trade mark was substantially identical to the Opponent's registered trade mark; and second, whether the Applicant's trade mark was deceptively similar to the Opponent's registered trade mark. These determinations were to be made by applying established principles of trade mark law concerning comparison of marks.

In addressing substantial identity, the court applied the principle that marks should be compared side-by-side, noting similarities and differences to assess their essential features and the overall impression. The court found that the differences between the marks, specifically the inclusion of "melbourne" in the Applicant's mark versus "Sydney Royal" in the Opponent's, along with distinct devices, were sufficient to conclude they were not substantially identical. For deceptive similarity, the court adopted the approach that the comparison is not side-by-side but rather between the impression of the Opponent's mark based on recollection and the impression of the Applicant's mark. The court considered factors such as imperfect recollection, the effect of spoken descriptions, the need for a real tangible danger of deception, and all surrounding circumstances. It noted that both marks prominently featured the words "Easter Show" in similar fonts, with geographical identifiers ("Melbourne" and "Sydney Royal") being less prominent and likely discounted by consumers. The court concluded that there was a real tangible danger that a person of ordinary intelligence would be caused to wonder if the services offered under the Applicant's mark originated from the same source as those of the Opponent, particularly if they had prior awareness of the Opponent's mark.

Consequently, the Hearing Officer found that the Opponent had established the ground of opposition under section 44 of the Act. The application to register the trade mark was refused, with the refusal to be recorded one month from the date of the decision, unless an appeal was filed.