S.A. Jean Cassegrain v Victoria Racing Club

This decision concerns an opposition by S.A. Jean Cassegrain to three trade mark applications filed by the Victoria Racing Club (VRC) for registration in classes 16, 18, and 25. The VRC sought to register a device mark featuring a horse and jockey for goods including paper products, stationery, travelling bags, umbrellas, clothing, headgear, and footwear. Jean Cassegrain opposed these applications, relying on its prior registrations for similar goods under the marks "Longchamp" and "Cassegrain". The opposition was heard by the Registrar of Trade Marks.

The Registrar was required to determine two grounds of opposition: first, whether the VRC's applications were prohibited under section 44 of the *Trade Marks Act 1995* due to substantial identity or deceptive similarity to Jean Cassegrain's earlier registered trade marks; and second, whether the use of the VRC's trade marks would be likely to deceive or cause confusion contrary to section 60 of the Act, given the reputation of Jean Cassegrain's marks. Jean Cassegrain abandoned all but these two grounds prior to the hearing.

In relation to section 44, the Registrar considered the visual and conceptual similarities between the VRC's proposed marks and Jean Cassegrain's "Longchamp" and "Cassegrain" marks. While acknowledging a similarity in the horse and jockey device, the Registrar found significant differences in the stylisation, colouring, and overall impression of the VRC's mark, which appeared to be of a more contemporary 20th-century style compared to the 19th-century style of Jean Cassegrain's marks. Furthermore, the Registrar found the words "Racing Victoria" in the VRC's marks to be distinct from "Cassegrain" and "Longchamp", and that any conceptual link between "Longchamp" (a racecourse) and "Racing Victoria" was insufficient to cause deception or confusion. Consequently, the Registrar dismissed the section 44 ground.

The Registrar also dismissed the section 60 ground. This ground required a finding of substantial identity or deceptive similarity as a threshold test, which had already failed under section 44. Even if that threshold had been met, the Registrar expressed doubt as to whether Jean Cassegrain's reputation was sufficiently established across all the goods for which the VRC sought registration to cause deception or confusion. Accordingly, the opposition was dismissed, and the VRC's trade mark applications were permitted to proceed to registration, with costs awarded to the VRC.