Seminvest Investments SA v Spotters Shades Pty Ltd

This matter concerned an opposition filed by Seminvest Investments B.V. (the opponent) against the trade mark application number 852997 for the word "ICE" in Class 9 for polarised sunglasses, filed by Spotters Shades Pty Ltd (the applicant). The opposition was heard by Hearing Officer Jock McDonagh, a delegate of the Registrar of Trade Marks.

The opponent advanced three grounds of opposition: that the applicant's mark was substantially identical or deceptively similar to registered trade marks of the opponent under section 44 of the *Trade Marks Act 1995* (Cth); that the applicant was not the owner of the trade mark under section 58; and that the applicant's mark was similar to a trade mark that had acquired a reputation in Australia under section 60. The opponent relied on three prior registered trade marks: "iceberg" (registered 1989), "ice" (registered 1991), and "sport ice" (registered 1989).

The Hearing Officer found that the applicant's mark "ICE" was not substantially identical or deceptively similar to the opponent's "iceberg" mark, nor were polarised sunglasses considered similar goods to clothing, footwear, and headgear for the purposes of the "ice" mark. However, the Hearing Officer found that the applicant's mark "ICE" was deceptively similar to the opponent's "sport ice" mark, and that polarised sunglasses were similar goods to those covered by the "sport ice" registration. The Hearing Officer also found that the opponent had established ownership of the "ICE" trade mark through prior use in Australia of sunglasses bearing the mark, supported by invoices dating back to 1996 and 1997. Furthermore, the Hearing Officer was satisfied that the opponent had acquired a reputation in Australia for its trade marks, evidenced by substantial sales and prominent advertising, and that the use of the applicant's mark would likely deceive or cause confusion due to this reputation. Consequently, the opposition was upheld on the grounds of sections 44, 58, and 60 of the Act.