Shimmersea (Aust) Pty Limited v SPL Worldgroup (Australia) Pty Limited

This matter concerned an opposition by SPL Worldgroup (Australia) Pty Limited to a trade mark application filed by Shimmersea (Aust) Pty Ltd. Shimmersea sought to register the trade mark consisting of the letters "SPL" for use in relation to computer printers and the reselling of computer hardware. SPL Worldgroup opposed this application on several grounds, including that Shimmersea was not the owner of the trade mark and that the applied-for mark was substantially identical with or deceptively similar to its own registered trade marks, with the goods and services being similar or closely related. The opposition was heard by a delegate of the Registrar of Trade Marks.

The delegate was required to determine two primary legal issues. Firstly, whether Shimmersea was the owner of the trade mark within the meaning of section 58 of the *Trade Marks Act 1995* (Cth), which required SPL Worldgroup to demonstrate prior use of a trade mark that was substantially identical to the application mark. Secondly, the delegate had to consider whether the application trade mark was substantially identical with or deceptively similar to SPL Worldgroup's registered trade marks, and whether the goods and services for which registration was sought were similar or closely related to the goods and services covered by SPL Worldgroup's registrations, pursuant to section 44 of the *Trade Marks Act 1995* (Cth).

In relation to the ownership ground under section 58, the delegate found that while SPL Worldgroup had prior use of a trade mark featuring the letters "SPL", the marks were not substantially identical. The delegate noted significant differences, including a serrated disc device in SPL Worldgroup's mark and a reflected image of the letters in Shimmersea's mark, as well as variations in font and letter joining. Consequently, the section 58 ground failed. However, on the section 44 ground, the delegate found that the application mark was deceptively similar to SPL Worldgroup's registered marks, applying the principles from *Australian Woollen Mills Ltd v F.S. Walton & Co. Ltd*. The delegate also determined, using the "Panda" tests, that computer printers were closely related to computer software and systems services, and that the reselling of computer hardware was a similar service to computer software and system services.

Accordingly, the delegate refused to register Shimmersea's trade mark application number 647304, finding that the opposition succeeded on the section 44 ground. Costs were awarded to SPL Worldgroup, to be taxed and certified by an officer appointed by the Registrar.