Societe Jas Hennessy & Co v Louis Royer SA

This matter concerned an opposition to a trade mark application by Societe Jas Hennessy & Co (the opponent) against Louis Royer SA (the applicant). The opposition was heard by Jock McDonagh, a delegate of the Registrar of Trade Marks. The dispute arose from the applicant's attempt to register a trade mark, which the opponent argued was substantially identical or deceptively similar to its own registered trade mark, "PARADIS" (Registration No 350211), used for premium cognac.

The primary legal issues before the delegate were whether the applicant's trade mark was substantially identical with, or deceptively similar to, the opponent's registered trade mark under section 44 of the *Trade Marks Act*, and whether the applicant's mark infringed upon the opponent's rights under sections 58 and 60 of the Act. The opponent also relied on other grounds, which were formally dismissed. The delegate was required to assess the similarity between the marks and the goods in respect of which they were registered and applied.

In reaching his decision, the delegate applied the principles for comparing trade marks as outlined in *Shell Company (Aust) Limited v ESSO Standard Oil (Aust) Limited*, which requires a side-by-side comparison to note similarities and differences and assess their importance in light of the essential features of the registered mark and the total impression of resemblance. Having considered the evidence, including the opponent's registered mark "PARADIS" and its associated premium cognac, the delegate found that the respective trade marks were neither substantially identical nor deceptively similar. Consequently, the opponent failed to establish its grounds of opposition.

The opposition was dismissed, and the trade mark application was permitted to proceed to registration one month from the date of the decision, subject to any appeal. The delegate also ordered that the opponent pay the applicant's costs.