Sojo Pty Ltd v Butler Diaries Pty Ltd

Sojo Pty Ltd (the Applicant) sought to register a trade mark, which was opposed by Butler Diaries Pty Ltd (the Opponent). The dispute concerned the potential for the Applicant's proposed trade mark to deceive or cause confusion due to the reputation of the Opponent's existing trade mark. The decision was made by Tracey Berger, Hearing Officer and Delegate of the Registrar of Trade Marks.

The primary legal issue before the Hearing Officer was whether the ground of opposition under section 60 of the relevant Act was established. This required determining if, prior to the priority date of the Applicant's trade mark, another trade mark had acquired a reputation in Australia, and if the use of the Applicant's trade mark would be likely to deceive or cause confusion as a result of that reputation. The Hearing Officer also considered the principles for establishing a trade mark's reputation, including its quantitative and qualitative dimensions, and the inferential basis for such reputation from sales and advertising.

The Hearing Officer found that the Opponent had established a strong reputation in its "TRADIE" mark. Applying the principles from cases such as *McCormick* and *Rodney Jane Racing*, the Hearing Officer concluded that there was a real and tangible risk that the use of the Applicant's proposed trade mark for its goods would cause confusion due to the established reputation of the Opponent's mark. Consequently, the ground of opposition under section 60 was upheld.

As a result of the established ground of opposition, the Hearing Officer refused to register the Applicant's trade mark. The refusal was to be recorded one month from the decision date, unless a notice of appeal was filed. The Applicant was also ordered to pay the Opponent's costs.