Solar-Mesh Pty Ltd v Glen Raven Mills Inc

Solar-Mesh Pty Ltd applied to register the trade mark "Sunbrella" for services in class 37 and goods in class 17. Glen Raven Mills, Inc. opposed both applications, arguing that the proposed marks were barred from registration due to existing registered and pending trade marks owned by Glen Raven, and that registration would cause deception and confusion. The proceedings were governed by the Trade Marks Act 1955.

The delegate was required to determine whether the "Sunbrella" marks were substantially identical with or deceptively similar to Glen Raven's cited trade marks, and whether the goods and services for which Solar-Mesh sought registration were the same, of the same description, or closely related to the goods or services covered by Glen Raven's registrations. The delegate also had to consider whether the use of the "Sunbrella" marks by Solar-Mesh would be likely to deceive or cause confusion, having regard to the opponent's trade marks and their use and reputation in Australia.

The delegate found that the "Sunbrella" marks were substantially identical with or deceptively similar to five of Glen Raven's registered trade marks. However, the delegate determined that only the goods in class 17, specifically screen mesh for protection from solar radiation and for thermal insulation, were of the same description as some of the goods covered by Glen Raven's class 24 registration for fabrics in the piece. Consequently, the section 33 ground of opposition succeeded in respect of the class 17 application. The delegate found no sufficient link between the class 37 services and Glen Raven's class 24 fabrics to uphold the opposition on this ground for the class 37 application. Regarding the section 28 ground, the delegate found that Glen Raven had not established sufficient reputation or goodwill in Australia prior to Solar-Mesh's applications to demonstrate a tangible risk of deception or confusion.