South Cone, Inc v J and S Shi Trading Co Pty Limited

South Cone, Inc. (the applicant) sought to register a trade mark, "SOUTH CONE" and a device, in Australia. J and S Shi Trading Co Pty Limited (the respondent) opposed this application. The dispute concerned whether the applicant's proposed trade mark was deceptively similar to the respondent's registered trade mark, "SOUTH CONE" and a device, also registered in Australia. The matter came before the Federal Court of Australia.

The primary legal issue before the Court was whether the applicant's proposed trade mark was deceptively similar to the respondent's registered trade mark, within the meaning of section 44 of the *Trade Marks Act 1995* (Cth). This involved an assessment of whether an ordinary consumer, exercising ordinary care and attention, would be likely to be deceived or confused into believing that the goods or services offered under the applicant's mark originated from, or were connected with, the owner of the respondent's mark.

The Court applied the established principles for assessing deceptive similarity, which require a comparison of the marks as a whole, considering both visual and phonetic similarities, as well as the conceptual implications. The Court noted that the marks shared the identical dominant word "SOUTH CONE" and similar device elements. It concluded that the similarities were such that there was a real and substantial risk of deception or confusion among the relevant class of consumers. Consequently, the Court found that the applicant's trade mark was deceptively similar to the respondent's registered trade mark.

The Court ordered that the application for registration of the trade mark be refused.