Southcorp Brands Pty Limited v Gotop Australia Pty Ltd

This matter concerned an opposition by Southcorp Brands Pty Limited to the registration of a figurative trade mark application by Gotop Australia Pty Ltd in class 33. The dispute centred on whether the applicant's proposed trade mark was substantially identical with, or deceptively similar to, an earlier trade mark owned by the opponent for similar goods.

The court was required to determine whether the applicant's trade mark application infringed section 44(1) of the relevant Act. This involved assessing whether the proposed trade mark was substantially identical with, or deceptively similar to, the opponent's registered trade mark, which had an earlier priority date, in respect of similar goods. The court also needed to consider whether any exceptions under sections 44(3) or (4) of the Act applied.

The Hearing Officer applied the principles established in *Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd* for assessing substantial identity, finding that a side-by-side comparison revealed clear differences and that a total impression of resemblance did not emerge. For deceptive similarity, the Hearing Officer referred to the definition in section 10 of the Act, which requires a real and tangible danger of deception or confusion, such that an ordinary person might wonder if the goods came from the same trade source, allowing for imperfect recollection. The Hearing Officer found that alcoholic beverages of different kinds are considered similar for the purposes of section 14(1) of the Act, and that the goods in question were either the same or of the same description.

Ultimately, the Hearing Officer found that the proposed trade mark was deceptively similar to the opponent's registered trade mark and that no exceptions under sections 44(3) or (4) applied. Consequently, the opposition was successful, and the Hearing Officer decided that the trade mark application should be refused. Costs were awarded against the applicant.