Standard Paint Company v Hales Limited

The appellant, Standard Paint Company, opposed the registration of the word "Superoid" as a trade mark by the respondent, Hales Limited. Both parties dealt in similar goods within class 17, specifically roofing, flooring, damp course, and waterproof cement. The appellant was the registered proprietor of the trade mark "Ruberoid" for similar goods. The dispute concerned whether the proposed "Superoid" mark was so similar to the registered "Ruberoid" mark as to be likely to deceive or cause confusion.

The High Court was required to determine whether the respondent had discharged the onus of proving that the use of the "Superoid" trade mark was not likely to deceive, given the existence of the appellant's registered "Ruberoid" trade mark for identical goods. This involved an assessment of the similarity between the two marks, the nature of the goods, and the potential for confusion in the marketplace.

The Court reasoned that the onus was on the applicant for registration to demonstrate that their mark would not cause deception. Applying this principle, the Court found that the respondent had failed to discharge this onus. The Chief Justice observed that the spelling and pronunciation of "Superoid" and "Ruberoid," coupled with the fact that both were invented words, suggested an intention to closely approximate the existing mark. Isaacs J. reiterated the principle that applicants must show their mark is free from danger of deception or confusion, and that if doubt remains, registration should be refused. Gavan Duffy and Rich JJ. concurred, with Rich J. emphasizing that registration should be refused where it is not clear that deception may not result.

The appeal was allowed with costs. The respondent was ordered to pay the costs of the appeal and such costs as would have been allowed had the appellant been successful before both the Registrar and the Law Officer.